In our publication of July 18, 2018, we gave an overview of the most important changes introduced in the trademark law reform. Now the Trademark Law Modernization Act (MaMoG, the new provisions of the German Trademark Act will be referred to as the "new Trademark Act") has come into force on January 14, 2019, although there are individual provisions that have different start dates. The aim of this amendment to the German Trademark Law was to implement all mandatory—and a large number of optional—provisions of EU Directive 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the member states relating to trademarks into German law.

The following changes are of particular importance for trademark practice:

I.Elimination of the need for graphic or visual representation of trade marks

The requirement for graphic or visual representation of a trademark will no longer be a prerequisite for protection in the future, § 8 (1) old German Trademark Law. In analogy to the provisions in the European Union Trade Mark Regulation (EUTMR), the new provision now states that all trademarks which can be represented in the trademark register in such a way that the competent authorities and the public can "clearly and unambiguously determine the object of trademark protection" will be admitted for registration, § 8 (1) of the new Trademark Act. Time will tell how this rather broad criterion will be put into practice. The aim is to enable the registration of sound marks, multimedia marks and the similar new trademark forms in a suitable electronic form.

Attention when planning filing strategies: An extension of the aforementioned new trademark forms via the Madrid System will initially not be possible due to WIPO's representation requirements.

II.Introduction of the certification mark

A further innovation is the implementation of the certification mark in German trademark law. Compared to the individual trademark, the certification mark does not focus on the origin function (i.e. the assignment of a good or service to a manufacturer) but on the guarantee function (i.e. the guarantee of certain characteristics by an independent party). The owner of the trademark guarantees by means of the certification mark, for example, the material, the production process or the quality, accuracy or other relevant properties of the goods or services. This new trademark category introduces a new function of trademarks into the German trademark law. However, among other requirements, only applicants who do not engage in any activity involving the supply of goods or rendering of services claimed by the trademark may register a certification mark. The aim of the certification mark is to provide independent certification companies with protection under the trademark law for their quality seals or test marks. With the introduction of the certification mark, the legislator takes account of the significance of quality certifications and seals for the economy and grants them their own legal protection.

III. Extension of the competence of the DPMA (the German Patent and Trade Mark Office) with regard to the cancellation of registered trademarks

Until now, the procedure for cancelling a trademark registered contrary to §§ 3, 7 and/or 8 Trademark Law (§ 50 Trademarks Law absolute grounds of refusal or bad faith) is purely an administrative procedure. The old Trademark Law did not allow for a court claim. The revocation of a trademark for lack of use (§ 49 Trademarks Law) and the invalidity due to the existence of earlier rights (§ 50 Trademarks Law - relative grounds for refusal), however, could be asserted either by means of an application at the DPMA or by means of an action before a court (§. 55 (1) Trademarks Law).

As a result of the new provisions, relative grounds for invalidity may in future be invoked in proceedings before the DPMA even after opposition proceedings have been concluded. This will bundle the competences of the DPMA. Nevertheless, it should be possible for the party requesting the cancellation of a trademark on the grounds of non-use or earlier rights to bring such an action before a civil court, as per previous practice. The plaintiff or applicant is thus free to decide whether he wishes to have the cancellation pursuant to § 49 or § 50 of the new Trademark Act carried out at the DPMA or before a court. However, in view of the higher costs of court proceedings, we expect that many proceedings will be conducted before the DPMA as an administrative proceeding in the future.
The new Trademark Act envisages that these provisions will not come into force until May 1, 2020. This gives the DPMA time to prepare adequately for the increased requirements.

IV. Additional criteria for absolute grounds for refusal

Protected geographical indications and protected geographical designations of origin which are protected under national or European law will also be taken into account in the application procedure as absolute grounds for refusal (§§ 8 (2) and 42 new Trademark Act) and in the new invalidity procedure (§ 52 (3) new Trademark Act).

V. Changes in opposition proceedings

It is a pleasant update that oppositions can now be based on several earlier rights of one proprietor under § 29(1), second sentence of the new Trademarks Act. In accordance with the new criteria for absolute grounds for refusal, protected geographical indications and protected designations of origin may now be used as a basis for trademark oppositions as well. The opposition fees will be adapted to the new regulation - €250 for the opposition based on one sign and €50 for each additional sign.

The cooling-off period, which has been tried and tested in the proceedings before the EUIPO, is now also available in German proceedings: The parties will be granted at least two months to find an amicable solution to the conflict situation under  § 42 (3) of the new Trademark Act. This period may be extended at the joint request of the parties.

The registration becomes vulnerable to cancellation for non-use  five years after the first day after expiry of the opposition period, or - in the case of an opposition filed - five years after the date on which the end of the opposition proceedings becomes final and binding,§ 25 new Trademark Act.

Up to now, the second sentence of § 43(1) Trademark Law provided that, in the case where the opposing trademark became vulnerable to opposition in the course of an opposition proceeding, the opponent had to provide evidence of use upon request by the owner of the opposed trademark.  This option no longer exists. The request for evidence of use now has to be filed as a separate cancellation proceeding under § 52 (3) new Trademark Act.

VI. Term of protection and renewals, reclassification

The term of protection for trademarks filed after January 13, 2019 expires 10 years after the date of filing, calculated from the date of filing, § 47 (1) new Trademark Act. (The old Trademark Law used to postpone all renewal dates to the last day of the month of expiry.) The DPMA will continue to issue renewal notifications, which provides a safety net for trademark owners who have not included these changes in their monitoring system yet.

The renewal fees become due six months before the end of the term of protection and can be paid any time during that period.

The reclassification option will no longer be available. Accordingly, § 14 of the new Trademark Act, which deals with infringement, clarifies that registration in the same class does not per se constitute an infringement (if the other requirements are met) and that vice versa a different class does not exclude an infringement.

VII. New rules for anti-counterfeiting measures

Another amendment concerns the rights of trademark owners in relation to customs measures. According to current case law, it is – generally - only possible for trademark owners to prohibit the import and export of infringing goods.

The transfer of such goods from third countries and their transit from third countries as well as transport within the EU does not constitute an infringement of industrial property rights unless the goods are demonstrably intended to be sold to EU consumers.

This gap in the legal protection of trademark owners has been closed. The new law provides for border seizure of such transit goods if the goods in question, including their packaging, originate from third countries and carry a trademark or commercial designation - without its owner's consent - which is identical to the trademark registered for such goods or cannot be distinguished in its essential aspects from this trade mark or commercial designation (§ 14a of the new Trademark Act).

At the same time, § 14a provides that this right of prohibition is limited where the declarant or owner of the goods is able to furnish proof that the declaration for the relevant customs procedure is legitimate.

Trademark owners are thus provided with a further effective means against the increasing number of cases of product piracy. It also enables them to take action in Germany against transit, trans-shipment, storage or temporary storage of transit goods infringing industrial property rights.

§ 14a came into force on December 15, 2018.

VIII. Registration of licenses and willingness to license and sell

The licensee, the type and scope of the license as well as its validity and modifications can now be registered upon application (subject to a fee), § 34a new Trademark Act. This also applies to the German designation of international registrations, which effectively ends the German exception to the rule.

Registering the willingness to sell and license a trademark will be free of charge, § 34b new Trademark Act, and provides, potentially, a very effective marketing tool!

IX. The European Union Trademark in criminal law

Finally, the question which has already been decided by the courts, namely to what extent the use of the outdated term "Community Trade Mark" in § 143a of the old Trademarks Law can have an effect on criminal liability - namely none - is also reflected in the Trademark Modernization Act. § 143a of the new Trademark Act, which now sanctions the infringement of a "Union Trademark." Unfortunately, the unclear references to a "prohibition" and the "lack of consent" remain unaltered. The new Trademark Act misses this opportunity to clarify the wording by deleting these unnecessary wordings.

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