Freshfields Bruckhaus Deringer
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I. Introduction to German Trademark Law
On January 1, 1995 the new Trademark Act (Markengesetz - "MarkenG") came into force which reformed the trademark law in Germany as a whole. The MarkenG now not only regulates the protection of trademarks but also of trade designations (Section 5 MarkenG). Trade designations are company symbols (i.e. signs used in the course of business as the name, company name or special designation of an undertaking) and titles of works (i.e. names or special designations of printed publications, cinematographic works, acoustical works, plays, or other comparable works). Trade designations enjoy (almost) the same rights as trademarks. Finally, the MarkenG also regulates the protection for appellations of geographical origin (Sections 126 et seq. MarkenG).
II. Prerequisites for the Protection of trademarks
1. Form of Trademarks
Section 3 para. 1 MarkenG enumerates signs which can be protected as trademarks. The enumeration is not final and states words, designs letters, numerals, acoustical signs, three-dimensional configurations as well as other get-ups as signs that may be protected. However, signs may only be protected if they are capable of distinguishing the goods or services of one undertaking from those of another undertaking. Therefore, signs consisting only of a shape which results from the nature of the goods themselves, which is necessary to obtain a technical result, or which gives substantial value to the product are explicitly excluded from protection (Section 3 para. 2 MarkenG).
2. Requirements for Protection of Registered Trademarks
The requirements for registration of a trademark are regulated in Section 8 MarkenG. First, as a formal prerequisite it is provided that only those signs may be registered as trademarks that can be represented graphically (Section 8 para. 1 MarkenG). How this can be established, for instance in cases of acoustical or three-dimensional signs, is stated in the implementing regulation (Markenverordnung).
The decisive provision with regard to registration is Section 8 para. 2 No. 1 MarkenG which provides that trademarks which are devoid of any distinctive character with respect to goods or services may not be registered. Thus, even a slight degree of distinctive character would be sufficient to overcome the bar to protection constituted by the lack of distinctive character. Important to note is also that a trademark may not be registered if there exits a necessity of keeping this trademark free for use by others ("Freihaltebedürfnis"), Section 8 para. 2 No. 2 MarkenG. Such a necessity of keeping a trademark free for use is given if in a specific case the sign has an entirely descriptive nature. Generic terms are also excluded from protection as registered trademarks (Section 8 para. 2 No. 3 MarkenG) as well as deceptive indications (Section 8 para. 2 No. 4 MarkenG). The remaining regulations in Section 8 para. 2 MarkenG relate to circumstances which are in practice not as important.
The bars to registration of a trademark provided for in Section 8 para 2 Nos. 1, 2 and 3 MarkenG may be overcome if, prior to its registration, the trademark has already acquired a secondary meaning in the trade circles concerned.
II. Acquisition of Trademark Rights
Section 4 MarkenG distinguishes three forms of trademarks which are different in their nature. Trademark protection accrues from a registration with the Trademark Register, from the use of a sign in the course of trade (provided that the sign has acquired prominence as a trade mark in the trade circles concerned) or from the fact that a trademark is well-known within the meaning of Article 6bis of the Paris Convention. Thus, trademark rights do not only originate from a registration but may also be created if the respective sign has gained secondary meaning.
Owners of registered trademarks and trademark applications may be natural persons, legal entities and partnerships as long as they have been vested with the ability to acquire rights and to assume obligations (Section 7 MarkenG). With respect to so called collective trademarks which are registered or applied for registration, only associations having legal capacity and legal persons under public law can become trademark owners (Section 98 MarkenG). Collective trademarks are protectable signs which are capable of distinguishing the goods or services of the members of the owner of the collective trademark from those of other undertakings (Section 97 para. 1 MarkenG).
Trademarks may be transferred, and this assignment of the rights of registered trademarks may be entered into the Trademark Register (Section 27 MarkenG). Trademark rights can also be pledged or become subject to measures of enforcement as well as included in bankruptcy proceedings (Section 29 MarkenG). The owner of a trademark may also license trademark rights to third parties, may it be exclusively or non-exclusively (Section 30 MarkenG).
III. Procedure of Application for Registration
1. Application for Registration of a Trademark
The registration procedure with the Trademark Register at the German Patent Office is regulated in Sections 32 to 41 MarkenG. The application to be filed with the Trademark Register must comprise the information about the applicant, a reproduction of the trademark and a list of goods or services for which registration is applied for. The Trademark Register has created a special form in which the necessary statements for application can be inserted. Together with filing of the application, the applicant has to pay the application fee which already includes the registration in three classes of goods. The applicant may also apply for expedited examination which triggers an additional fee.
The date on which the application is received by the Patent Office, the application date, usually comprises the priority date. However, an applicant may also claim a foreign priority or a priority due to exibition at a trade fair. Following the application, the Trademark Office examines whether an absolute bar exists to protection according to Sections 3, 8 or 10 MarkenG. If the Trademark Office raises objections against the application the applicant receives an opportunity to cure deficiencies. It is also possible for him to devide the application by declaring that, for the goods and services referred to in the declaration of dividion, the application has to be dealt with as a divisional application. If the examination shows that the application meets the requirements for application the trademark will be entered into the Trademark Register (Section 41 MarkenG). The registration is then published in the Trademark Gazette.
2. Opposition Proceedings
The owner of a trademark with priority may raise opposition to the registration of the trademark within a period of three months following the date of publication of the registration of the trademark (Section 42 MarkenG). The opposition may be based on registered trademarks (or trademarks applied for registration) if the goods or services for which the trademark has been registered are identical or similar to the goods or services for which the prior trademark was applied for or registered (Section 9 para. 1 No. 1 and 2 MarkenG).
The owner of the trademark having a later time rank may defend himself with the plea of insufficient use of the trademark of the opponent (Section 43 para. 1 MarkenG). If lack of use is argued with respect to a trademark which has been registered for at least five years the opponent has to substantiate by prima facie evidence that the registered trademark with priority had been used within the last five years prior to the publication of the registration of the trademark against which the opposition is directed.
3. Cancellation Proceedings
Irrespective of opposition proceedings, a trademark registration may be cancelled by different means and for different reasons. Cancellation of a registered trademark can be effected by a waiver of the owner of the trademark (Section 48 MarkenG), because of non-use within a continuos period of five years (Section 49 MarkenG), because of absolute bars to protection stipulated in Sections 3, 7, and 8 MarkenG (Section 50 MarkenG) or because of the existance of earlier rights within the meaning of Sections 9 to 13 MarkenG (Section 51 MarkenG). A registered trademark is also due for cancellation if the trademark has become the generic name for the goods or services or if the trademark is to mislead a public (Section 49 MarkenG).
The application for such cancellations may be filed with the Patent Office (Sections 53, 54 MarkenG).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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