Trade Mark Law Modernization Act – the most important amendments
In the course of the German Trademark Law Modernization Act (Markenrechtsmodernisierungsgesetz, short: MaMoG), a number of amendments to the German trade mark law have come into force since January 14, 2019.
As the MaMoG implements an EU trade mark directive from 2015 in Germany, many of the changes made are already known from the EUIPO procedure for Union trade marks. This results in a harmonization with Union trade mark law and thus simplifies the application of the law.
Information on the amendments, in official revocation or invalidity proceedings can be found in our article “Revocation and invalidity proceedings before the office from 01.05.2020“.
In the following, essential (but not all) amendments resulting from the MaMoG for applicants for German trade marks are listed:
Introduction of a national certification mark
This new trade mark category is not intended to focus on the indication of origin as in the case of an individual trade mark, but rather on the guarantee function with regard to material, mode of manufacture, quality, performance of the service, etc. This guarantee promise distinguishes the goods and services of the certification trade mark from those for which no such guarantee exists.
A certification mark is interesting for neutral certification companies that provide certification services such as quality seals or test labels. The owner of such a certification mark is obliged to be neutral and can be anyone who is not himself the provider of the goods/services.
It is obligatory to submit a regulations of use, which must contain information on the product characteristics to be guaranteed, the conditions of use as well as the testing and monitoring measures.
An internationally protected certification trade mark can now also be extended to the territory of the Federal Republic of Germany.
In many cases, however, good trade mark protection can also be achieved through the existing collective trade mark.
We would be pleased to advise you in which cases an individual trade mark, a collective trade mark or a certification trade mark offers the best protection.
The graphic representation is no longer necessary – registration of new forms of trade marks possible
Up to now, register marks which could not be represented graphically were refused registration. In the course of MaMoG this principle was rejected. Under MaMoG it is now sufficient for trade mark protection if the trade marks can be clearly and precisely determined. This facilitates the registration of new types of trade marks, since film and sound files (such as mp3) can now also be filed with the German Patent and Trade Mark Office (DPMA). Thus, new forms of trade marks, such as noisy sound marks, multimedia marks, motion marks or other modern trade marks, which may be a mixture of different forms of trade marks, e.g. a hologram sound mark, are in principle protectable.
New absolute grounds for refusal
The MaMoG can also refuse to register trade marks if the trade marks are opposed by protected geographical indications, protected geographical designations of origin, protected traditional wine designations, traditional specialities guaranteed in the food sector or protected plant variety demoninations.
Changes in the opposition proceedings
In trade mark opposition proceedings, it is now possible to file an opposition against a registered trade mark simultaneously on the basis of several earlier rights – and not, as previously, on the basis of one opposition sign.
The official opposition fee for an opposition based on an opposition sign is now 250 Euro instead of 120 Euro. For each additionally asserted opposition sign a further 50 Euro is due.
There are also new grounds for opposition, inter alia, with the protected geographical indication and the protected designation of origin (see absolute grounds for refusal).
Furthermore, as in the European procedure, there is now a “cooling-off” period, according to which an amicable settlement can be reached within two months upon joint request of the parties.
Moreover, in German opposition proceedings, where the proprietor of the challenged mark raised a objection of non-use, there have hitherto been two different periods of use, for each of which use of the opposing mark had to be invoked. In the course of MaMoG, the first period of use was changed in time. Thus, the use of the opposing mark must now be proven in the period of five years prior to the filing date or priority date of the challenged mark, if it has already been registered for more than five years at that time. The second “moving” period of use, which ended with the conclusion of the opposition proceedings, has been repealed. Furthermore, proof of use is now required – a prima facie evidence of use is no longer sufficient.
The grace period for use now commences on the date when no opposition can be filed against the registration of a trade mark. This is either the day after expiry of the opposition period or the date on which the decision which concluded the opposition proceedings becomes final or the withdrawal of the (last) opposition. Until now, the grace period for use began upon publication of the registration or at the date when the opposition proceedings were concluded.
Entry of national licences in the Register
Upon request of the trade mark owner or licensee, licenses can now also be entered in the trade mark register subject to a fee.
Also with regard to declarations of willingness to license and to sell, trade mark applicants and owners can have a non-binding declaration included in the register free of charge upon request, whereby this willingness can be withdrawn at any time.
Observations of third parties against trade mark applications
Third parties who are not involved in the application procedure can now submit written submissions to the DPMA to explain why the respective trade mark should not be registered ex officio. The third party itself does not become a party to the proceedings.
Reclassification upon renewal of the trade marks no longer takes place
When a trade mark is renewed, those goods or services which have been classified in other classes since the application was filed or the last renewal are not reclassified. Thus, possible costs for the trade mark owner are eliminated. However, this new feature makes trade mark searches and monitoring more difficult, since the old classifications cannot be relied upon.
End of protection, time limits in the renewal procedure
As before, the duration of protection for trade marks registered before 14.01.2019 ends 10 years after the end of the month in which the trade mark was applied for. For trade mark registrations from 14.01.2019 onwards, the duration of protection now ends 10 years after the application date, i.e. to the day.
Furthermore, under MaMoG the renewal fee will in future be due six months before the expiry of the duration of protection. The grace period with additional fees will be six months after the expiry of the duration of protection. However, for trade marks registered prior to 14.01.2019 whose duration of protection ends on 31.01.2020 at the latest, the Patent Costs Law (Patentkostengesetz) still applies in its old version, i.e. there is a grace period of two months without surcharges.
Further information can be found under:
Please contact us if you have any further questions.