German Trademark Law Modernization Act (Markenrechtsmodernisierungsgesetz)

|Tanja Wttmann|

The Markenrechtsmodernisierungsgesetz (trademark law modernization act), or MaMoG for short, has been in force since 14 January 2019. While some changes came into effect on 14 January 2019 and had to pass first tests, other innovations have only been in force since 1 May 2020.

Current changes include that proceedings for invalidity based on conflicting prior rights and for revocation based on non-use (now) can be conducted in full before the German Patent and Trademark Office (DPMA). Until 1 May 2020, such proceedings were reserved for the civil courts.

1. Application for declaration of invalidity and cancellation of a registered trademark based on conflicting earlier rights (Section 51 German Trademarks Act)

An application for declaration of invalidity against a registered younger mark can be based on the prior rights listed in Sections 9 to 13 of the German Trademarks Act. In addition, holders of protected geographical designations or protected designations of origin now can apply for a declaration of invalidity. The written application has to be substantiated and an official fee of € 400.00 is to be paid if the application is based on one prior right. If the application for invalidity is based on more than one prior right, additional fees will become due.

In case the proprietor of the contested trademark does not react after having been served with the application by the DPMA, the Office will decide that the trademark is invalid and is to be cancelled. If the trademark proprietor objects, contentious proceedings will take their course at the end of which the DPMA will render a decision in which it either (partially) rejects the application or (partially) declares the contested trademark invalid and (partially) cancels it from the Register.

2. Revocation of a trademark based on non-use (Section 49 German Trademarks Act)

Revocation proceedings now also can be conducted in full before the DPMA.

A trademark should be used at the latest after a period of five years after expiry of the opposition term. If this is not the case, any natural or legal person and certain interest groups may file a written application for revocation due to non-use. The application is to be substantiated and an official fee of € 100.00 is to be paid.

In case the proprietor of the contested trademark does not react after having been served with the revocation application by the DPMA, the Office will revoke the mark and will cancel it from the Register. If the trademark proprietor objects to the application for revocation, contentious proceedings now may be pursued before the DPMA provided the revocation applicant pays a continuation fee of € 300.00. After conclusion of the proceedings, the application for revocation is either (partially) rejected or the trademark is (partially) declared as revoked and is (partially) cancelled from the Register.

3. Comparison with proceedings before the civil courts

Proceedings for invalidity based on prior rights and for revocation based on non-use (still) can be pursued by way of an action before the civil courts. In general, in court proceedings revocation based on non-use is brought by way of a counterclaim in pending court proceedings against the mark based on which the claimant of the counter action has been attacked.

Invalidity as well as revocation actions, however, are inadmissible in case a corresponding invalidity or revocation application already has been filed with the DPMA. In the alternative, an application for declaration of invalidity or revocation before the DPMA is inadmissible if a corresponding action already has been submitted with the civil courts.

The details of the proceedings before the DPMA and the civil courts, respectively, in parts differ substantially. In particular, the cost risk in proceedings before the DPMA is significantly lower than in the case of court proceedings. The course of action to be pursued must therefore be carefully considered in each individual case.

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