🇬🇧 - #4 Registration of trademarks and registration of licenses
Mis à jour : 12 nov. 2020
The conditions for application and registration of a trade mark in the trade mark register have changed in Germany and France with the trade mark reform.
The three class trade mark application is maintained in Germany. France is moving towards one class cheaper application in France than in Germany.
When applying for a trade mark, the DPMA in Germany and the INPI in France first check whether all the formal requirements of the application are met. However, the trade mark application is not processed until the application fees have been paid in their entirety.
The registration fees represent a part of the intellectual property offices’ revenues. The differences in the registration fees between Germany and France remain even after the implementation of the Directive.
In Germany, the application fee for a trade mark for up to three classes is €290.00, provided that the application is made electronically. The application fee for each additional class is €100.00. The application fee for a collective or certification mark is €900.00 (see our last article on the certification mark).
This “three-class-package” which allows the trade mark applicant to pay the same price whether he applies for one, two or three classes of goods or services, has been abandoned in France. From now on, the application will be made for one class, and each additional class will be charged additionally, following the example of the European trademark. The electronic application thus costs €190.00 for one class, and each additional class entails an additional fee of €40.00.
The trademark registration in France is therefore cheaper than in Germany, regardless of the number of classes. This difference becomes even more significant as the number of classes applied for increases.
A harmonized term of protection
The protection period of a registered trade mark, following the transposition of Article 48 of the Directive in Germany and in France, is 10 years from the filing date of the trade mark. The term of protection may be renewed indefinitely. Formerly, the ten years protection period in Germany started on the last day of the month in which the application was filed. This particularity now belongs to history.
Registration of licenses is now possible in Germany
The implementation of the Directive has led to another important change in the field of trademark licensing in Germany. As provided for in article 25 of the Directive, it is now possible to have licenses listed in the German trade mark register on request (Section 30(6) of the German Trade Mark law). The registration includes information on the licensee, the type of license and possible restrictions. It has no legal effect and has a purely declaratory effect.
In France, licenses could already be registered with the INPI before the transposition of the Trade Mark Directive. Article L. 714-7 of the French Intellectual Property Code provides that any transfer or modification of the rights attached to a trade mark must be listed in the national trade mark register in order to be enforceable against third parties. Unlike in Germany registration in France is necessary for the license to be enforceable against third parties, unless the latter are aware of it.
The applicable fee for a registration in France is €27.00 per right applied for, and a flat rate of €270.00 for registrations of more than 10 rights, provided that they appear in the same application form. In Germany the fee for a registration, amendment or cancellation of a license in the trade mark register is €50.00 which is more expensive than the French system.
A further special feature for owners of an exclusive right of use:
In Germany, the law now provides that the holder of an exclusive license can bring an action for infringement if, following a formal request, the actual owner of the trade mark does not himself bring an infringement action within a reasonable period of time. (Section 30(3) of the German Trade Mark law). In France, the exclusive licensee already had this possibility, to act alone, but the conditions for bringing such an action were clarified (L. 716-4-2 of the French intellectual Property Code). After the transposition of Article 25.3 of the Directive, the same conditions apply as under German law. Sacred harmonisation...