As trademark practitioners know, protecting a trademark in Germany is often a winning strategy, but sometimes a perilous one.
Whether you deal with the registration of a trademark in Germany or with the designation of the German territory by an existing international trademark, the formidable German Patent and Trademark Office (DPMA) scrupulously analyses trademark applications before registering them in the national register.
Unfortunately, it is not uncommon to receive a partial or total “provisional refusal” of the grant of protection based on a lack of distinctiveness or too descriptive character according to the German trademark law.
For example, where the proprietor of an international trademark wishes to designate France and Germany as territories of protection simultaneously, the respective Offices are required to rule on the admissibility of the application in accordance with the Madrid Protocol.
In this situation, despite the high level of European harmonisation in this area of law, it is common for the French and German Offices to make a different decision on an identical trademark application.
As surprising as it might (not) be, it is systematically Germany that refuses registration while the French Office, the INPI is more accommodating.
The German trademark office has the reputation of carrying out a very strict control of the conditions for registration of a trademark, in particular with regard to the absolute grounds for refusal of section 8 of the German Trademark Law (§ 8 MarkenG).
Does the partial or total provisional refusal of the DPMA sound the death knell for the protection of the sign on German territory?
Of course not, but the granting of trademark protection in Germany must be fought for.
Partial or total provisional refusal
In the event of a refusal, the proprietor of an international trademark who has designated Germany receives a notification of provisional refusal from the German Office, specifying the basis for the refusal of registration of the trademark application without further explanation.
The holder then has a period of 4 months from the date of notification of the provisional refusal by the International Office (WIPO) to appoint an authorized representative before the DPMA (for example, a lawyer established in Germany). In the case of a national application, this period shall be reduced to one month, starting from the notification of the examiner.
If a representative is appointed before the DPMA within the prescribed period, the examiner shall transmit to that representative in more detail in the form of a letter the reasons for the refusal of grant of protection and shall invite the holder to submit his observations within a further period of three months.
If no representative is appointed before the DPMA within the initial period of 4 months or if no response is communicated to the DPMA within the new 3-month period prescribed by the examiner's letter, the notification of provisional refusal is simply confirmed without further details.
If the holder wishes to submit observations in support of his application in response to the examiner's argument, the Office must then decide in the form of a decision (Beschluss).
At this stage, the DPMA, which would not contradict itself, almost systematically rules against the trademark application. The registration of the trademark application in Germany is therefore refused.
In order to save their trademark application, the proprietor has a period of one month from the receipt of the Beschluss to introduce one of the available remedies, either an Erinnerung or a Beschwerde.
The Erinnerung is an internal appeal procedure before the DPMA, whose fees amount to €150 and which leads, all too often, to the confirmation of the initial decision. We do not recommend it.
The Beschwerde is a procedure for appeal by way of complaint before the Federal Patent Court of Germany (Bundespatentgericht, BPatG). The case is presented a final time before the DPMA who may decide to change its mind in extremis, but if not, the case is transmitted without further comment to the Bundespatentgericht and fully re-examined by a specialised division.
Choosing the process of Beschwerde makes it possible to speed up the procedure (without going through the Erinnerung) and provides a fresh perspective on the application for registration by making it possible to provide a detailed argumentation against the decision of the German Office. The practice of the Bundespatentgericht is closer to European case law and explains, in part, the much higher rates of success of trademark applications before that court.
It is important to point out, however, that these statistics reflect the cases in which a Beschwerde was actually engaged, to the exclusion of those in which the trademark application was simply abandoned.
What conclusion can be drawn from the difficulty of registering a trademark on German territory?
Some might think that it would be easier to go through a European trademark application, whose registration deadlines with the Fast-Track procedure and a 100% online approach break all records, and which makes it possible to obtain protection in both France and Germany. The EUIPO is very demanding in terms of the distinctiveness of the mark, but less so than the German Office.
It should not be forgotten that a registered trademark is not an eternal trademark. Indeed, even after its registration, the French, German, or European trademark remains liable to be invalidated in the context of an invalidity procedure (e.g., for lack of distinctive character). The holder would then be deprived of his rights and in certain cases ordered to pay the costs incurred by the other party.
Whatever the objectives of the applicant, it is therefore always recommended to be well advised by a professional on his trademark project and his trademark application strategy in Europe prior to filing and not to hesitate to defend his trademark application in the event of provisional refusal.
We will be happy to advise you if you encounter such difficulties.
MARS IP is proud to support its clients in the choice of their trademarks, their filing strategies and in case of refusal by an Office of intellectual property and other procedures.