In Germany, the EU Trademark Directive 2015/2436 was transposed by the Trademark Law Modernisation Act (Markenrechtsmoderniesierungsgesetz, MaMoG), which entered into force on 14 January 2019 and whose latest measures apply from May, the 1st 2020. The reform modernised the modalities of trademark representation, introduced the certification mark, set up new administrative procedures and implemented new rules on goods under customs supervision.
Representation of the trade mark in the national register. In accordance with the Directive, Germany has removed the requirement of graphic representation from the Trade Mark Act (MarkenG) and thus extended the possibilities of representation in the national register. For example, sounds (Klänge) are added to the list of protectable signs.[1] But how can a sound be represented in the Official Trademark Journal? The protected sign must be represented in a clear, precise, distinct, easily accessible, intelligible, durable and objective manner. Germany has chosen the QR Code solution which refers directly to the digital register and France has opted for the SHA256 digital fingerprint. The same international trademark designating the two countries would therefore be referenced differently on the national trademark registers:
In France | In Germany |
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The certification mark. The MaMoG introduced this type of mark which did not previously exist in Germany. It may be registered as such on filing by any natural or legal person, provided that its activity does not involve the supply of certified goods or services.[2] Within the scope of the Directive, German law provides, as in France, for a specific control of certification marks in order to check whether there is a risk that the public might be misled as to the character or meaning of the mark, in particular if the mark might give the impression that it is something other than a certification mark. This is intended to protect the fine line between certification marks and collective marks. The conditions for revocation are also extended for certification marks where the use of the mark after registration may lead to confusion for the public. The control is thus a priori and a posteriori of the registration.
The "three-class" filing is maintained in Germany. While France has switched to a single-class application, the basic application for up to three classes remains in Germany for a fee of € 290.00. When applying for a trademark, the DPMA carries out the formal examination of the application and then proceeds directly to registration. Only then, after registration, does the unchanged 3-month opposition period begin. The duration of protection of a registered trademark is now harmonised as regards the starting date of protection, i.e. from the date of filing of the application, renewable indefinitely for unchanged periods of 10 years.
Recording of trademark licences in the National Register. It is now possible to record existing licences or the intention to offer licences in the National Register, whereas previously these were not published. The recording has only a declaratory effect, but the law expressly allows the holder of an exclusive licence to bring an action for infringement of a trademark if, after a formal injunction, the owner of the trademark does not act within an appropriate period.[3]
Procedures and litigation. The Modernisation Act introduces new administrative actions before the DPMA. This does not exclude recourse to the courts, but the choice of one of the available channels renders inadmissible any action with the same object by the other channel.
Opposition. In Germany the law already provided that a trade name could be the basis for an opposition. The reform therefore extended the list of grounds to include protected designations of origin or geographical indications.[4] The cost of the procedure has been increased (€250) but remains lower than in France (€400 / €150) or before the EUIPO (€320). Germany has also transposed the possibility of invoking several earlier rights in the same opposition[5] procedure and introduced a reflection period granting a two-month suspension of the procedure upon joint request of the parties, in order to reach an amicable solution. [6]
Forfeiture and nullity. Effective since May, the 1st 2020, new provisions expand the possibilities for action before the DPMA[7]. An administrative procedure for cancellation of a trade mark, based on absolute grounds (distinctiveness, descriptiveness etc.), already existed before the German office before the reform, but in the event of opposition by the proprietor, only the judicial route was allowed. The DPMA is now competent to deal with applications for revocation and invalidity of trade marks. The revocation procedure remains unchanged, giving the owner of the challenged trademark a two-month opposition period from the date of filing of the application. If the owner does not react, the trademark will be revoked and the registration cancelled. A basic fee of €100 is payable for an application for revocation, plus a further €300 if the proprietor opposes to start proceedings.
Any natural or legal person and any association of manufacturers, producers, service providers, traders or consumers may bring revocation or invalidity proceedings where they are based on an absolute ground. Invalidity proceedings on relative[8] grounds are only available to the holder of prior rights and to persons entitled to assert rights in a protected geographical indication or designation of origin.[9] The invalidity procedure costs €400 for the basic fee and €100 for each additional prior right claimed.
The new provisions on counterfeiting
Finally, the Modernisation Act strengthens the rights conferred by the trademark in Germany. An infringement is thus constituted by the contentious use of a sign as a company name or business name if a sufficient link is shown in this use with the goods and services designated by the earlier[10] trademark. Furthermore, with regard to goods under customs supervision, the owner of a trade mark or trade name may now prohibit third parties from transiting goods bearing that sign through German territory if they are not released for free circulation there.[11] However, if the owner of the goods is able to demonstrate that the owner of the sign is not entitled to prohibit the placing of the goods on the market in the country of destination, his right lapses. [12]
Despite some specificities and different administrative practice, the harmonisation of national trademark laws along the lines of the European trademark is a good example of integration.
(Article first published in DFJ n°3/2020)
[1] §3 (1) MarkenG [2] Neutrality principle of Article 28(2) of Directive 2015/2436 [3] §30 (3) MarkenG [4] §42 (1) MarkenG [5] §42 (3) MarkenG [6] §42 (4) MarkenG [7] §53, §54 MarkenG [8] §53 (3) MarkenG [9] §9 to § 13MarkenG [10] §14 III (5) MarkenG [11] §14a MarkenG [12] §14a (2) MarkenG
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