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  • Writer's pictureMarie-Avril Roux Steinkühler

The opposition procedure in Germany

Photo by Jeshoot on Unsplash

Opposition allows you to prevent the registration of a new trade mark if you believe that it infringes your rights. This is a simple and quick procedure to be taken in Germany before the Deutsches Patent-und Markenamt, (DPMA) (§5 MarkenG).

Here we explain the different steps of this procedure:

What is there to object to?

The opposition procedure allows trade mark owners to oppose the registration of subsequent trade mark applications which infringe their rights. The trade mark to be opposed may be :

  • a German trademark application, or

  • an international trademark designating Germany.

Note: An opposition against an EU trade mark application must be filed with the European Union Office for Intellectual Property, not with the German office. In this case, European trademark law will apply to the proceedings.

Who has standing and on what grounds?

An opposition procedure can be initiated by any person (§42 MarkenG):

  • owner of one or more earlier German, European or international trademarks designating Germany (filed or registered);

  • owner of an earlier company name (§5 MarkenG), or of an unregistered trade mark which is protected by its use in the course of trade, insofar as the sign has acquired a reputation as a trade mark for the relevant public (§4 Nr.2 MarkenG);

  • entitled to assert rights deriving from an earlier protected designation of origin or geographical indication.

An opposition may be based on one or more earlier rights as long as these rights belong to the same proprietor

When to object?

Unlike France, where an opposition must be filed within two months of the publication of a contested trademark application, in Germany, an opposition must be filed within three months from the date of publication of the trademark registration (§41 MarkenG).

It is therefore essential, in view of the advantages of the opposition procedure, to set up a professional trademark watch. This allows new identical or similar trademarks to be identified and opposed in good time.

Professional trademark monitoring therefore also serves to protect against the risk of dilution of one's own trademark and to maintain its distinctiveness.

What are the costs of an opposition?

Before the DPMA, an opposition fee of EUR 250 is payable where the opposition is based on only one trade mark. An additional fee of EUR 50 must be paid for each additional class.

After the conclusion of the trade mark opposition proceedings before the Trade Mark Office, each party generally bears the costs incurred (§63 Abs. 1 S3 MarkenG). In exceptional cases, the Trade Mark Office may in its decision charge all or part of the costs of the proceedings to one of the parties, e.g. if the opposition proceedings were clearly risky.

How do I lodge an objection?

The opposition must be filed with the DPMA in German, by means of forms to be filled in and available on the official website of the Office.

Unlike the opposition procedure before the INPI in France, the filing of arguments or observations in support of the opposition is optional.

The objection is made :

  • by post: please note that the date of the opposition is the date of receipt of the opposition by the Office and not the date of sending;

  • by fax;

  • or by means of the DPMA communication software: DPMA DirektPro.

What happens next?

Since 2019, a period of at least two months is granted at the joint request of both parties to reach an amicable settlement. This period is called the "cooling-off period". This period can be extended by means of joint requests by the parties.

If the parties have not reached an agreement, then, where no time for negotiation has been requested, the applicant - the owner of the trade mark application - has two months to respond to the opposition filed against his trade mark application.

The DPMA then examines the procedure, the merits of the objection and makes its decision.

What are the chances of success of an opposition?

The existence of a likelihood of confusion within the meaning of the German Trade Mark Act (MarkenG) in opposition proceedings before the DPMA - as well as in opposition proceedings before the EUIPO under the EU Trade Mark Regulation (EUMR) - must be assessed according to:

the similarity of the goods or services for which protection is sought by the marks in comparison,

the phonetic, visual and conceptual similarity of the distinctive signs in comparison, and

the distinctive character of the earlier mark.

Thus, less similarity between the goods may be compensated for by greater similarity between the signs or greater distinctiveness of the earlier mark, and vice versa.

Do you want to defend your brand in Germany? MARS-IP: We represent and advise you on brand protection, strategy and brand management.


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