On 14 January 2019, amendments regarding, inter alia, the unambiguous determinability of signs (sec. 3 Trade Mark Act), the new wording of sec. 3 (2) Trade Mark Act on shape-related trade marks, the introduction of further absolute grounds for refusal in sec. 8 (2) nos. 9 – 12 Trade Mark Act, the extension of the grounds for opposition in sec. 42 (2) no. 5 Trade Mark Act, the new regulation of the non-use objection and the calculation of the ten-year term of protection entered into force.
On 1 May 2020, the amended provisions on invalidity and revocation proceedings will enter into force. In implementation of the Trade Mark Act Directive, sections 53 and 54 Trade Mark Act provide for patent office proceedings with regard to the revocation proceedings and invalidity proceedings due to earlier rights.
The invalidity procedure provided for in sec. 53 Trade Mark Act based on absolute grounds for refusal of protection has essentially been retained. However, the facts and evidence serving as substantiation must be filed together with the application, otherwise the application is inadmissible. With regard to the subject matter of the invalidity proceedings, the precise indication of the absolute grounds for refusal of protection (sec. 53 (1), fourth and fifth sentence, Trade Mark Act) must be observed. Any natural or legal person and any association of manufacturers, producers, service providers, traders or consumers which may be party to the proceedings is entitled to file an application (sec. 53 (2) Trade Mark Act).
The application for a declaration of invalidity based on absolute grounds for refusal will be served by the German Patent and Trade Mark Office (GPTO) on the proprietor of the registered trade mark, together with a request to submit observations on the application within two months of service. If the proprietor does not object to the application for a declaration of invalidity within the aforementioned period, the invalidity of the trade mark will be declared and the registration will be cancelled. If, on the other hand, the request for invalidity is objected to within the time limit, the GPTO will forward the objection to the applicant (sec. 53 (5) Trade Mark Act). Exchange of observations will follow; the procedure ends with a decision; it is possible to file an appeal against this decision.
The introduction of invalidity procedures due to relative grounds for refusal of protection is new to proceedings before the GPTO (sec. 53, 51 Trade Mark Act). Here, too, the facts and evidence serving as substantiation have to filed with the application (sec. 53 (1) sentence 2 Trade Mark Act). The earlier rights must be specified in detail with regard to the further provision according to which the application is inadmissible if an unappealable decision or final judgment has already been rendered on the same subject matter between the parties, or if an action under sec. 55 Trade Mark Act is pending between the parties on the same subject matter of the dispute (sec. 53 (1), fourth and fifth sentence, Trade Mark Act). The eligibility to file an application is governed by sec. 53 (3) Trade Mark Act.
In invalidity proceedings based on earlier rights the GPTO shall forward the application for a declaration of invalidity to the proprietor of the registered trade mark with the request to submit a declaration within two months after service (sec. 53 (4) Trade Mark Act). If the proprietor does not object to the request within the aforementioned period, the invalidity of the trade mark will be declared and the registration will be cancelled. If the request for invalidity is objected to within the time limit, the GPTO will notify the applicant of the objection and the normal procedure at the GPTO will follow. Against the decision of the Trade Mark Division only an appeal may be filed.
The request for declaration of invalidity based on absolute grounds or on earlier rights is subject to a fee of EUR 400. If the request for a declaration of invalidity is based on several earlier rights, an additional fee of EUR 100 will be charged per right.
Opposition proceedings and invalidity proceedings based on relative grounds for refusal are both possible. There are differences in the decision-making authority: a Trade Mark Section decides the opposition (sec. 56 (2) Trade Mark Act), whereas the revocation request is decided by the Trade Mark Division with at least three members of the GPTO (sec. 56 (3) Trade Mark Act). Furthermore, all relative grounds for refusal under sec. 9 through sec. 13 Trade Mark Act may be invoked in invalidity proceedings; this is not possible in opposition proceedings. The opposition may only be filed within a period of three months after publication of the registration of the trade mark (sec. 42 (1) Trade Mark Act). The opposition proceedings postpone the beginning of the grace period for use of the challenged trade mark; the “changing period of use” only exists in invalidity proceedings, sec. 53 (6) Trade Mark Act.
The application for revocation within the meaning of sec. 49 Trade Mark Act must be filed in writing pursuant to sec. 53 Trade Mark Act and must be accompanied by the grounds for the application. The application for revocation is subject to an initial fee of EUR 100.
Any natural or legal person as well as any association of manufacturers, producers, service providers, traders or consumers who may be parties to the proceedings is entitled to file an application (sec. 53 (2) Trade Mark Act). If the proprietor of the challenged trade mark does not object within a period of two months after service of the application for revocation, the trade mark shall be declared revoked and cancelled.
Otherwise, if the proprietor of the challenged trade mark objects, the GPTO will notify the applicant of such objection. If the applicant wishes to continue the revocation proceedings, a further fee of EUR 300 must be paid within one month after notification of the objection (sec. 53 (5), fourth sentence, Trade Mark Act).
The application for cancellation on grounds of revocation is inadmissible if a final judgment has been rendered on the same subject matter of the dispute between the parties or if an action under sec. 55 Trade Mark Act is pending (sec. 53 (1), fourth and fifth sentence, Trade Mark Act). Conversely, an action for revocation under sec. 55 (1), second sentence, Trade Mark Act is inadmissible if a decision has already been taken on the same subject matter of the dispute between the parties or if an application for revocation has been filed with the GPTO. Each of the grounds for revocation mentioned in sec. 49 Trade Mark Act constitutes a separate subject matter of the dispute.
Third parties may join revocation and invalidity proceedings at any time, sec. 54 Trade Mark Act. A prerequisite is that the third party can show that proceedings for infringement of the same registered trade mark are pending against that party or that it has been requested to refrain from an alleged infringement of the registered trade mark.
When applying the new provisions that entered into force on 14 January 2019 and will enter on 1 May 2020, the transitional provisions in sec. 158 et seq. Trade Mark Act must be observed.
