IP Report: Reform of the German Trademark

IP Report Trademark Law

Reform of the German Trademark Act transposing Trademark Directive (EU) 2015/2436: Significant amendments and new possibilities Reported by Dr. Philipe Kutschke and Simon Schopper

On December 11, 2018, the German 1. Key amendments as of Bundestag adopted the German May 1, 2020 Trademark Law Modernization Act transposing the Directive The amendments which came into effect Dr. jur. Philipe Kutschke (EU) 2015/2436 of the European on May 1, 2020 particularly pertain to Attorney-at-Law (Rechts- Parliament and of the Council dated cancellation proceedings (revocation and/ anwalt), Certified IP December 16, 2015 (TMD). The Mod- or invalidity proceedings). In addition to Lawyer, Commercial ernization Act came into effect in two adaptations of proceedings due to absolute Mediator (MuCDR), steps: grounds for refusal and for revocation, inva- Partner lidity proceedings due to conflicting earlier The first part became effective on rights were introduced. The provisions of January 14, 2019, introducing a new revocation and invalidity proceedings apply trademark category (certification to German trademarks and to International marks), new types of trademarks Registrations correspondingly insofar as (position marks, tracer marks, pat- their protection extends to Germany. tern marks, motion marks, multimedia marks, hologram marks), and Now, it is possible to continue revocation new absolute grounds for refusal proceedings – proceedings for the declara- (conflicting earlier protected geo- tion of revocation due to a lack of genuine graphical designations of origin, use, in particular – in the form of adver- Simon Schopper protected geographical indications, sarial proceedings before the GPTO after an Attorney-at-Law (Rechts- traditional terms for wine, tradi- opposition by the trademark proprietor. This anwalt), Senior Associate tional specialities guaranteed with is an alternative of pursuing matters before regard to foodstuffs as well as pro- ordinary courts which is still admissible. For tected variety denominations). revocation proceedings relating to collective marks and certification marks, however, the The second part came into effect GPTO has exclusive competence. This consti- BARDEHLE PAGENBERG on May 1, 2020. Now, conducting tutes further convergence with EU Trade- Partnerschaft mbB adversarial revocation and invalidity mark law, where adversarial proceedings Patentanwälte Rechtsanwälte proceedings due to conflicting earlier for the declaration of the revocation of EU rights before the German Patent and trademarks before the EUIPO have always Prinzregentenplatz 7 Trademark Office (GPTO) is possible, been possible. As opposed to EU trademark 81675 München for example. The transposition of the law, German Trademark Law does not pro- T +49.(0)89.928 05-0 TMD was concluded when the second vide for a counterclaim directed towards the F +49.(0)89.928 05-444 part of the German Trademark Law declaration of the revocation of a collective or [email protected] Modernization Act came into effect. certification mark. However, defendants can www.bardehle.com raise the defense of vulnerability to cancellation due to a lack of genuine use. ISO 9001 certified IP Report Trademark Law

In addition, invalidity proceedings due to Hearings in revocation or invalidity pro- conflicting earlier rights may now also be ceedings before the GPTO now also take conducted before the GPTO, not only before place upon request by one party without any ordinary courts as had previously been the further requirements. Thus far, they were case. Before the GPTO, such proceedings only possible if the GPTO affirmed expedi- are only continued in the form of adver- ency or scheduled a hearing itself. sarial proceedings after an opposition by the trademark proprietor. Here, German What is probably of particular relevance for law and EU law further converge: The latter applicants based outside the EU, or EEC, has always provided for proceedings for the is that they may now become obligated declaration of the invalidity of an EU trade- to provide a security upon the request by mark due to conflicting earlier rights before the trademark proprietor. Analogously the EUIPO. to the provision that had already existed in German patent law, the court hearing Decisions the GPTO renders in revocation the case, or the GPTO as the case may be, or invalidity proceedings can be appealed to will exercise its discretion to determine the German Federal Patent Court. the amount of the security to be provided, which will presumably be based on the Invalidity proceedings due to absolute relevant procedural fees. grounds for refusal, however, remain essen- tially unchanged. The GPTO continues to 2. The amendments effective as of hold exclusive competence at first instance. January 14, 2019 – Practical indications and new possibilities of protec- Thus, choosing between invalidity and/ tion or revocation proceedings before ordinary courts on the one hand and before the When the first part of the reform became GPTO on the other hand is possible. Initi- effective on January 14, 2019, not only ating parallel proceedings is inadmissible, new specific types of trademarks, such as however. Rather, the proceedings initiated hologram marks, position marks, tracer first eliminate the possibility of initiating marks, pattern marks, motion marks, and additional proceedings. multimedia marks, were introduced; rather, now, the "sweep up" "other trademarks" also What is also new is the possibility of a allows for the new types of trademarks to third-party joining invalidity or revoca- be combined, for example holograms and tion proceedings if they are attacked based patterns. Additionally, “conceptual marks”, on the trademark in question before or out which can be defined by text descrip- of court. However, the intervention has to tion alone, for example, are generally also be declared within three months as of the eligible for registration now. Registering a event which triggers the right to intervene trademark for certain marketing concepts (such as the receipt of a warning letter would be conceivable in this context, for based on said trademark). example, if they actually function as a trademark, i.e. can serve as designations of origin in particular. 2 IP Report Trademark Law

The stores of the fashion label Abercrombie the protection of these new types of trade- & Fitch might come to mind. The scented marks to other states by way of an Inter- air, the appearance of the employees, and national Registration under the Madrid the choice of music become etched on the System will be possible at all. memory and, thus, might now be eligible to protection under trademark law. The new certification marks, on the other hand, have already become quite popular. Adventurous applicants also benefit from The GPTO has already received more than a liberalization of the options of repre- 80 corresponding applications. However, senting trademarks in this context. Now, only six of them have been registered (e.g. for example, it is admissible to (exclusively) the “Green Button” as a certification of determine a trademark by text description textiles from fair and ecological produc- (depositing a video including text description). Some applications have failed, inter tion to determine a trademark is also alia, because they did not adhere to the admissible now). In this regard, detailed neutrality requirement – i.e. the required requirements for the file format and size as legal and economic independence of the well as for the technical specifications (e.g. proprietor and the user of a trademark – or a maximum size of 20 MB, a maximum because they failed to file orderly regula- resolution of 1900 x 1080 pixels in case tions governing use of the trademark. In of video files) do admittedly exist; but view of the frequent errors, the Office is now no specific limits exist for the maximum planning to publish template regulations duration, or duration of the reproduction governing use of a trademark. According of representation means. According to the to our knowledge, the GPTO also generally GPTO, these aspects will be considered on considers helpful the use of word compo- a case-to-case basis. However, even in such nents which indicate a guarantee, such as cases, one requirement for the eligibility to “tested”, “certified”, “quality seal”, “test registration is that the reproduction enables label”, “certification”, or image compo- the GPTO and interested third parties (such nents which indicate a guarantee, such as a as competitors) to clearly and unambigu- “tested” check in the drawing. ously determine the subject-matter to be protected. Moreover, with the transposition of the Directive, new absolute grounds for refusal Applicants have been reluctant to make use have been introduced (protected designa- of the new types of trademarks so far. For tions of origin, protected geographical example, as far as we know, not one applica- indications, traditional terms for wine, tra- tion for a hologram mark has been filed with ditional specialities guaranteed with regard the GPTO, yet. It remains to be seen how the to foodstuffs as well as protected variety Offices will deal with priority claims in case denominations). In this regard, the GPTO of a divergent classification/representation might accept trademark applications for of types of trademarks. Applicants need to signs which contain a protected geograph- keep in mind that WIPO does not yet accept ical indication, for example, if the protected any of the new types of trademarks. Hence, geographical indication is accordingly the question remains of whether extending taken into consideration in the list of goods 3 IP Report Trademark Law

and services. For example, the trademark ings. In invalidity proceedings, however, “OUZO MAMA“ (DE no. 302019224892) the shifting period of use is still applicable was registered, inter alia, for the “operation which means that, where a plea of lack of of restaurants in hotels” in class 43 with use is raised, the trademark proprietor the addition that, if “anise liquor” is served, might have to prove in the course of pro- said liquor corresponds to the applicable ceedings that they genuinely used the trade- specification of the protected geographical mark not only at the time the request for indication “Ouzo”. declaration of invalidity was filed, but also at the time of the decision on the request. Furthermore, the shifting period of use in opposition proceedings was eliminated for Additionally, a “cooling-off” phase has now oppositions filed as of January 14, 2019. been codified for opposition proceedings This means that the potential revocation of before the GPTO. However, it differs from the earlier mark must already have occurred proceedings before the EUIPO in that it prior to the date of priority or application is possible at any stage of the proceedings of the later mark, where a plea of lack of upon request and opposition fees are not genuine use is raised in opposition proceed- reimbursed in case of an agreement.

Comments

All in all, we welcome the reform of German The procedural changes, particularly the Trademark Law. What is particularly posi- possibility of choosing between conducting tive is the fact that now, thanks to the new revocation and invalidity proceedings categories and types of trademarks, legisla- before the GPTO or before ordinary courts, tion is clearly closer to the understanding certainly consider the needs of proprietors which today’s consumers have of a trade- of IP rights, and those who want to become mark. Corresponding applications admit- proprietors of IP rights, to a higher degree. tedly entail the usual uncertainties always entailed in choosing a new path; however, It remains to be seen how the Offices and it will certainly be worthwhile for compa- courts will (continue to) apply and imple- nies to review their IP portfolios in terms ment these changes in practice. of potential additional trademark protection. In this context, national trademarks will probably regain the focus of applicants when portfolio strategies are developed.