2020 brings significant changes in the field of trademark law for proceedings before the German Patent and Trademark Office (GPTO). By 1 May 2020 – for the first time – there will be administrative proceedings for declaration of invalidity due to the existence of earlier rights before the GPTO. In these proceedings, the Office will examine and decide on the substantial law. This article provides an outlook on these proceedings.

Amendments arising from the "Markenrechtsmodernisierungsgesetz" (MaMoG = "Trademark Law Modernization Act"), mean that relative grounds for invalidity (earlier rights) can now be invoked not only before the German civil courts, but also before the GPTO – and in the second instance before the German Federal Patent Court (FPC). The "Trademark Law Modernization Act" will enter into force in the first half of this year. So far, only cancellation proceedings based on absolute grounds for refusal have been handled by the GPTO.

At the same time, however, the German civil courts remain responsible for the enforcement of earlier rights. There is a right to choose whether a request is filed with the GPTO or whether an action is brought before a civil court. The revised Sections 53 and 55 (1) of the German Trademark Act exclude a parallel double involvement of civil courts and the GPTO / FPC.

Previous legal framework

Prior to the amendments of the German Trademark Act, owners of earlier rights could only assert such rights before the GPTO by initiating opposition proceedings. The only alternative was to file an action before the German civil courts.

Structure of the new proceedings

According to the latest amendments, there are "main proceedings" before the GPTO including a substantial examination. They are preceded by formal proceedings, i.e. an objection by the trademark owner is required before proceedings with a substantial examination are initiated. If no objection is filed within a period of two months, the GPTO declares the invalidity of the trademark and cancels the registration without examination.

Possible opposition proceedings before the GPTO do not preclude the admissibility of an application for a declaration of invalidity based on the same earlier right. Only actions for invalidity before a civil court and applications for a declaration of invalidity based on earlier rights before the GPTO exclude each other, provided they refer to the same matter in dispute. In contrast to opposition proceedings, the decision on the invalidity request is not taken by the simple GPTO trademark divisions, but by the GPTO trademark divisions including at least three members of the GPTO. Consequently, there is no reconsideration appeal, but an appeal goes directly up to the FPC.

Objections of non-use

The objections of non-use regulated in Sec. 53 (6) of the German Trademark Act (as amended), i.e. non-use as a means of legal defence, are likely to continue to be a cause for controversial discussions. In opposition proceedings before the GPTO the "moving" period of genuine use has ceased to apply for oppositions filed on or after 14 January 2019 (due to the MaMoG). However, in the new proceedings for declaration of invalidity due to the existence of earlier rights, different periods of genuine use are applicable. If the grace period (during which there is no obligation to put the trademark to use) expires only in the course of the invalidity proceedings, i.e. after filing the cancellation request, the applicant must prove – upon objection of the defendant – that the trademark has been (sufficiently) used within the last five years prior to the decision. In the relevant literature this regulation is partly considered to be incompatible with the EU Trademark Directive which is to be implemented by the member states.

Costs

In principle, the costs of invalidity proceedings before the GPTO and the FPC are borne by the parties themselves; only exceptionally, costs may be imposed on one of the parties for equity reasons. The official fixed fee for invalidity proceedings is currently € 400, with the fee being increased by € 100 for each additional sign claimed as an earlier right. The appeal fee is currently € 500.

Next steps / Outlook

The new administrative proceedings for declaration of invalidity due to the existence of earlier rights before the GPTO serve as a (genuine) alternative to bringing an action before the German civil courts and as a complementary means of enforcing rights to opposition proceedings. Time will tell how these administrative proceedings will be accepted compared to the possibility of a civil action. Furthermore, it is still unclear whether owners of earlier rights will continue to use the opposition proceedings as before, even if the subject matters of opposition and invalidity proceedings overlap. In this respect, in addition to the different costs of the proceedings, the fact that only the opposition proceedings offer the option of a reconsideration appeal before the GPTO instead of an appeal before the FPC will probably also be of relevance. It will be interesting to see how the new administrative proceedings are implemented in practice.