Registration of marksi Inherent registrability
Trademarks may be registered if the DPMA does not consider an absolute ground for refusal to be applicable. In contrast to patent and trademark offices in some other jurisdictions, there is no ex officio examination on relative grounds (see subsection ii). Hence, a trademark, inter alia, has to be distinctive (i.e., not be descriptive of the goods or services, not deceive the public and not be contrary to public policy). A sign may also acquire distinctiveness by use in trade. To prove acquired distinctiveness, the owner may submit, inter alia, market share data, advertisement material and consumer surveys indicating that at least 50 per cent of consumers perceive the sign as an indication of origin. In 2019, new absolute grounds for refusal were introduced. As of 14 January 2019, the DPMA will refuse registration of trademarks that consist of geographical indications and designations of origin; in particular, for foodstuffs, wines and spirits protected under national or European legislation or conventions.
The duration of protection for registered trademarks commences with the date of filing. For all trademarks registered before 14 January 2019, the protection lapses 10 years after registration, by the end of the last day of the month of registration (e.g., a trademark registered on 7 January 2019 would lapse by the end of 31 January 2029). Trademarks registered on or after 14 January 2019 lapse exactly 10 years after registration (e.g., a trademark registered on 15 January 2019 would lapse by the end of 15 January 2029). Upon payment of renewal fees, trademark protection can be renewed for additional 10-year periods. There is no limit as to how often trademark protection may be renewed.
Fees for German trademarks are significantly lower than those for EUTMs. The basic application fee for a German trademark is €300 (€290 for electronic filing) and includes the fee for three classes of goods or services. Each additional class of goods or services costs €100. Renewal fees are €750 (including three classes) and €260 for each additional class.ii Prior rights
The DPMA does not assess ex officio whether the registration of a trademark may be refused on grounds of earlier rights. Earlier rights must be invoked by the respective right holder in an opposition proceeding. Hence, right holders are advised to constantly monitor trademark registrations. Later ‘attacks’ based on prior rights are possible after the opposition period has ended, but require action in court (see subsection iii). Applicants, on the other hand, should ensure that no identical or confusingly similar earlier marks have been registered prior to seeking registration themselves.iii Inter partes proceedings
Any owner of an earlier right may lodge an opposition within a three-month period after the date of the publication of the registration of the challenged trademark. As of 14 January 2019, an opposing party may file an opposition on the basis of several earlier rights, while the previous system required a separate opposition for each earlier right invoked by the opposing party. The 2019 reform also introduced a cooling-off period during opposition proceedings. Upon joint request of the parties, the DPMA may grant a period of at least two months for the parties to reach an amicable settlement.
Upon request by a third party, a trademark may be revoked due to, inter alia, non-use within five years of registration, genericisation of a trademark or deceptiveness acquired by use of the trademark.
Furthermore, any third party may lodge an invalidity action based on absolute grounds for refusal or earlier rights, provided that the ground for refusal or the earlier right still exists at the time of the invalidity decision.
Revocation and invalidity actions can be filed either with the DPMA or with the civil courts. Under the current system, however, invalidity actions based on earlier rights may only be filed with a civil court. This will change as of 1 May 2020, when all revocation and invalidity actions, including invalidity actions based on earlier rights, at the choice of the claimant, may be filed either with the DPMA or with a civil court.iv Appeals
With regard to the decisions of the DPMA, appeals may be lodged with the BPatG. The decisions of the BPatG can only be reviewed on points of law by the BGH if the BPatG has allowed such an appeal on points of law in its order or if a significant procedural right has potentially been violated.
With regard to the decisions of the civil courts of first instance, appeals may be lodged with appellate courts (OLG). Decisions of the OLG may be reviewed on points of law (not facts) by the BGH.