Registration and useOwnership of marks
Who may apply for registration?
Any natural person, legal entity or partnership (to the extent that the partnership has the capacity to acquire rights and incur liabilities) may apply for trademark registration.Scope of trademark
What may and may not be protected and registered as a trademark?
Up to January 2019, in general, any sign capable of being represented graphically might be protected as a trademark if it was also capable of distinguishing the goods or services (service marks are registrable) of one undertaking from those of other undertakings (section 3 of the German Trademark Act), including:
- words (including personal names), designs, letters and numerals;
- sound marks;
- three-dimensional designs, including the shape of goods or their packaging; and
- colours and combinations of colours.
Since 14 January 2019, German trademarks may no longer have to be graphically representable, so unconventional mark forms, set out below, may, in principle, be registered:
- video scenes;
- motion marks;
- sound marks as an audio file;
- holograms; and
- smells, etc.
They must still be clear, unambiguous and identifiable. Therefore, applicants are still advised to submit their trademarks through graphic representation, to the extent possible, and this remains necessary when the German trademark is to form the basis for international registration. Even if it is now easier to protect non-traditional trademarks, the German Patent and Trademark Office will still carefully determine whether such non-traditional trademarks will be perceived by the relevant public as an indication of origin and not merely as decoration only.
Collective marks are registrable under German trademark law. The registration of a collective mark must meet the following conditions:
- only signs that are capable of being represented graphically within the meaning of section 3 of the German Trademark Act may constitute a collective mark;
- the sign must also be capable of distinguishing the goods or services of the members of the holder of the collective trademark from those of other undertakings in terms of corporate or geographical origin, nature, quality or other properties;
- in general, absolute grounds for refusal apply to collective trademarks. However, collective trademarks may also consist exclusively of signs or indications that may serve in trade to designate the geographical origin of the goods or services;
- ownership of a collective trademark is limited to associations with legal capacity, including umbrella and head associations with legal capacity and whose members are themselves associations, and legal entities governed by public law; and
- the application for a collective trademark must be accompanied by regulations governing the use of the trademark.
Since 14 January 2019, certification marks may, as a rule, also be registered in Germany. In contrast to other trademark forms, the guarantee function but not the origin function is paramount for certification marks, as follows:
- the ‘guaranteed characteristic’ must be evident from the mark itself;
- the applicant may not offer the goods or services covered by the certification mark him or herself (duty of neutrality); and
- the applicant must submit regulations for the use of the mark within two months from the date of application, at the latest. These regulations must fulfil specific requirements.
The following signs may not be registered or protected as a trademark:
- signs that exclusively consist of a shape that results from the nature of the goods themselves;
- signs that exclusively consist of a shape that is necessary to obtain a technical result; or
- signs that exclusively consist of a shape that gives substantial value to the goods.
Can trademark rights be established without registration?
Trademark rights can be established without registration. Rights in unregistered trademarks are established if a sign that has been used in commerce as a trademark for the relevant goods and services has acquired a reputation among the relevant public.
Further, protection can be established by notoriety within the meaning of article 6-bis of the Paris Convention.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
A foreign trademark that is not used domestically may enjoy protection under German trademark law only if it constitutes a notoriously well-known trademark within the meaning of article 6-bis of the Paris Convention. In this case, it enjoys full trademark protection in Germany irrespective of its protection or use in Germany. However, notoriety must be given in Germany but not be the result of any use in Germany. Cases of notoriety in Germany without any domestic use in Germany are rare.
Notoriety is usually established on the basis of a demoscopic survey. In general, the trademark must at least be known by 60 per cent to 70 per cent of all relevant trade circles concerned. In some cases, it may also be established on the basis of a variety of circumstances, including:
- duration, scope and geographical extent of use;
- duration, scope and geographical extent of trademark promotion, including advertising and product presentation at trade fairs and exhibitions; and
- the trademark’s value on the market, etc.
The benefits of registration
What are the benefits of registration?
Registration makes it much easier for rights enforcement.
The registration grants the trademark owner the right to prohibit the use of the trademark throughout Germany.
If unregistered trademarks are protected by the German Trademark Act, their protection is generally equal to the legal protection of registered trademarks. However, if a sign has acquired a reputation only within a certain area in Germany, protection is limited to that area. In this case, the trademark owner’s legal remedies are also limited to that area; that is, the trademark owner may not prohibit use in Germany outside that area and may not file oppositions or cancellation applications against newer registered trademarks.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
Filing a power of attorney is not necessary if the applicant or owner is represented by a German lawyer or patent attorney. Representatives other than German lawyers or patent attorneys should submit a power of attorney.
The minimum information and documentation that must be filed to receive an official confirmation of the filing date are:
- data identifying the applicant;
- a representation of the trademark; and
- a list of goods and services for which registration is sought.
The application form must further contain:
- the full name and address of the applicant and its agent (if applicable), as well as the full name and address plus telephone and fax numbers of the contact person to whom the German Patent and Trademark Office will address all further correspondence (and an indication of whether this contact person is the applicant or the agent);
- the filing date of the application;
- a representation of the mark, if possible, and a stipulation of whether the trademark is applied for in black and white or in colour (if so, the colours should be specified);
- an indication of the type of the trademark (eg, word mark, device mark, word and device mark, three-dimensional mark, sound mark, collective mark or any other type of mark including the new forms); and
- a list of goods and services specified according to classes.
In general, the application form must be completed, and the official application fee must be paid within three months of the application date. The amount to be paid must be stated in the application form and the applicant must indicate the preferred method of payment.
Details are set out in sections 32(2) and (3) of the German Trademark Act and sections 6 to 12 of the Trademark Regulation.
Applicants can request accelerated examination, which is subject to a surcharge of €200. If priority is claimed, the number, date and country of the earlier trademark application or registration must be indicated together with the relevant goods and services (with no official fee).
Applications can be filed online through the German Patent and Trademark Office’s DPMAdirekt service. The DPMAdirekt application software is free of charge and can be easily downloaded.
Even though the German Patent and Trademark Office does not check ex officio whether there are any earlier trademarks, it is highly recommended to conduct a search to better evaluate the risks of possible infringement of other parties’ earlier rights. In doing so, German trademarks as well as EU trademarks and international registrations covering either Germany or the European Union should be considered. The official database of the German Patent and Trademark Office – DPMAregister – is accessible free of charge.
To avoid risk, older trade names, title rights, domains and the like should also be included in the search.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
The trademark formally comes into effect upon registration.
There are no strict rules as to the time frame from filing to registration. In our experience, it takes between six weeks and nine months to obtain registration, provided that all formal requirements are met and there are no absolute grounds for refusal. The average time is currently just over three months, but it often goes much faster. It is possible to expedite the registration process by requesting the acceleration of proceedings, subject to payment of an extra fee of €200.
The official application fee is €300 (€290 for electronic filing) for an application in up to three classes. Each additional class is subject to an additional fee of €100. There is no official fee for claiming a foreign priority.
The earlier the application fees are paid, the sooner the German Patent and Trademark Office will start the examination. Although fees can be paid within three months of filing the application, payment on the application date is recommended.
There is no official registration fee.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
The German Patent and Trademark Office follows the Nice Classification. The German Patent and Trademark Office also accepts the terms of the harmonised database available on TMclass.
Multi-class applications are available. The official application fee is €300 (€290 for electronic filing) for an application in up to three classes. Each additional class covered by the same application is subject to an additional fee of €100.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
First, the German Patent and Trademark Office examines whether the application meets all formal requirements and whether the official application fee has been paid (it must be paid within three months of the application date).
If some of the formal requirements are not met (eg, regarding the details of the applicant, the representation of the trademark or the list of relevant goods and services), the German Patent and Trademark Office will allow the applicant to rectify the application accordingly. If the applicant does not remedy the deficiency by the deadline set or at least requests an extension of the deadline, the application will be deemed not to have been filed.
If the application meets all formal requirements, the German Patent and Trademark Office will then check for absolute grounds of refusal. The most important absolute grounds for refusal are if the trademark:
- is devoid of any distinctive character;
- consists exclusively of signs or indications which may serve, in business, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or the rendering of the services, or to designate other characteristics of the goods or services;
- consists exclusively of signs or indications that have become customary in day-to-day language or in the bona fide and established practices of the business for designating goods or services;
- is of such a nature as to mislead the public;
- violates the public order or the generally accepted principles of morality; or
- has been applied for in bad faith.
If the German Patent and Trademark Office cites any absolute grounds for refusal, it will invite the applicant to submit a comment in response within a prescribed time frame, which is usually one month for applicants that have their residence, registered office or place of business in Germany and two months for applicants from abroad. Extension requests are possible. If no statement is submitted within the specified period or the statement fails to convince the German Patent and Trademark Office of the mark’s registrability, the application will be refused.
With the exception of notoriously well-known trademarks within the meaning of article 6-bis of the Paris Convention, relative grounds for refusal (ie, prior rights of third parties) will not be examined by the German Patent and Trademark Office. Therefore, letters of consent are not needed.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Generally, there is no need for use to get registration and to keep it alive. This is only different if the applicant claims that the mark has acquired distinctiveness to overcome an official objection based on the fact that the trademark is descriptive, lacks distinctive character or has become a generic term.
Even if there is a grace period of five years starting with the expiry of the opposition deadline or the final end of the opposition proceedings, it is highly recommended to start the use of the trademark as soon as possible to avoid any cancellation actions owing to non-use.
Proof of use must be submitted in any proceedings upon request after the expiry of the grace period of use.
When claiming priority (only possible within six months of the application of the relevant trademark), the date and country of the earlier application or registration must be indicated. It must be clear whether priority is claimed for all goods and services or only parts thereof. The number of the relevant application and the priority documents (no legalisation or notarisation needed) must be submitted within two months of receipt of the corresponding request by the German Patent and Trademark Office. If necessary, a translation into German must be submitted one month after the date of claiming priority.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
It is not mandatory to use words or symbols such as ® (Registered) or ™ (Trademark). There are no benefits of using them except serving as a deterrent. Any misuse of the symbols ® and ™ will be considered as being misleading in the meaning of section 5 of the German Act against Unfair Competition.Appealing a denied application
Is there an appeal process if the application is denied?
In some cases in which certain examiners (depending on their service grade within the German Patent and Trademark Office) reject the application, the applicant can either directly lodge the appeal with the Federal Patent Court (the official fee for which is €200) or file a request for reconsideration (for which the official fee for which is €150) with the German Patent and Trademark Office. In both cases, the non-extendable deadline to file these requests is within one month of the notification date. The reconsideration proceedings with the Office are written proceedings only; no oral hearing takes place. An appeal against any negative decision in these reconsideration proceedings can be lodged with the Federal Patent Court within one month of the notification date (the official fee for which is €200).
When the first instance decision denying the application is taken by a legally qualified person, only an appeal with the Federal Patent Court is possible (the official fee for which is €200).
An oral hearing can take place in all appeal proceedings with the Federal Patent Court but is not compulsory.
If the Federal Patent Court rejects the application and allows a further appeal, a final appeal on a point of law can be filed with the Federal Court of Justice within one month of the notification. The grounds must be filed within one month of filing the appeal with the Federal Court of Justice. The Federal Patent Court must admit the appeal on a point of law if a legal question of fundamental importance and further development of the law or safeguarding the uniformity of case law requires a decision of the Federal Supreme Court. In the event of any serious procedural violations (eg, the lack of a right of audience), the appeal on a point of law is possible without the Federal Court of Justice’s admission.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Opposition proceedings with the German Patent and Trademark Office are post-registration proceedings. The non-extendable three-month opposition period starts with publication of the registration in the electronic Trade Mark Journal. Opposing an application prior to registration is not possible. Within the application process, it is only possible to file general objections as to the non-registrability.
The opposition must be filed in writing with the German Patent and Trademark Office within three months after the publication of the trademark. The opposition must contain information on the basis of the opposition, the opposed trademark, the extent of the opposition and the identity of the opponent. Even it is not even necessary to submit a statement of grounds for opposition, it is highly recommended and common to do so. The opposition shall be substantiated within a term of two months. Usually, there are two rounds of short submissions. The time and effort required may be higher where the opponent must prove the use of the trademark (only on the request of the owner of the contested trademark expires if the grace period of use expired). There is no oral hearing. It usually takes at least around one year for the German Patent and Trademark Office to issue its decision.
The opposition can be based on all older trademark registrations and applications in Germany (including German trademarks, EU trademarks and international registrations designating Germany or the European Union). Since January 2019, the opposition may be based on several trademarks.
The opposition fee is €250 for the first trademark and €50 for each additional mark cited in the opposition.
Oppositions can be based on older identical or similar trademarks for identical or similar goods and services. The likelihood of confusion includes the danger of association. If the opponent’s trademark is a famous or well-known trademark in Germany, a similarity of goods and services might not be necessary, if use of the younger trademark takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the older trademark.
An opposition can also be based on the fact that the opposed younger trademark was registered in the name of an agent or representative without the consent of the real owner.
An opposition can also be based on older rights (eg, trademarks acquired by use or trade designations) entitling their holders to prohibit the use of the opposed trademark throughout the territory of Germany.
Further, the opponent can also rely on notoriously well-known trademarks according to article 6-bis of the Paris Convention.
Finally, since 2019, the grounds of opposition have been expanded to include protected geographical indications and designations of origin.
Still, most oppositions are based on a likelihood of confusion. If the opposition is successful, the trademark registration is cancelled. In general, each party bears its own costs irrespective of the outcome of the official proceedings.
Opposition decisions are subject to appeal. Again, directly lodging an appeal with the Federal Patent Court is possible within a non-extendable period of one month from notification (an official fee of €200 applies). Depending on the grade of the relevant examiner, it is also possible to file a request for reconsideration with the German Patent and Trademark Office (subject to an official fee of €150 and a one-month deadline) in a first step and subsequently to appeal against the reconsideration with the Federal Patent Court. In these proceedings too, in general, each party bears its own costs.
Moreover, a trademark can be cancelled on request because of revocation or invalidity. Details are set out in sections 49 to 51 of the German Trademark Act.
Requests for cancellation because of revocation may be filed with the German Patent and Trademark Office or within the competent court of law. Details are set out in sections 53 and 55 of the German Trademark Act. A trademark registration can be cancelled for non-use on request if it has not been put to genuine use for a continuous five-year period preceding the cancellation request.
Any natural person or legal entity is entitled to file a request for cancellation owing to non-use of the registered trademark. The request can be brought before the German Patent and Trademark Office (official fee €100) or directly before the competent court of law (fees depend on the value of the proceedings, which is, in most cases, at least €100,000). If the request is filed with the German Patent and Trademark Office, the trademark owner will be requested to inform the German Patent and Trademark Office whether it objects to the cancellation. If the trademark owner fails to object to the cancellation action within two months of service of the notification, the registration will be cancelled. If the trademark owner objects to the cancellation, the German Patent and Trademark Office will inform the applicant that its application for cancellation will have to be made through an action before a court of law. In this case, the plaintiff bears the burden of proving that the trademark owner did not put its trademark to genuine use. The trademark owner must also provide evidence of genuine use of its trademark if the plaintiff’s action conclusively assumes that the mark has not been used.
As of May 2020, it is no longer necessary to file for non-use cancellation with the courts. The German Patent and Trademark Office is now able to decide on the entire case. However, the applicant can still choose whether to go through the proceedings with the Office or court. If the applicant decides to continue the proceedings with the Office, they must pay a further €300 for this continuation process.
Further, a trademark can be cancelled on request because of revocation if:
- the trademark has become a generic term for the goods or services for which it is registered; or
- as a consequence of the use made of the trademark by its owner or with its consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the general public, particularly as to the nature, quality or geographical origin of those goods or services.
Requests for cancellation can be based on absolute and relative grounds for refusal. Details are set out in sections 50 and 51 of the German Trademark Act.
A request for cancellation owing to absolute grounds is filed with the German Patent and Trademark Office. It can be filed by any natural person or legal entity. The official fee for filing a request for cancellation owing to absolute grounds for refusal is €400. This request also comprises bad faith registrations. For any cancellation requests based on bad faith, the applicant need not have trademark protection in Germany.
If an application for cancellation owing to absolute grounds for refusal is filed or cancellation proceedings have been instigated ex officio, the German Patent and Trademark Office will accordingly notify the owner of the registered trademark. If the trademark owner fails to object to cancellation within two months of service of the notification, the trademark registration will be cancelled. If the owner objects to cancellation, cancellation proceedings will commence. Such proceedings are determined by the principle of official investigation. However, the applicant has the burden of proof for all the facts that are not ascertainable by an official investigation, but that could prove absolute grounds for refusal.
With the exception of requests for cancellation based on the trademark’s lack of distinctiveness, descriptive character or generic description – which must be filed within 10 years of the registration date – there is no statute of limitations for filing such requests.
An action for cancellation based on earlier rights may be brought only by the holders of the prior rights or a licensee with the approval of the trademark owner. Up to 30 April 2020, those proceedings had to be filed with the competent court (costs depend on the value of the proceedings, which is in most cases at least €100,000).
In the event of an application for cancellation owing to prior rights, the plaintiff must still bring an action before the competent court of law and bears the burden of proof for holding a prior right that has been infringed by the younger trademark registration. However, a trademark registration may not be cancelled on the grounds of prior trademark rights if the holder of the prior trademark right has tolerated, for five consecutive years, the use of the younger trademark for goods or services for which it is registered, having knowledge of such use, unless registration of the younger trademark was applied for in bad faith.
Since May 2020, applicants can also claim prior rights or relative grounds with the German Patent and Trademark Office. It will no longer be necessary but still possible to file a claim with the courts. The official fee for filing a cancellation request owing to relative grounds is €400 and €50 for any additional relative ground.
Decisions of the German Patent and Trademark Office concerning revocation or cancellation proceedings may be appealed to the Federal Patent Court. Appeals have a suspensive effect and must be filed within one month of service of the decision.
Decisions of the regional court concerning revocation or cancellation proceedings may be appealed to the respective higher regional court. Such an appeal must be filed within one month of service of the decision.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
Registration can easily be renewed for further 10-year periods. The number of renewals allowed is unlimited (as compared to designs and patents). The only requirement is the payment of the official renewal fee, amounting to €750 plus additional class fees for each class beyond the first three classes (€260). The trademark owner must ensure that the German Patent and Trademark Office can allocate the payment to the trademark by indicating the registration number, the name of the trademark owner and the purpose of payment (ie, renewal). Use of the trademark is not required.
It is not necessary to renew the trademark for all classes or all relevant goods and services. In this case, the renewal request should make clear the goods and services and classes for which the trademark is to be renewed.
Renewal fees can be paid during the six months preceding the expiration date or, in case of failure to do so, six months after the expiry of protection at the latest. If payment is made within the six months after the expiry of protection, there will be a surcharge of €50 for the first three classes and €50 for each class beyond three classes.Surrender
What is the procedure for surrendering a trademark registration?
Registration of the trademark will be cancelled in the register at the owner’s request in respect of all or part of the goods or services for which it is registered, at any time.Related IP rights
Can trademarks be protected under other IP rights?
Device marks may also be registered as designs and enjoy copyright protection, depending on the degree of their creativity. While German design protection is afforded only to registered designs (in contrast to the protection afforded to non-registered EU designs), copyrights in Germany are unregistered rights. Copyright protection may also be available for very creative slogans. In some circumstances, the Act against Unfair Competition could also apply.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Domain names may be protected as trademarks, provided that the sign meets the general conditions for registration. The mere registration of a domain name does not grant the registrant an exclusive trademark right in the domain name. Such an exclusive right in the domain name can be established only if the domain name is also used as either a trademark – which means that the relevant public will perceive the sign not only as an address for a certain website, but also as an indication of origin for the goods and services offered through that website, if the owner has acquired a reputation through use of the trademark – or a company symbol. If it is used as a trademark, the use of the domain name may constitute genuine use of a registered trademark.
The country-code top-level domain (ccTLD) for Germany is .de. It is administered by the German Network Information Centre (DENIC) on a first-come, first-served basis. DENIC does not offer Uniform Domain-Name Dispute-Resolution Policy proceedings for the .de ccTLD.
The German Trademark Act grants the trademark owner protection against trademark infringements conducted online, in particular by way of cyber or typosquatting. If the .de domain name used by the infringer constitutes trademark infringement, it is possible to have the domain name locked during the proceedings by filing an application for recordal of a ‘dispute entry’. The principles applied by the courts for domain name disputes are generally identical to those applied to trademark infringement disputes. Therefore, the owner may in particular claim for an order that the infringer cease and desist from using the conflicting domain name for the goods or services causing a likelihood of confusion.
It is not possible to claim for the transfer of a domain name. If the claim is based on a well-known trademark, the cancellation of the domain name may be requested. Owners of trademarks that are not well known may claim cancellation of the domain name only on the basis of the Act against Unfair Competition.