Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Agents need a power of attorney signed by the applicant or owner. No notarisation or legalisation is required.
Filing the 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.
What information and documentation must be submitted in a trademark registration application?
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.
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.
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 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); and
- a list of goods and services specified according to classes.
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(s) or registration(s) must be indicated together with the relevant goods and services.
What rules govern the representation of the mark in the application?
The representation of the trademark must be clear, precise and represented graphically. Details depend on the form of the trademark. Most registrable trademarks can easily be represented graphically (eg, words, numbers, graphical devices and three-dimensional shapes). Sound marks must show sound sequences. Tactile marks can be represented graphically by describing their haptic characteristics.
Difficulties occur when applying for scents and tastes, as these cannot be represented graphically. In practice, most of these applications are refused.
Details are set out in Sections 32(2) and (3) of the Trademark Act and Sections 6 to 12 of the Trademark Regulation.
Are multi-class applications allowed?
Multi-class applications may be filed for both goods and services.
Is electronic filing available?
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.
What are the application fees?
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.
The applicant may choose to pay a fee of €200 for accelerated examination.
There is no official fee for claiming a foreign priority.
How are priority rights claimed?
When claiming priority, 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.
Priority can be claimed only within six months of the application date for the trademark whose priority is claimed.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
There is no official search for earlier trademark registrations and applications. However, even if 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 in order 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 be on the safe side, older trade names, title rights, domains and the like should also be included in the search.
What factors does the authority consider in its examination of the application?
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 the application meets all formal requirements, the German Patent and Trademark Office will then check for absolute grounds of refusal.
Details are set out in Section 8 of the Trademark Act.
Does the authority check for relative grounds for refusal (eg, through searches)?
With the exception of notoriously well-known trademarks under Article 6bis of the Paris Convention, the German Patent and Trademark Office does not check for relative grounds for refusal, but rather leaves it to the owner of older trademarks to act against new registrations by way of opposition or cancellation proceedings.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
If not all formal requirements are 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 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 timeframe – usually one month for applicants which 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.
Can rejected applications be appealed? If so, what procedures apply?
Rejected applications can be appealed by lodging an appeal with the Federal Patent Court within one month of notification of the rejection. The official fee is €200. An oral hearing can take place, but is not compulsory.
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 or file a request for reconsideration with the German Patent and Trademark Office. The official fee for reconsideration proceedings is €150. 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).
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.
When does a trademark registration formally come into effect?
In general, a trademark formally comes into effect upon registration. If the sign has acquired a reputation as a trademark among the relevant public, the trademark becomes effective with the acquisition of a reputation. According to Article 6bis of the Paris Convention, notoriously well-known trademarks become effective once they become notoriously well known.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years. In particular, it starts on the application date and ends after 10 years on the last day of the month in which the application date falls.
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 payment of the official renewal fee, amounting to €750 plus additional class fees for any classes 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).
It is not necessary to renew the trademark for all classes or all relevant goods and services. However, 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 last year of protection or six months after expiry of protection at the latest. If payment is made within the six months after expiry of protection, there will be no surcharge within the first two months, but a surcharge of €50 for the first three classes and €50 for each class beyond three classes will apply during the last four months.
What registration fees apply?
There are no official registration fees.
What is the usual timeframe from filing to registration?
There are no strict rules as to the timeframe. 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 3.1 months. It is possible to expedite the registration process by requesting the acceleration of proceedings, subject to payment of an extra fee of €200.
The earlier that registration 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.
If all requirements are met, the trademark will be registered and the applicant will receive a registration certificate. The registration is published in the electronic Trademark Journal. Oppositions may be filed within a non-extendable term of three months from the date of publication of the registration.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
The non-extendable three-month opposition period starts with publication of the registration of the trademark. The opposition must be filed in writing with the German Patent and Trademark Office and contain information on the basis of the opposition, the opposed trademark, the extent of the opposition and the identity of the opponent. An opposition can be based on one trademark only. If the opponent bases its opposition on several trademarks, separate opposition forms must be filed and the €120 opposition fee must be paid for each separate opposition.
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).
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.
Further, an opposition can 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.
Finally, the opponent can also rely on notoriously well-known trademarks according to Article 6bis of the Paris Convention.
Most oppositions are based on a likelihood of confusion.
What is the usual timeframe for opposition proceedings?
The non-extendable deadline to lodge oppositions is three months from publication of the registration. There are no strict deadlines thereafter. It is not even necessary to submit a statement of grounds for opposition, although it is highly recommended and common to do so. 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 after the grace period of use expires). There is no oral hearing.
It usually takes at least around one year for the German Patent and Trademark Office to issue its decision.
Are opposition decisions subject to appeal? If so, what procedures apply?
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) as a first step and subsequently to appeal against the reconsideration to the Federal Patent Court.
Click here to view the full article.