The German Trademark Law Modernization Act (MaMoG) essentially came into force on January 14, 2019. It implemented the EU trademark law reform, technically EU Directive 2015/2436 into the German Trademark Act (see B&B Bulletin article of 15 January 2019). With a delay – but largely within the term for implementation-, namely as of 1 May 2020, a highly practice-relevant core aspect of the implementation will come into force: namely a full administrative invalidation procedure due to earlier rights as well as a full revocation procedure, extending the competence of the German Patent and Trade Mark Office (German PTO).
Extended range of attacks against trademark registrations
As a result of the new provisions, a new option is given for attacking registered trademarks: apart from exclusively bringing an actions before the civil courts, older rights (relative grounds for invalidity) and revocation due to lack of genuine use can also be completely invoked at an administrative level before the German PTO.
Thus, applicants might safe costs in terms of procedural economy as well as to make use of the professional competence of the registration authority. The MaMoG now offers the full trias to have registered trademarks cancelled in purely administrative proceedings – not only as until now on the basis of absolute grounds for invalidity (lack of registrability) but also for revocation (not only as formal preliminary proceedings) and due to conflicting earlier rights. Thus, the German trademark law is adapted to the systematics on the level of the European Trade Mark Regulation.
New administrative invalidation proceedings due to conflicting earlier rights
The proprietor of one or more earlier rights (within the meaning of Sections 9 to 13 of the German Trade Mark Act, i.e. on a broader basis than in opposition proceedings, for example also due to rights to names, copyright or design rights) can now for the first time obtain a declaration of invalidity and cancellation of a registered German trade mark in proceedings before the German PTO. The same applies to the withdrawal of protection of a part of an International Registration which designates Germany.
From a practical point of view, the following must be observed:
• The adversarial part of the proceedings will only be carried out if the owner of the registered trade mark objects to the declaration of invalidity within two months of notification of the application for the declaration of invalidity; otherwise, the German PTO will declare the trade mark invalid and cancel it with effect ab initio (ex tunc).
• Relationship to opposition proceedings: official invalidity proceedings are admissible despite pending opposition proceedings, even on the basis of the same earlier right.
• In contrast to opposition proceedings, in invalidity proceedings, the „moving period of use“ continues to exist; therefore, if the grace period for use expires during the invalidity proceedings, proof of use of the earlier mark during the five years preceding the decision must be provided, if the proprietor of the challenged mark objects.
Full revocation proceedings before the German PTO
Upon request, the registration of a trade mark is revoked and cancelled, primarily if it has not been used within a period of five years. In the absence of an opposition, the trademark is cancelled – normally with effect for the future (ex-nunc). However, if the trademark owner objects within two months after notification of the application for revocation, the adversarial part of the proceedings will, as new provision, be continued before the German PTO – upon payment of a follow-up fee by the applicant.
Consequently, the applicant – in contrast to the previous law – is no longer obliged to pursue his application before the civil courts in an action for revocation.
Special procedural aspects for both options
• Alternative but not cumulative option: Civil law action and corresponding requests for invalidity or for revocation before the German PTO exclude each other for the same subject matter in dispute.
• An appeal against the decision of the German PTO may be filed with the Federal Patent Court.
• Already the written request for invalidation or revocation must be substantiated and evidence must be indicated (unlike for filing an opposition).
• Hearings shall be held in official proceedings at the request of one of the parties or if deemed relevant.
• Upon request, the providing of a security for the costs of the proceedings may be required from an applicant outside the EU/EEA.
Increased need for consultancy – far-reaching strategic decisions
Especially for owners of older rights, the options for taking action against younger trademarks increase. The strategic considerations – also relevant for negotiations on an amicable settlement – are complex. Only the following aspects can be touched upon:
Lower cost threshold for administrative proceedings, but no reimbursement
The proceedings before the German PTO are far less expensive than the corresponding legal action before the civil courts. This aspect alone will increase the number of attacks on registered trademarks for revocation and invalidation based on earlier conflicting rights on an administrative level. On the other hand and unlike in case of a successful lawsuit, there is normally no reimbursement of costs in the relevant administrative proceedings.
Reduced burden of proof concerning genuine use in administrative proceedings
An affidavit continues to be accepted as main element of the formally increased threshold to prove (instead of the showing of a plausibility) genuine use of a trademark – at least before the German PTO – in administrative proceedings. In contrast, the stricter full proof applies in legal proceedings.
Provocation of the administrative revocation proceedings in case of opposition
As is the case at the level of European Union trade marks, an owner of earlier trade mark(s) will have to consider more in detail the consequences of the filing of an opposition. Should his prior trademark have fallen out of the grace period of non-use, it might not only become subject to the plea of non-use in the context of the opposition proceedings. There is now the much more far reaching threat of total loss of such prior mark via the inexpensive counter-attack in an official revocation procedure.
All in all, the new low-cost administrative trademark cancellation procedures, while maintaining the corresponding legal action, lead to expanded strategic options, a corresponding need for advice and certainly to an increase in attacks on registered trademarks.