On 16 December 2015, Directive 2015/2436 of the European Parliament and the Council to harmonize the laws of the Member States relating to trade marks (the “Directive”) was adopted. The harmonization of the national trademark systems provided for in the Directive must be largely implemented into national law by the member states by 14 January 2019. In the meantime, the draft bill (subsequently also “MarkenG-E”) for the necessary amendments to the German Trademark Act has been submitted.
The main objective of the Directive is the balanced coexistence of European Union and national trademarks, which are to be strengthened in their respective autonomy and at the same time co-exist side by side. In addition, the Directive and its national implementation should also provide trademark owners with more effective mechanisms to combat product piracy.
It is not yet clear when the amendment to the Trademark Act, which is now available in the draft bill, will enter into force. However, there are indications
that this will be the case even before the expiry of the transposition deadline of
14 January 2019.
The draft bill provides in particular for the following amendments to the Trademark Act, which are of special significance for trademark owners and applicants:
Elimination of the requirement of graphical representation of trademarks
Section 8 para. 1 MarkenG-E provides that the graphic representation of a trademark is no longer a prerequisite for protection in the future. It is sufficient (but also necessary) that the German Patent and Trademark Office (GPTO) and the public can “clearly and unambiguously determine” the subject matter of trademark protection. This means that, following the entry into force of the amendment to the law, it is also possible to apply for trade marks in particular for signs that are reproduced in audio or image file formats, such as acoustic signs or image sequences.
Extension of the catalogue of absolute grounds for refusal
The catalogue of absolute grounds for refusal is to be extended under the draft bill. The most important extension of this provision is that signs which include geographical indications of origin, indications of origin, traditional designations for wines, designations of traditional specialties or variety denominations can no longer be protected as trademarks, Section 8 Para 2 Nos. 9 – 12 MarkenG-E.
Trade names and company names as explicit trademark infringement
New Section 14 Para. 3 No. 5 MarkenG-E clarifies that the use of a protected trademark as a trade name or company name constitutes an infringement of a trademark if the trade name or company name is used for similar goods or services. In addition to the implementation of the requirements of the Directive, this amendment also corresponds to the approach that has been applied in German case law for many years with regard to the infringement of trademarks by trade names or company names.
Strengthened position of trademark owners in relation to infringing products in transit
The position of trademark owners is considerably strengthened by the new regulation provided for in Section 14a MarkenG-E. This explicitly extends the protection of trademarks to goods in transit, i. e., to potentially infringing goods originating from a third country and being destined for a market outside Germany. So far, legal options of trademark owners in Germany were limited and they were ultimately referred to legal action in the country of origin or destination. In the case of clear trademark infringements (i.e. if the sign is used on the goods is identical or highly similar to the trademark) the new regulation provides for a two-stage procedure.
In the first stage, German customs authorities can detain the goods in question, even if they are not to be placed on the market in Germany but in another country. If the declarant does not object to the detention of the goods, they shall be destroyed under customs’ supervision.
If the declarant objects, it is the declarant’s burden to prove in court that the goods concerned are intended to be lawfully put onto the market in a third country (e.g. because the trademark owner does not have trademark protection in that country, the declarant is a licensee or owns an earlier trademark).
Improvement of the legal position of licensees
Under the current version of the Trademark Act, licensees are only permitted to take legal action against third parties for infringement of the licensed trademark if the trademark owner has consented to this. Section 30 Para. 3 clause 2 MarkenG-E provides that licensees may, even without the consent of the trademark owner, bring an action for infringement of the licensed trademark if the trademark owner has not brought an action for infringement within a reasonable period of time after the “formal request” by the licensee.
New Section 30 Para. 6 MarkenG-E provides for a registration of licenses in the GPTO’s register.
Third party comments to trade mark applications
The amendment provided for in Section 37 Para. 6 MarkenG-E creates the right for individuals and legal entities as well as associations of manufacturers, producers, service providers, traders and consumers to file observations against trademarks of third parties at the GPTO in order to prevent these trademarks from being registered. This is likely to affect in particular those applications claiming protection for a term being common for a specialized public. However, the wording of the draft bill also makes it clear that there is no obligation on the GPTO to actually take into account the comments of third parties in the registration decision.
Extension of grounds for opposition
Under new Section 42 Para. 1 clause 2 MarkenG-E, proprietors of protected designations of origin or protected geographical indications may object to trademark registrations.
Introduction of an administrative procedure for the declaration of revocation or invalidity of trade marks
Sections 53 – 55 MarkenG-E provide for a significant change in the procedure for
declaring revocation or invalidity of trademarks. So far, only requests for invalidation of a trademark due to absolute grounds (e. g. lack of distinctive character) could be filed in an administrative proceeding at the GPTO. Revocation requests based on lack of genuine use of a trademark or its invalidation due to relative grounds had to be brought in regular court proceedings which in many cases involved considerable time and expense.
Under the new regulations provided for in the draft bill all requests for invalidation or revocation of trademarks can be filed with the GPTO. The German proceedings thus are harmonized with the current proceedings for EU trademarks.
Third parties having been sued on the basis of a trademark against which proceedings for revocation or invalidation are pending at the GPTO may also join these proceedings.
Introduction of guarantee or certification marks
New Sections 106a – 106h MarkenG-E introduce a new type of trademark, namely the so-called “Gewährleistungsmarke” (guarantee or certification mark) into German trademark law. In contrast to the existing types of trade mark whose primary function is to identify the origin of a product or service from the trade mark owner (“origin function”), the function of the guarantee or certification mark is to have certain characteristics of the product marked with the guarantee or certification mark (“guarantee function”) guaranteed by an independent party, i.e. the proprietor of the guarantee or certification mark.
Apart from other filing requirements (such as the filing of a statute and further information on the scope of the warranty with the application), guarantee or certification marks can only be applied for by applicants who do not engage in any activity involving the supply or provision of goods or services for which there is a guarantee. This restriction is intended to ensure that the guarantee or certification mark functions as an independent identifier for certain product properties.