Trademark litigation: The non-use defence – Article by Dr S. Engels and Dr J. Wernicke in Trademark Lawyer Magazine 4/2025

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The timing and choice of the most effective and admissible instrument for raising the non-use defence under the specific circumstances are crucial.

In their article “Trademark litigation in Germany: pitfalls in non-use defences”, published in issue 4/2025 of Trademark Lawyer magazine, BOEHMERT & BOEHMERT attorneys at law Dr. Sebastian Engels and Dr. Julian Wernicke highlight the key differences between German and European trade mark law regarding the use requirement and the available non-use defences in litigation.

The two Berlin-based lawyers, who are highly experienced in trade mark law, emphasise the importance of understanding the different rules for registration and enforcement of trade marks in Germany and the EU. In their article, Dr. Sebastian Engels and Dr. Julian Wernicke specifically address:

  • The advantages and risks of filing revocation requests for non-use before the GPTO or EUIPO as a defence strategy in trade mark disputes.
  • The significance of timing and the choice of the right instrument for the non-use defence – such as objection, revocation request, or counterclaim.
  • Practical guidance for trade mark owners and defendants on how to respond strategically to the use requirement and which pitfalls may arise if the defence is raised too late.
  • The differences in enforcing and defending German trade marks and EU trade marks, especially regarding the five-year grace period for use and the impact on ongoing court proceedings.

The full article is available for free on the Trademark Lawyer magazine website. You can also download the PDF of the article “Trademark litigation in Germany: pitfalls in non-use defences”.