Trademark Registration in Germany
The German Patent and Trade Mark Office examines your trade mark application for so-called absolute grounds for refusal. Signs or indications are excluded from registration if they merely describe the kind, quality or other characteristics of the goods or services claimed.
The German Patent and Trade Mark Office does not check whether similar or identical trade marks have already been registered.
If the application complies with the legal requirements and if there is no obstacle to registration, the German Patent and Trade Mark Office enters the trade mark in the register. The registration is published in the electronic Markenblatt (trade mark journal). The owner receives a certificate of registration.
Please note: A trade mark might be cancelled at the outcome of an opposition procedure due to earlier trade mark rights.
Opposition against trademark registration in Germany
After the publication of the trade mark, holders of earlier rights have the opportunity to object to the registration. Opposition can be raised on principle if the owner of an earlier mark deems that there is a risk of confusion with his own trade mark registered or applied for – including Union trade marks and international marks. Notice of opposition must be filed in writing within three months after the publication of the registration. The opposition fee of EUR 120 must be paid within this time limit too.
A decision is taken within the scope of an opposition procedure. It may be that the newly registered trade mark will be cancelled in the register.
In opposition proceedings it will in future be possible to claim earlier rights in signs acquired by use (so-called ‘trade marks acquired by use’ and commercial designations) and the enlarged protection of trade marks which have a reputation in Germany (Sec. 42(2) Trade Mark Law [new version]). This extension of the grounds of opposition only applies to oppositions raised against the registration of trade marks applied for on or after 1 October 2009 (Sec.165(2) Trade Mark Law [new version]).
Extension of the term of protection of a German trademark
The term of protection of a registered trade mark starts on the application date and ends after 10 years, on the last day of the month of the application date. It can be renewed for further 10-year periods. For an overall renewal of the trade mark it is sufficient to pay the renewal fees. If the trade mark shall be renewed in relation to a part of the registered goods and services only, this must be requested specifically.
The renewal fees fall due on the last day of the month in which the term of protection expires. They can be paid without surcharge until the end of the second month after the due date. After that date, you can still pay the renewal fees until the expiry of the sixth month after the due date together with a surcharge for late payment.
The renewal fees may be paid one year before expiry of the term of protection at the earliest.
If the renewal fees are not paid or if the payment is insufficient, the trade mark right will be revoked.
Cancellation of a German trademark
An owner of a trade mark can surrender the trade mark anytime.
A trade mark can also be cancelled on grounds of nullity or revocation.
Cancellation due to nullity
The registration of a trade mark will be cancelled upon request on the grounds of nullity due to absolute grounds for refusal, if it had been registered in breach of Sec. 3, Sec. 7 or Sec. 8 of the Markengesetz, that means if the sign was not eligible for trade mark protection, if the applicant was not capable of being the owner of a trade mark or if there were absolute grounds for refusal. The request for cancellation must be filed in writing within 10 years after the registration of the trade mark. A fee of EUR 300 must be paid within three months from the filing of the request.
The DPMA informs the trade mark owner about the request for cancellation. If he does not object within two months, the trade mark will be cancelled; if he objects to the cancellation request, cancellation proceedings are conducted by the DPMA. If the request for cancellation is granted, the registration of the trade mark is declared invalid due to absolute grounds under Sec. 50 of the Markengesetz and cancelled in the register.
Trade mark owners can bring an action for cancellation of a trade mark based on earlier rights. Cancellation proceedings are conducted by the ordinary courts.
Cancellation upon request for revocation
The registration of a trade mark is cancelled in the register upon a request for revocation if the trade mark has not been used within a period of five years after registration.
You can either bring an action for revocation before the ordinary courts or first file a request for cancellation at the German Patent and Trade Mark Office. The DPMA informs the trade mark owner about the request for cancellation. If he does not object within two months, the trade mark will be cancelled; if he files an objection, the requesting party can further pursue cancellation by bringing an action before the courts. The DPMA does not conduct cancellation proceedings.