眾律國際法律事務所

Introduction:

Language: German

Capital: Berlin

Area: 357,168 km2

Population: 82,175,700 (2015)

Currency: Euro

Religions: Roman Catholicism (29%), Evangelical Church (27%), Islam (5.5%)

Geographical situation: in central-western Europe, with Denmark bordering to the north, Poland and the Czech Republic to the east, Austria to the southeast, Switzerland to the south-southwest, France, Luxembourg and Belgium lie to the west, and the Netherlands to the northwest.

International treaty membership:

Singapore Treaty on the Law of Trademarks (September 20, 2013)

Trademark Law Treaty (October 16, 2004)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (March 20, 1996)

Convention Establishing the World Intellectual Property Organization (September 19, 1970)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (January 29, 1962)

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (June 12, 1925)

Madrid Agreement Concerning the International Registration of Marks (December 1, 1922)

Paris Convention for the Protection of Industrial Property (May 1, 1903)

Legislation:        

Act on the Protection of Trademarks and other Signs (as amended up to December 22, 2010)

Government Institutions:

German Patent and Trade Mark Office (DPMA)

Type of trademark:

Registrable as a trademark are all distinctive signs, such as words, names, acronyms, letters, numbers, devices, colours, combination of colours, the three-dimensional form of a good or its packaging as well as sound marks and any combination of the mentioned signs. Olfactory marks can be registered in certain cases.

The following trademark types are registrable: trademarks, service marks and collective marks. With the implementation of EU Directive 2015/2436, guarantee or certification marks can be subject of a registration, too.

Ground for refusal :

Absolute ground for refusal:

- Mark which are devoid of any distinctive character.

- Signs which only have a describing function of the product, or which have become customary in the practice of trade.

- Trademark which is likely such nature as to deceive the public.

- Trademark which are contrary to public policy

- Trademark which include symbols, flag, or other state institution’s emblem.

Relative ground:

Registration can be cancelled if:

There is an earlier identical mark for same class of goods and services, and could mislead the public or attempt to the reputation to the earlier and well known mark in Germany.

Application content:

The application may be filed in writing or electronically. The form issued by the German Patent and Trade Mark Office is to be used for an application filed in writing. The Ordinance on Electronic Legal Transactions with the German Patent and Trade Mark Office

The application shall contain:

- particulars identifying the applicant and, if applicable, their representative under

- particulars concerning the type of the trade mark, a representation of the trade mark as well as a mark description

the list of goods and services in respect of which the trade mark is to be registered.

If the application

- claims the priority of an earlier foreign application, a declaration to that effect shall be filed, indicating the date and the country of the said application;

- claims an exhibition priority, a declaration to that effect shall be filed, indicating

The date of filling application shall be deemed filed when the required document are provided.

Application process:

The application process contains a formal and substantive examination, the formal one will consists in verifying whether the applicant has provided all the required documents, the substantive one will check the distinctiveness of the mark, and if it does not meet absolute ground for refusal. No search for prior trademark will be done.

The applicant can also ask for an accelerated examination, against additional fees. This procedure will take from 3 to 6 months.

Registrations in the Register shall be published in regularly published summaries of the German Patent and Trade Mark Office.

The opposition period is 3 months from the publication date of the registration. The opposition can be done on the ground of earlier and similar trademark or earlier and well known trademark.

Refusal:

If the applicant does not provide all the required documents, the Patent Office shall ask to remedy the deficiencies, if he does not, the application will be deemed not filed.

If the mark meets absolute ground for refusal, the registration of the mark shall be rejected.

For refusal decision, an appeal can be filed by the parts, the condition of appeal and the delay to fill it will be indicated in the Patent Office's decision.

Rights of exploitation and related delay:

The owner of the rights has an exclusive right of exploitation and has the power to prevent other people from using this mark in the course of trade, like affixing the mark on goods, offering services with that mark…

The protection of the mark will last for 10 years, and can be renewed each time for 10 years. The request for renewal shall be submitted within the last year of protection.

Transfer and conditions:

The owner of a trademark is allowed to transfer his right to another person by license or assignment, for all or some of the goods and service it is registered for. The transfer of rights shall be entered in the State register by the Patent Office.

Certification:

In addition to a document certifying the registration of a trade mark in the Register of the DPMA Ordinance, the proprietor of a trade mark shall receive a certificate on the details recorded in the Register, except where they have explicitly renounced it.

Withdrawal and cancellation:

The applicant may, at any time, withdraw his application or limit it to some goods and services.

The owner of trademark is allowed to surrender his right at any time upon request before the patent office.

The protection of the mark will be revoked if the mark has not been used for a consecutive period of five years, or if the use of the mark leads to mislead the public.

Registration of a mark shall be cancelled on the ground of nullity, if it meets absolute grounds, but only if the cancellation has been filed within 10 years from the registration.

The mark will be cancelled if an earlier mark has been registrated.

Customs protection:

The seizure of suspected infringing goods by the customs can be done ex officio or upon application.

Suspension of the goods ex officio will last 3 days and occur only if there is a strong suspicion of infringement.

The application shall be done before central customs authorities, the applicant shall fill in a standardized form and gives information about himself and his product. This application is usually accepted for a maximum of one year. If after application, goods are suspended the IP right holder shall start a legal action within 10 days or 3 days for perishable goods. If the goods are convinced by the court as infringing goods, they shall be destroyed or any appropriate measure if the destruction is disproportionate.

Sources:

Wipo.lex: Act on the Protection of Trademarks and other Signs (as amended up to December 22, 2010)

https://www.dpma.de/docs/service/formulare_eng/marke_eng/w7730_1.pdf

Vincent Lagier