The German Trademark Law Modernization Act: in force now

by Dentons
Contact

Dentons

In our publication of July 18, 2018, we gave an overview of the most important changes introduced in the trademark law reform. Now the Trademark Law Modernization Act (MaMoG, the new provisions of the German Trademark Act will be referred to as the “new Trademark Act”) has come into force on January 14, 2019, although there are individual provisions that have different start dates. The aim of this amendment to the German Trademark Law was to implement all mandatory—and a large number of optional—provisions of EU Directive 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the member states relating to trademarks into German law.

The following changes are of particular importance for trademark practice:

I.Elimination of the need for graphic or visual representation of trade marks

The requirement for graphic or visual representation of a trademark will no longer be a prerequisite for protection in the future, § 8 (1) old German Trademark Law. In analogy to the provisions in the European Union Trade Mark Regulation (EUTMR), the new provision now states that all trademarks which can be represented in the trademark register in such a way that the competent authorities and the public can “clearly and unambiguously determine the object of trademark protection” will be admitted for registration, § 8 (1) of the new Trademark Act. Time will tell how this rather broad criterion will be put into practice. The aim is to enable the registration of sound marks, multimedia marks and the similar new trademark forms in a suitable electronic form.

Attention when planning filing strategies: An extension of the aforementioned new trademark forms via the Madrid System will initially not be possible due to WIPO's representation requirements.

II.Introduction of the certification mark

A further innovation is the implementation of the certification mark in German trademark law. Compared to the individual trademark, the certification mark does not focus on the origin function (i.e. the assignment of a good or service to a manufacturer) but on the guarantee function (i.e. the guarantee of certain characteristics by an independent party). The owner of the trademark guarantees by means of the certification mark, for example, the material, the production process or the quality, accuracy or other relevant properties of the goods or services. This new trademark category introduces a new function of trademarks into the German trademark law. However, among other requirements, only applicants who do not engage in any activity involving the supply of goods or rendering of services claimed by the trademark may register a certification mark. The aim of the certification mark is to provide independent certification companies with protection under the trademark law for their quality seals or test marks. With the introduction of the certification mark, the legislator takes account of the significance of quality certifications and seals for the economy and grants them their own legal protection.

III. Extension of the competence of the DPMA (the German Patent and Trade Mark Office) with regard to the cancellation of registered trademarks

Until now, the procedure for cancelling a trademark registered contrary to §§ 3, 7 and/or 8 Trademark Law (§ 50 Trademarks Law absolute grounds of refusal or bad faith) is purely an administrative procedure. The old Trademark Law did not allow for a court claim. The revocation of a trademark for lack of use (§ 49 Trademarks Law) and the invalidity due to the existence of earlier rights (§ 50 Trademarks Law - relative grounds for refusal), however, could be asserted either by means of an application at the DPMA or by means of an action before a court (§. 55 (1) Trademarks Law).

As a result of the new provisions, relative grounds for invalidity may in future be invoked in proceedings before the DPMA even after opposition proceedings have been concluded. This will bundle the competences of the DPMA. Nevertheless, it should be possible for the party requesting the cancellation of a trademark on the grounds of non-use or earlier rights to bring such an action before a civil court, as per previous practice. The plaintiff or applicant is thus free to decide whether he wishes to have the cancellation pursuant to § 49 or § 50 of the new Trademark Act carried out at the DPMA or before a court. However, in view of the higher costs of court proceedings, we expect that many proceedings will be conducted before the DPMA as an administrative proceeding in the future.
The new Trademark Act envisages that these provisions will not come into force until May 1, 2020. This gives the DPMA time to prepare adequately for the increased requirements.

IV. Additional criteria for absolute grounds for refusal

Protected geographical indications and protected geographical designations of origin which are protected under national or European law will also be taken into account in the application procedure as absolute grounds for refusal (§§ 8 (2) and 42 new Trademark Act) and in the new invalidity procedure (§ 52 (3) new Trademark Act).

V. Changes in opposition proceedings

It is a pleasant update that oppositions can now be based on several earlier rights of one proprietor under § 29(1), second sentence of the new Trademarks Act. In accordance with the new criteria for absolute grounds for refusal, protected geographical indications and protected designations of origin may now be used as a basis for trademark oppositions as well. The opposition fees will be adapted to the new regulation - €250 for the opposition based on one sign and €50 for each additional sign.

The cooling-off period, which has been tried and tested in the proceedings before the EUIPO, is now also available in German proceedings: The parties will be granted at least two months to find an amicable solution to the conflict situation under  § 42 (3) of the new Trademark Act. This period may be extended at the joint request of the parties.

The registration becomes vulnerable to cancellation for non-use  five years after the first day after expiry of the opposition period, or - in the case of an opposition filed - five years after the date on which the end of the opposition proceedings becomes final and binding,§ 25 new Trademark Act.

Up to now, the second sentence of § 43(1) Trademark Law provided that, in the case where the opposing trademark became vulnerable to opposition in the course of an opposition proceeding, the opponent had to provide evidence of use upon request by the owner of the opposed trademark.  This option no longer exists. The request for evidence of use now has to be filed as a separate cancellation proceeding under § 52 (3) new Trademark Act.

VI. Term of protection and renewals, reclassification

The term of protection for trademarks filed after January 13, 2019 expires 10 years after the date of filing, calculated from the date of filing, § 47 (1) new Trademark Act. (The old Trademark Law used to postpone all renewal dates to the last day of the month of expiry.) The DPMA will continue to issue renewal notifications, which provides a safety net for trademark owners who have not included these changes in their monitoring system yet.

The renewal fees become due six months before the end of the term of protection and can be paid any time during that period.

The reclassification option will no longer be available. Accordingly, § 14 of the new Trademark Act, which deals with infringement, clarifies that registration in the same class does not per se constitute an infringement (if the other requirements are met) and that vice versa a different class does not exclude an infringement.

VII. New rules for anti-counterfeiting measures

Another amendment concerns the rights of trademark owners in relation to customs measures. According to current case law, it is – generally - only possible for trademark owners to prohibit the import and export of infringing goods.

The transfer of such goods from third countries and their transit from third countries as well as transport within the EU does not constitute an infringement of industrial property rights unless the goods are demonstrably intended to be sold to EU consumers.

This gap in the legal protection of trademark owners has been closed. The new law provides for border seizure of such transit goods if the goods in question, including their packaging, originate from third countries and carry a trademark or commercial designation - without its owner’s consent - which is identical to the trademark registered for such goods or cannot be distinguished in its essential aspects from this trade mark or commercial designation (§ 14a of the new Trademark Act).

At the same time, § 14a provides that this right of prohibition is limited where the declarant or owner of the goods is able to furnish proof that the declaration for the relevant customs procedure is legitimate.

Trademark owners are thus provided with a further effective means against the increasing number of cases of product piracy. It also enables them to take action in Germany against transit, trans-shipment, storage or temporary storage of transit goods infringing industrial property rights.

§ 14a came into force on December 15, 2018.

VIII. Registration of licenses and willingness to license and sell

The licensee, the type and scope of the license as well as its validity and modifications can now be registered upon application (subject to a fee), § 34a new Trademark Act. This also applies to the German designation of international registrations, which effectively ends the German exception to the rule.

Registering the willingness to sell and license a trademark will be free of charge, § 34b new Trademark Act, and provides, potentially, a very effective marketing tool!

IX. The European Union Trademark in criminal law

Finally, the question which has already been decided by the courts, namely to what extent the use of the outdated term “Community Trade Mark” in § 143a of the old Trademarks Law can have an effect on criminal liability - namely none - is also reflected in the Trademark Modernization Act. § 143a of the new Trademark Act, which now sanctions the infringement of a “Union Trademark.” Unfortunately, the unclear references to a “prohibition” and the “lack of consent” remain unaltered. The new Trademark Act misses this opportunity to clarify the wording by deleting these unnecessary wordings.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Dentons | Attorney Advertising

Written by:

Dentons
Contact
more
less

Dentons on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide

JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at www.jdsupra.com) (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at privacy@jdsupra.com.

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to privacy@jdsupra.com. We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to privacy@jdsupra.com.

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at: privacy@jdsupra.com.

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at www.jdsupra.com) (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit legal.hubspot.com/privacy-policy.
  • New Relic - For more information on New Relic cookies, please visit www.newrelic.com/privacy.
  • Google Analytics - For more information on Google Analytics cookies, visit www.google.com/policies. To opt-out of being tracked by Google Analytics across all websites visit http://tools.google.com/dlpage/gaoptout. This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit http://www.aboutcookies.org which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at: privacy@jdsupra.com.

- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.