1) The definition of registrable marks has been expanded to include any signs that are capable of being represented graphically and that are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Under this definition colors and color combinations, names, letters, numerals, sound marks, three-dimensional marks, including the shape or packaging of a product and its "get-up," should be registrable. In view of this more relaxed definition of registrability (under the old law, for example, only word and device marks which could be represented two-dimensionally were registrable), clients, whose marks have previously encountered insurmountable inherent registrability objections, are strongly advised to consider filing new applications for such marks.
2) Rights in a mark under the new Act derive, not only from registration of the mark, but also from the following:
6) Objections to the registrability of marks that are considered non-distinctive, descriptive or generic may be overcome by establishing that the marks have acquired secondary meaning among the relevant trade circles prior to the date on which a decision is rendered with regard to the registrability of the mark.
7) Trademarks may be registered by any person, either natural or legal, provided that they have been vested with the ability to acquire rights and to assume obligations. There is no longer the need for an underlying business operation in which the mark is used or to which the mark is intended to relate.
8) Trademark applications will be examined for inherent registrability, and, as under the old law, will not be examined for conflicts with prior rights. Therefore, it is very important for clients to enter their marks in a Watch Service so that appropriate action may be taken against conflicting marks on a timely basis.
9) Expedited examination of applications remains available upon payment of an additional fee.
10) Contrary to previous practice under which trademark applications, which passed the examination stage, were published for opposition and subsequently registered, under the new Act trademark applications that complete the examination stage successfully will be registered, and then published for opposition.
11) The opposition period will remain 3 months from the date of publication in the Official Gazette. In addition to proprietors of marks whose agents or representatives have registered such marks without the proprietors' consent, only owners of prior applications or registrations for marks, or owners of well-known marks, which are identical or similar to the published mark in respect of identical or similar goods or services may oppose the published registration. Owners of all other earlier rights who wish to take action against the published registration must wait to institute cancellation proceedings.
12) Applications may be divided as to particular goods and/or services upon payment of a fee; this could be advantageous if the Patent Office objects to the registrability of a mark for a part of the goods and/or services covered by the application. Registrations that are the subject of an opposition or cancellation action may also be divided if the opposition or cancellation action is brought against only part of the registration.
13) The term of a registration will run from the date of filing and expire 10 years after the end of the month in which the filing date falls. Registrations will continue to be renewable for further periods of 10 years.
14) Applications that were filed and accepted for publication prior to January 1, 1995 will be registered and then published. Applications that were filed prior to January 1, 1995, but were not yet approved for publication by that date will be examined under the old law; however, if the application would not have been registrable under the old law, the Patent Office will notify the applicant that the application may be examined under the new law, in which case the date of filing will be deemed to be January 1, 1995.
15) Rights in trademarks acquired through registration and use, as well as rights in well-known marks, may be transferred or licensed (on an exclusive or non-exclusive basis) for some or all of the goods and services concerned, and may also be subject to execution and may be pledged as collateral security.
16) Licenses may be granted for the whole or any part of the territory of Germany and licensees may only institute infringement actions with the consent of the trademark owner.
17) If a mark is the subject of a license, a lien or a measure of enforcement, such conditions may now be recorded at the Patent Office.
18) An assignment of a licensed mark or the grant of an additional license to a third party will not affect the validity of previously granted licenses.
19) Under the old law, the user requirement was strictly applied and marks had to be used in the form in which they were registered. Under the new law, use of the mark in a form which differs from the form in which it was registered will satisfy the user requirement, provided such variation does not alter the distinctive character of the registered mark. Use of the mark applied to goods in Germany but intended solely for export constitutes use of the mark in Germany.
20) A registration is subject to cancellation if the application was filed in bad faith or if the mark was barred from registration on absolute grounds, such as lack of distinctiveness. However, such registration will only be held invalid if the cancellation action was instituted ex officio within 2 years or by a third party within 10 years following registration.
2) Rights in a mark under the new Act derive, not only from registration of the mark, but also from the following:
a) use of a mark in the course of trade whereby the mark has acquired prominence as a trade mark among the trade circles concerned;
b) where a mark is well-known within the meaning of Article 6bis of the Paris Convention.
3) The Act provides for the protection of trade designations, which are defined as:b) where a mark is well-known within the meaning of Article 6bis of the Paris Convention.
a) company symbols, namely, signs used in the course of trade as the name, company name or special designation of a business establishment; and
b) titles of works, namely, names or special designations of printed publications, cinematographic or acoustical works, plays or comparable works.
4) Protection in a mark or trade designation, as described above, gives the proprietor thereof exclusive rights to use the mark or designation. These rights include:b) titles of works, namely, names or special designations of printed publications, cinematographic or acoustical works, plays or comparable works.
a) the right to cancel a subsequent trademark registration on the following bases:
5) Other earlier rights which may serve as bases for a cancellation action against conflicting registrations include rights to a name, rights of personality, copyrights, plant variety designations, appellations of geographical origin and "other industrial property rights."
i) that, in the case of prior registered and well-known marks, the offending trademark is identical or similar to the prior mark either in respect of identical or similar goods or services or in respect of dissimilar goods or services where the prior mark has a reputation in Germany and use of the subsequent mark would take unfair advantage of or be detrimental to the distinctiveness or reputation of the prior mark;
ii) that, in the case of prior marks acquired by use and prior trade designations, such rights would enable the owner to prohibit the use of the offending mark throughout Germany;
b) the right to prevent the unauthorized use of a conflicting mark, within 3 years of learning of the infringement, not to exceed 30 years from the date of infringement, on the following bases:ii) that, in the case of prior marks acquired by use and prior trade designations, such rights would enable the owner to prohibit the use of the offending mark throughout Germany;
i) that, in the case of registered or well-known marks or marks acquired by use, the offending trademark is identical or similar to the prior mark either in respect of identical or similar goods or services or in respect of dissimilar goods or services where the prior mark has a reputation in Germany and use of the subsequent mark would take unfair advantage of or be detrimental to the distinctiveness or reputation of the prior mark;
ii) that, in the case of prior trade designations, the conflicting usage would lead to confusion or would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the trade designation.
However, where the owner of an earlier mark or trade designation has acquiesced for a continuous period of 5 years in the unauthorized use or registration of a conflicting mark, the right to seek cancellation of the registration of the conflicting mark or to take action against use of the conflicting mark will be lost, unless the registration of the conflicting mark was obtained in bad faith or the user of the conflicting mark was acting in bad faith.
In the case of unauthorized use, the proprietor of the mark or trade designation may not prevent third parties from using their own names or addresses, from using a mark or designation as an indication of the characteristics or properties of goods or services, from using a mark or designation where necessary to indicate the intended purpose of a product, particularly in the case of spare parts, or from using the mark or trade designation on goods which have been put on the market by, or with the consent of, the proprietor in one of the countries of the EU or the European Economic Area; the latter shall not be applicable where the proprietor has legitimate reason to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.
ii) that, in the case of prior trade designations, the conflicting usage would lead to confusion or would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the trade designation.
However, where the owner of an earlier mark or trade designation has acquiesced for a continuous period of 5 years in the unauthorized use or registration of a conflicting mark, the right to seek cancellation of the registration of the conflicting mark or to take action against use of the conflicting mark will be lost, unless the registration of the conflicting mark was obtained in bad faith or the user of the conflicting mark was acting in bad faith.
In the case of unauthorized use, the proprietor of the mark or trade designation may not prevent third parties from using their own names or addresses, from using a mark or designation as an indication of the characteristics or properties of goods or services, from using a mark or designation where necessary to indicate the intended purpose of a product, particularly in the case of spare parts, or from using the mark or trade designation on goods which have been put on the market by, or with the consent of, the proprietor in one of the countries of the EU or the European Economic Area; the latter shall not be applicable where the proprietor has legitimate reason to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.
6) Objections to the registrability of marks that are considered non-distinctive, descriptive or generic may be overcome by establishing that the marks have acquired secondary meaning among the relevant trade circles prior to the date on which a decision is rendered with regard to the registrability of the mark.
7) Trademarks may be registered by any person, either natural or legal, provided that they have been vested with the ability to acquire rights and to assume obligations. There is no longer the need for an underlying business operation in which the mark is used or to which the mark is intended to relate.
8) Trademark applications will be examined for inherent registrability, and, as under the old law, will not be examined for conflicts with prior rights. Therefore, it is very important for clients to enter their marks in a Watch Service so that appropriate action may be taken against conflicting marks on a timely basis.
9) Expedited examination of applications remains available upon payment of an additional fee.
10) Contrary to previous practice under which trademark applications, which passed the examination stage, were published for opposition and subsequently registered, under the new Act trademark applications that complete the examination stage successfully will be registered, and then published for opposition.
11) The opposition period will remain 3 months from the date of publication in the Official Gazette. In addition to proprietors of marks whose agents or representatives have registered such marks without the proprietors' consent, only owners of prior applications or registrations for marks, or owners of well-known marks, which are identical or similar to the published mark in respect of identical or similar goods or services may oppose the published registration. Owners of all other earlier rights who wish to take action against the published registration must wait to institute cancellation proceedings.
12) Applications may be divided as to particular goods and/or services upon payment of a fee; this could be advantageous if the Patent Office objects to the registrability of a mark for a part of the goods and/or services covered by the application. Registrations that are the subject of an opposition or cancellation action may also be divided if the opposition or cancellation action is brought against only part of the registration.
13) The term of a registration will run from the date of filing and expire 10 years after the end of the month in which the filing date falls. Registrations will continue to be renewable for further periods of 10 years.
14) Applications that were filed and accepted for publication prior to January 1, 1995 will be registered and then published. Applications that were filed prior to January 1, 1995, but were not yet approved for publication by that date will be examined under the old law; however, if the application would not have been registrable under the old law, the Patent Office will notify the applicant that the application may be examined under the new law, in which case the date of filing will be deemed to be January 1, 1995.
15) Rights in trademarks acquired through registration and use, as well as rights in well-known marks, may be transferred or licensed (on an exclusive or non-exclusive basis) for some or all of the goods and services concerned, and may also be subject to execution and may be pledged as collateral security.
16) Licenses may be granted for the whole or any part of the territory of Germany and licensees may only institute infringement actions with the consent of the trademark owner.
17) If a mark is the subject of a license, a lien or a measure of enforcement, such conditions may now be recorded at the Patent Office.
18) An assignment of a licensed mark or the grant of an additional license to a third party will not affect the validity of previously granted licenses.
19) Under the old law, the user requirement was strictly applied and marks had to be used in the form in which they were registered. Under the new law, use of the mark in a form which differs from the form in which it was registered will satisfy the user requirement, provided such variation does not alter the distinctive character of the registered mark. Use of the mark applied to goods in Germany but intended solely for export constitutes use of the mark in Germany.
20) A registration is subject to cancellation if the application was filed in bad faith or if the mark was barred from registration on absolute grounds, such as lack of distinctiveness. However, such registration will only be held invalid if the cancellation action was instituted ex officio within 2 years or by a third party within 10 years following registration.
April 1995 Index