Faster, Easier and Cheaper: New Procedures for Challenging Trade Marks in Germany

As of May 1, 2020 the second part of the Trade Mark Law Modernisation Act entered into force in Germany and provided German Patent and Trade Mark Office (DPMA) with the right to conduct trademark invalidity and revocation proceedings, which previously had to be dealt with exclusively by the ordinary courts. “The new provisions will make revocation and invalidity proceedings more efficient, faster and less expensive for trade mark owners. This strengthens their rights and increases legal certainty,” said DPMA President Cornelia Rudloff-Schäffer.

The legislative novelty concerns applications for invalidity and cancellation of a registered trade mark on the basis of a conflicting earlier right (trade mark right, rights to names, the right of personal portrayal, copyright, names of plant varieties, indications of geographical origin, other industrial property rights), including several earlier rights. The same relates to revocation of registered trade marks, if they have not been put to use within a period of five years or if they have become of such a nature as to deceive the public. There are further grounds for revocation for collective marks and certification marks.

If the proprietor of the challenged trade mark does not object to the application for invalidity or revocation within a period of two months, his trade mark will be declared invalid or revoked. Full proceedings shall be conducted only if there are objections of the trade mark owner.

Both invalidity and revocation proceedings can still be initiated at the ordinary courts so that the person filing the application has a choice. However, an action is inadmissible if an application on the same subject matter has already been filed with the DPMA. Conversely, an application filed with the DPMA is inadmissible if an action on the same subject matter is pending before a court.

We agree with the DPMA President in her enthusiastic assessment of the described changes in the German procedural laws. In our opinion, procedures for cancellation of the unlawfully registered trade marks or trade marks that are not in use should not be an excessive burden for the right holders concerned or the country’s judicial system.