MaMoG: German trademark law adapted to the EU regulations

The German trademark law is adapted to the EU regulation. On 14 January 2019, the new German Trademark Law (in German: MaMoG) comes into force. It brings changes for opposition and term of protection in trademark law as well as new national trademark types.

MaMoG in Germany

Long initiated by the EU Trademark Regulation since 2015 (EU Directive 2015/2436 and COMMISSION IMPLEMENTING REGULATION (EU) 2017/1431), it is to come into force in Germany on 14 January 2019: the so called Trademark Law Modernisation Act (in German: Markenrechtsmodernisierungsgesetz (MaMoG)). It is currently still in the legislative process, but is scheduled to enter into force. The new Trademark Law Act MaMoG will will bring some important changes, especially in the areas of cancellation, opposition and term of protection in Germany.

Warranty marks, graphic marks and entirely new marks

New trade mark types such as warranty marks and graphic marks such as video scenes or movement marks are also being introduced nationally, having been available as EU trade marks since last year – we reported. Please inform yourself about the new types of trade marks and the requirements for their presentation under “Videos and noises as EU Trade Mark: new EU trademark regulations have begun“. This adaptation in German trademark law is important, because in future such a new trademark form can also extend to Germany if it has been registered as an EU trademark.

MaMoG strengthens the trademark owner

In principle, the adjustments to trademark law show a tendency to strengthen the rights of trademark owners. In addition, MaMoG may sharpen the trademark concept and trademark rights in areas in which it was previously blurred. An example of this is the new version of § 14 MarkenG planned in the MaMoG for the inclusion of goods under customs supervision in order to prevent product piraty.

Cancellation and opposition

It is planned to introduce revocation and invalidity proceedings before the German Patent and Trade Mark Office ( DPMA ), which will replace the previous cancellation proceedings. Also interesting is the prospect that, in addition to the absolute grounds for refusal, relative grounds for refusal can also be asserted in official invalidity proceedings. This includes, for example, earlier trademarks. However, this is not yet possible on 14 January 2019, but is expected to be possible from 1 May 2020.

The adaptations in the opposition are more varied. Up to now, it has only been possible to file an opposition on the basis of one opposition claim. In future, it will be possible to combine opposition proceedings. The holder of several earlier rights can assert these with a single opposition. In addition, the opposition possibilities will be expanded: Protected geographical indications will be new, additional grounds for opposition in the future.

Term of protection and renewals

Until now, a ten-year term of protection had applied to registered trade marks at the end of the month in which the trade mark was applied for. This calculation will change for all new trade marks to be registered from 14 January 2019, as their ten-year term will expire exactly ten years after the filing date. In the case of trademarks already registered, the term of protection remains at the end of the respective month, even for all trademarks whose term of protection ends twelve months after January 31, 2019 at the latest.

It should be noted that the renewal fees and, if applicable, the class fees for the following term of protection are due six months before the term of protection ends.

Use and grace periods of a trade mark

Proof of use of a trade mark will in future be required. Moreover, the periods for the proof of use will no longer differ from Union law:

The five-year period for which proof of use of the opposition mark must be furnished is being postponed. In future, it will begin five years before the filing date or priority date of the challenged trade mark instead of five years before the date of publication of the registration of the challenged trade mark.

In future, the grace period will begin on the day on which no further opposition can be filed against the registration of a trademark. This is either the day after expiry of the opposition period or the date on which the decision which ended the opposition proceedings or the withdrawal of the last opposition becomes final. Until now, the grace period for use began with the publication of the registration or at the time of the completed opposition proceedings. The beginning and end of the grace period for use must in future be entered in the trade mark register.

Negotiations between the parties to the proceedings will also be facilitated. Upon a joint request, a renewable period of at least two months will be granted to reach an amicable settlement, the so-called cooling-off.

Licences

In future, licences may be entered in the Register subject to a fee upon request. The proprietor of an exclusive licence will also be able to bring an action before the ordinary courts for infringement of a trade mark if the proprietor of the trade mark does not himself bring an action within a reasonable period of time after being formally requested to do so.

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