BGH: IR trademark in German opposition proceedings

An IR trademark can be objected to as a relative ground for refusal in opposition proceedings in Germany. However, it makes a difference whether the IR trademark extends to Germany or to the EU.

In 1989, in the Madrid Agreement, essential regulations and laws were adopted for the international registration of trademarks, so-called IR trademarks. Above all, a uniform procedure enables a relatively uncomplicated application and registration of an IR trademark; for example, only one application is necessary at only one trade mark office, namely the World Intellectual Property Organization (WIPO). The registration procedure applies to a large number of countries, in the moment the Madrid Union at WIPO currently has 108 members, covering 124 countries, for example Brazil became member state in 2019.

It is true that an IR trademark is not a “world trade mark”, but strictly speaking an IP right within the association. De facto, however, after a successful application for an IR trademark, mine has the same protection rights as the national trademark in the countries to which the IR trademark extends.

Difference: IR trade mark in Germany or the EU

Accordingly, an IR trade mark can also be used in opposition proceedings against a national trade mark. Likewise, an IR trademark can also be filed against an EU trademark in opposition proceedings. However, it makes a difference in German trade mark law whether the IR trademark extends to Germany or to the EU.

The Federal Supreme Court (BGH) recently drew attention to this difference for an IR trademark in opposition proceedings in its decision “Olympia (‘Retroolympics’)”. This is because, according to Article 4(1)(a) of the Protocol to the Madrid Agreement and Article 189(2) of Regulation (EU) 2017/1001 on the EU trademark (formerly Article 151(2) of Regulation (EC) No 207/2009), an international registration as an IR trademark designating the European Union has the same effect as the registration of a trademark as an EU trademark.

Therefore, the BGH explained, the application of the German Trade Mark Act (MarkenG) does not follow from § 119(1) MarkenG. This is a paragraph referring to international registrations of trade marks under the Protocol to the Madrid Agreement, the protection of which extends to the territory of the Federal Republic of Germany.

However, if the IR trademark extends to the EU, it corresponds to an EU trademark. Therefore, the application of the Trade Mark Act results rather from § 125b No. 1 MarkenG, the BGH clarified. According to this § 125b MarkenG, EU trademarks applied for or registered with earlier seniority are treated in the same way as trademarks applied for or registered under the Trade Mark Law with earlier seniority for the application of § 9 MarkenG. However, there is a difference: the reputation in the national territory pursuant to § 9 (1) No. 3 Trade Mark Law is replaced by the reputation in the Union pursuant to Art. 9 (2) c EU Trade Mark Regulation.

Moreover, EU trade marks may be objected to as relative grounds for refusal in opposition proceedings under § 42 (2) no. 1 MarkenG.

In practice

This clarification by the Federal Supreme Court is particularly important with regard to the proof of the reputation of an earlier trade mark, as well as with regard to the proof of genuine use of a trade mark. Because this proof also presents challenges to well-known brand manufacturers time and again, if only because brands also change a little in the spirit of the times. Please read the following of our blog posts:

Therefore, clarity is important: Against an IR mark that extends across the EU, reputation in the Union must be proven. And the question of whether there is a likelihood of confusion within the meaning of § 9 (1) No. 2 MarkenG must be comprehensively assessed – just as with § 14 (2) No. 2 MarkenG – by taking into account all relevant circumstances of the individual case. Important in the likelihood of confusion is also the distinctiveness through intensive use, which of course also refers to the EU or only Germany, depending on the scope of protection of the IR trademark.

This is because in opposition proceedings against an IR trademark that extends to Germany, only the national reputation is relevant.

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