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With effect of January 14, 2019, the EU Directive 2015/2436 on the harmonisation of the laws of the Member States relating to trademarks will be implemented into German law. The most important changes –in comparison to the current German trademark law- are the following:
1. Deletion of the requirement of graphical representation
A trademark must no longer be capable of being represented graphically in order to be registrable. It suffices that the sign is clearly and unambiguously identifiable. This opens the door for trademarks which cannot be represented graphically, such as multimedia trademarks or any kind of sound trademarks.
2. Certification mark
The new law further introduces a new trademark category: the „certification mark“ („Gewährleistungsmarke“). In contrast to the commonly known individual trademark, the certification mark does not serve as an indication of origin, but is determined to designate that the labeled goods or services are of a certain quality or bear certain characteristics, e.g. that they are made of a certain material, by using a certain method of production etc. Most importantly, a specific set of rules on the use of the certification mark must be filed with the German Patent and Trademark Office indicating the quality or characteristics to be certified and the surveillance measures. The owner himself must not offer and sell any goods or services under the same trademark (requirement of „neutrality“).
3. New absolute grounds for refusal
Protected geographical indications, designations of origin, traditional terms for wine, plant variety denominations and guaranteed traditional specialities can now constitute grounds for refusal of a trademark.
4.Registration of licenses
A licence of a trademark can now be recorded in the register. It is also possible to record the willingness to sell or license a trademark.
5. Opposition proceedings
Up to now, a younger trademark could only be opposed based on more than one earlier rights by filing several opposition proceedings separately. From now on, one single opposition proceeding on the basis of several earlier rights will be possible (as it is provided for by the European Trademark Regulation before the EUIPO).
The official opposition fee will change. Up to now, the fee was EUR 120.00 per opposition, in future it will be EUR 250.00 per opposition and EUR 50.00 for each additional earlier right.
6. Cancellation proceedings
Until now, cancellation proceedings based on earlier rights or non-use of a trademark had to be brought before the civil courts. With effect of 1 May 2020, cancellation proceedings can be initiated before the German Patent and Trademark Office. Proceedings before civil courts, however, remain possible as an alternative.
Should you have any further questions or doubts, please do not hesitate to revert to us.