Just in time with the end of the implementation deadline, important parts of the German Trade Mark Modernisation Act (MaMoG) implementing EU Trademark Directive No. EU 2015/2436 come into effect on January 14, 2019, involving extensive amendments to the German Trademark Act (MarkenG). A large number of corresponding changes are already applicable to EU marks since October 2017 and are binding now for German trademarks.
Thus, the protection of national trademarks no longer requires necessarily a graphical representation of the sign. It is sufficient for nontraditional trademarks that the subject matter of their sign is clearly and precisely determinable, whereby a written description of the representation of the sign can meet that requirement. In addition, national certification marks are registerable from now on. However, it remains unclear whether the required function of that trademark category guaranteeing a certain product quality must be derived from the trademark itself, or whether the mere use to certify specific products is sufficient.
Furthermore, German trademarks are now subject to additional absolute grounds examined by the Office when applying for a trademark or upon invalidation request. For example, trademarks may not collide with earlier designations of origin, geographical indications, traditional terms for wines, traditional specialties guaranteed or plant variety rights. In addition, protected designations of origin or geographical indications can also be invoked as priority rights in opposition proceedings from now on.
MaMoG also implements extensive changes to trademarks proceedings before the German Patent and Trademark Office (opposition, revocation or invalidity proceedings), for instance a cooling-off period similar to those in oppositions against EU trademark applications.
Whereas it was required to file formally separate oppositions for each earlier right in the past, from now on it is possible to invoke several rights within one opposition request.
Significant changes relate to the proof of use to be furnished in opposition proceedings. Until now, two different periods of use were to be observed: on the one hand a five-year period before the publication of the younger mark and on the other hand the five-year period before the final decision on the opposition is taken (so-called revolving period of use). For future opposition, only one period of use is applicable, which will be calculated from the filing date or priority date of the younger mark. The revolving period of use is abolished entirely.
However, the effects of cessation of the latter period of use will be curbed by the fact that revocation proceedings before the Office will be available, whereas in the past, sufficient genuine use of a trademark could only be reviewed by means of a lawsuit before the courts with corresponding legal risks for the plaintiff. The same applies to trademark invalidations based on earlier rights beyond opposition proceedings, because the new law will also provides the option of invoking earlier colliding rights in invalidity proceedings before the Office. However, both new invalidity and revocation proceedings – with option of a hearing – will not be available until May 1, 2020. Further, applicants seated outside the EU can also be required to provide security for the costs of the proceedings in advance.
The current measures for revoking or invalidating trademarks based on a lack of sufficient use or on earlier rights before the courts remains in place. However – analogous to EU trademarks – applications for revocation or invalidity are inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been already finally adjudicated on its merits, either by the Office or by the courts.
Concerning trademark infringements, the new law confirms – already with effect of December 15, 2018 – that the transit of counterfeit goods under customs supervision can constitute a trademark infringement (see already: ECJ, judgment of 1/11/2011 – C-446/09 and C-495/09 – Philips & Nokia). However, the declarant or owner of goods is entitled to raise the objection during border seizure proceedings (see Regulation (EU) No. 608/2013) that the trademark owner is not entitled to prohibit the import of the goods in the country of final destination. For example, that could become relevant if the mark is ineligible for protection in the country of final destination or if the importer could invoke earlier rights there.