Germany –Amendments to the German Trade Mark Act as of January 14, 2019
The Trade Mark Law Modernization Act ("Markenrechtsmodernisierungsgesetz"), which entered into force on January 14, 2019, brought several amendments to the German Trade Mark Act.
The main amendments are the following:
- Trademarks no longer need to be capable of being represented graphically. This makes it easier to provide a suitable representation for non-traditional marks, e.g. sound marks which are not music, multimedia marks, holograms and others by submitting an electronic file.
- Certification marks have been introduced as a new trade mark category.
- Protected geographical indications and protected designations of origin, wines and spirits protected under national or European legislation or agreements, traditional specialties and plant varieties constitute new absolute grounds for refusal. PGIs and PDOs can also be the basis of oppositions.
- Licenses as well as the willingness to grant licenses or sell/transfer a trade mark can be recorded in the trade marks register.
- For trade marks registered on or after January 14, 2019, the term of validity ends on the 10th anniversary of the application date, not on the last day of the month which concludes the 10-year period.
- The list of goods and services will no longer be re-classified upon renewal.
- An opposition may be based on several marks, upon payment of an additional fee. It is no longer necessary to file a separate opposition for each mark on which an opposition is to be based.
- The parties in opposition proceedings may request a "cooling-off" period, which may be further extended upon joint request.
- The period for which use of the earlier mark must be proven in opposition proceedings is five years before the application or priority date of the contested mark. It is no longer necessary to also prove use of the earlier mark during the five-year term before the final decision is rendered.
- The five-year non-use grace period for a newly registered mark starts from the end of the opposition period or from the date the decision in the opposition proceedings becomes final. The non-use grace period start date and end date will be entered into the Register.