• New administrative cancellation and revocation procedures before the IPO
  • Goods in transit: Now explicitly subject to national trade mark law and the owners of goods haves to provide proof that goods do not infringe trade marks at their destination
  • New certification marks available
Status of the implementation into German law 

The German Government implemented the Directive into German national trade mark law ("MarkenG") on 14 January 2019. Some of the changes (in particular the change to administrative procedures, see below) only became effective as of 1 May 2020.

New administrative procedures before the IPO 

Up until now, the German trade mark law only allowed for administrative cancellation procedures based on absolute grounds of refusal (article 50 MarkenG). All other potential grounds for cancellation and revocation (such as lack of use and relative grounds of refusal) had to be brought before a court. This resulted in higher costs and usually lengthier proceedings. The implementation of the Directive added new administrative cancellation and revocation proceedings for lack of use and relative grounds of refusal before the German IPO starting on 1 May 2020 (article 53-55 MarkenG). Applicants can choose between the court and the IPO as their venue.

Comments on third party trade mark applications during examination 

The implementation of the Directive gives the option to comment on trade mark applications of third parties during examination (article 37(6) MarkenG). This allows competitors, state bodies and other entities to alert the IPO to any issues with the application. For example, the IPO might not be aware that the sign applied for is in fact a widely used generic term in a specific field. Being able to comment on the application will (potentially) prevent a situation where such a trade mark would be registered.

Graphical representation of trade marks

The need to represent a mark graphically (article 8(1) MarkenG) has been removed. Similar to other member countries, the IPO intends to accept a wide range of (digital) file formats, even though the details are not clear yet. In future, the applicant must provide a representation of his mark "which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded to the proprietor" (similar to requirements laid down in the Sieckmann case C-273/00). While this criterion seems to be more flexible, it is inherently vague and will most likely be subject to many court decisions.

New absolute grounds of refusal 

Designations of origin, geographical indications and traditional terms for wine and plant variety rights are barred from being registered as a trade mark (article 8(2) No 9-12 MarkenG-E).

Trade mark infringement by goods in transit 

The new German trade mark law explicitly declares that goods in transit are subject to national trade marks (article 14a MarkenG). Prior to this change, trade mark owners could rarely take action against infringing goods being shipped through Germany. Trade mark owners were forced to pursue infringements at the origin and/or destination of the goods. With this change, trade mark owners now have a good option to prevent the circulation of infringing goods within the EU due to Germany's geographical position and importance as a freight hub. The new system is a two-step process:

  1. If German customs detain (allegedly) infringing goods, the owner has to dispute the detention or the goods will automatically be destroyed.
  2. If the owner does dispute the detention, he is obliged to provide proof that the goods detained in Germany would not infringe any trade marks of the trade mark owner in their intended destination (e.g. in France). If the proof is not sufficient, the goods will be destroyed. If the proof is sufficient, the goods will be released.
New certification marks 

German trade mark law now allows for certification and guarantee marks to be filed (articles 106a - 106h MarkenG). Filing a certification mark is subject to certain requirements, such as filing a statute setting out the rules for using the trade mark.

Written by Constantin Eikel