Trademark Oppositions in Germany

Oppositions in national trademark registration procedure in Germany

 

A trademark is any sign that can be represented graphically and capable of distinguishing goods or services.

After filing the trademark application, there is an examination step in which the examiners from the Patent and Trademark Office checks the proposed description of goods and/or services associated with the given mark and decides whether it can be registered or not.

1.                  Trademark opposition filing deadlines in Germany

In case that the examiner considers that the trademark is distinctive for certain goods or services of a trader and that it is not deceptive,  he gives the approval for publication of the mark in the German Trademark Office (“Markenblatt”).

After publication in the Official Gazette, there is a period of 3 months in which any person who has previous rights and/or who has reasons to believe that he would be damaged by the registration of a pending trademark may file an opposition. This period is not extendable.

Given the short time for filing an opposition, most owners of major or valuable trademarks subscribe to the Official Gazette (which contains a list of trademarks published for opposition or have services that monitor the Official Gazette for publication of potentially conflicting trademarks.

2.                  Trademark opposition parties in Germany

It is important to note that, at this stage, the official examiner is no longer involved with the application.

The opposition to the grant of a trademark application may be filed by the owner of previously registered trademark or of a well-known trademark or by any other owner of previously registered intellectual property rights: trademarks, company names, domain names, author’s rights, etc.

The opposition must be filed in writing and accompanied by payment of the official opposition fee. If the fee is not paid, the opposition is not taken into consideration by the Office.

The opponent has to prove that there are valid grounds as to why the trademark applicant is not entitled under law to register or to continue holding the mark.

3.                  Trademark opposition grounds in Germany

The grounds of opposition must contain a statement showing how the petitioner would be damaged by the registration of the pending trademark, as well as a statement of the grounds for opposition.

An opposition can be filed based on relative grounds.

The relative grounds state that a trademark is confusingly similar to an existing registered trademark or that it conflicts with an existing prior common law rights established. An opposition based on relative grounds can only be filed by an owner of any prior relative rights.

4.                  Defense to a trademark opposition in Germany (answer to an opposition; counter-statement)

In this jurisdiction, after filing of the opposition, no further action is mandatory, but the parties may file observations alternatively.

5.                  Examination and decision in a trademark opposition file in Germany

It is a common procedure that the parties (the trademark applicant and the opponent) come to a settlement agreement regarding use of the trademark (usually, this means a limitation of the number of classes for the pending trademark or adding an element of distinctiveness).

If the opposition is, by any reasons, not settled amicably between the two parties, the opponent must then file evidence in support of the opposition and the applicant must submit his own evidence in support of the grant of the application.

If it is the case, the opponent must also provide proof of use for his previously registered trademark, over five years before the date of advertisement of the opposed application.

Based on the papers filed by each party, or, in some cases, also based on an oral hearing, the Patent and Trademark Office comes up with a decision regarding the grant of the pending trademark.

6.                  Appeals to a trademarks opposition decision in Germany

An opposition decision can be appealed within one month after receipt of the decision.
Depending on the rank of the deciding officer of the German Trademark Office, the appeal must be filed either to the next instance within the Trademark Office (German Trademark Act Sec. 64) or to the Federal Patent Court (German Trademark Act Sec. 66).
A higher appeals can be made against the decisions of the Federal Patent Court to the Federal Court of Justice, however, the Federal Patent Court decides whether this further appeal to the highest court is possible.

If you are facing oppositions in national trademark registration procedure in Germany, please contact us at office@trademark-oppositions.com.

 

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