It’s possible to register a TM in the Federal Republic of Germany if the DPMA (the local licensing body) finds no reason to refuse registration. Unlike in other countries, ex officio examination isn’t carried out in Germany; hence, TMs must be inherently distinctive. In particular, they mustn't:
- be descriptive & coincide with other products/services;
- mislead the general public;
- contradict public policy.
Registering a TM in the Federal Republic of Germany: Using IP in Trade
When used in trade, TMs can also become distinctive. Proving acquired distinctiveness requires TM owners to submit, among other things, promo materials & surveys indicating that no less than fifty percent of those polled are able to identify a TM. The DPMA may decline to register TMs consisting of geographical names & names of origin. It particularly applies to:
- food products;
- wines and spirits protected by national or EU legislation or treaties.
The term of protection for registered TMs in the Federal Republic of Germany commences on the date of filing an application.
The period of protection for TMs registered prior to the 14th of January 2019 expires in ten years (by the end of the last day of the month they were registered in). Protection for TMs registered on or after the aforementioned date expires precisely ten years after the registration date. It’s possible to renew TM protection in the Federal Republic of Germany after paying a renewal fee. Once a fee is paid, TM protection can be extended for another ten years.
Fees are significantly lower than in the EU, with a basic fee being only three hundred euros (two hundred ninety for e-filing). Fees are paid on a per-class basis, with each additional class costing one hundred euros. The cost of renewing TM registration in the Federal Republic of Germany is seven hundred fifty euros (for 3 classes) & two hundred sixty euros for each additional class.
Ex Officio Examination
No ex officio assessment is applied; hence, TM registration can’t be refused on the basis of previously owned TM rights. However, copyright holders may refer to previously owned rights during legal proceedings; therefore, they’re encouraged to monitor TM registrations on a regular basis.
Germany: Settling IP Disputes
Owners of TM rights can object to TM registration within three months after the date of registration. There's also the so-called ‘cooling-off period’ during proceedings centering around IP disputes. What it means is that the DPMA may provide parties with 60 days for settling an IP dispute in the Federal Republic of Germany.
During this time, they can try & settle a TM dispute in the Federal Republic of Germany without going to court.
If a TM hasn’t been used for 60 months, its registration can be cancelled at the request of 3rd parties. Requests for cancellation can be submitted to either the IP Office or civil courts. Currently, requests for invalidating a TM in the Federal Republic of Germany can only be submitted to civil courts. However, it will also be possible to submit them to the DPMA after May 1st, 2020.
