German Trademark Modernization Act

The German Trademark Modernization Act (Markenmodernisierungsgesetz), which transposes Directive (EU) 2015/2436 (Trademark Directive) into German law as of January 14th, 2019, promotes the further standardization of substantive trademark law and thus promotes the coexistence of EU and national trademarks. It also contributes to the harmonization of important procedural regulations and to an increased cooperation between the national authorities and the EUIPO. The most important changes and innovations are presented in this article.

Graphic representability of the trademark
The requirement that a sign has to be represented graphically to be registered as a trademark no longer applies following the amendment of section 8 (1) of the German Trademark Act (Markengesetz). Non-conventional forms of trade mark, such as acoustic signs, sequences of images, tactile, olfactory or even haptic marks, are therefore now registrable. The sign can be represented in any form as long as the object of protection can be identified clearly and unambiguously.

National certification mark
Sections 106a et seq. of the German Trademark Act contain provisions on certification marks that are strongly based on the EU certification mark that exists since October 2017. The certification mark is a quality-indicating label which does not serve as an indication of origin but rather guarantees that goods and services meet a certain standard which is laid down in the trademark statutes and controlled under the responsibility of the owner of the certification mark. The owner of the certification mark assumes the role of a certifier and is obliged to observe neutrality. If he does not comply with the standardized testing and monitoring obligations, the warranty mark may be revoked and cancelled in accordance with section 106g of the German Trademark Act.

Revocation and invalidity proceedings
According to sections 53 et. seq. of the German Trademark Act it is now possible to assert relative grounds for the invalidity or the revocation of the trade mark at the German Trade Mark and Patent Office (DPMA). Previously, a cancellation procedure at the DPMA could only be based on absolute grounds for refusal (sections 50, 54 of the German Trademark Act) and the cancellation on grounds of revocation had to be enforced before the ordinary courts by means of a legal action. Judicial cancelation proceedings are still available, so that the new revocation and invalidity proceedings at the DPMA are only added as an alternative to enable proceedings to be conducted quickly and cost-effectively. As its introduction requires preparations at the DPMA, it will not be available until the May 1st, 2020.

Transit traffic
In order to counter product piracy effectively, the enforcement of prohibition rights against goods in transit is considerably facilitated. According to section 14a of the German Trademark Act, infringing goods subject to customs surveillance can be stopped and inspected. Furthermore, the burden of proof is reversed in such a way that the third party must prove that the goods are destined for a third country and may be lawfully imported there. Only under these conditions transit may continue.

Further procedural changes
The procedural innovations also include that parties not involved in the application procedure may raise objections to the registration pursuant to section 37 (6) of the German Trademark Act. This is intended to avoid erroneous trademark registrations from the outset. However, the DPMA is not obliged to take the objections into account in the decision-making process.

The calculation of the five-year grace period has also changed in the context of the objection of non-use pursuant to section 43 (1) in conjunction with sections 25 and 26 of the German Trademark Act. The point of reference for the calculation of the date of use is no longer the publication of the registration of the younger trade mark, but rather its filing date or, if applicable, its priority date. Pursuant to section 20a of the German Trademark Act, the beginning of the grace period for use will in future be recorded in the trade mark register.

Within opposition proceedings several earlier rights can now be asserted jointly, so that there is no need to initiate separate proceedings. Indications of origin and protected geographical indications were added as new grounds for an opposition in section 42 (2) of the German Trademark Act. Indications of origin and protected geographical indications have also been supplemented in section 8 (2) of the German Trademark Act as well as protected traditional designations for wines and guaranteed traditional specialities as further absolute grounds for refusal.