The provisions of the EU Directive 2015/2436 are implemented in the German Trademark Act through the Trademark Law Modernisation Act. The amendments came into force on 14 January 2019.
Among other things, the amendment changes the calculation of the term of protection for German trademarks that have been registered from 14 January 2019 on. The term now expires ten years after the filing date. If the trademark was registered before this date, the ten-year term of protection will end on the last day of the month in which the filing date falls as before.
In opposition proceedings, the amendment introduces a so-called cooling-off period – similar to the cooling-off period for Union trademarks in the EU. At the joint request of the parties involved in the opposition proceedings, they will be given at least two months to reach an unofficial agreement and to terminate the opposition proceedings by mutual agreement.
In addition, the amendment to the law adapts the period for proof of use in opposition proceedings to the regulations of the Union trademark. If the owner of the opposed challenges the use of the opposing trademark, the owner of the opposing trademark must prove that it has been used within the last five years before the filing date or the priority date of the opposed trademark, provided that no opposition against it has been possible for at least five years at that time.
In addition, the new Trademark Act no longer recognises the requirement of graphic representability of the trademark. This is replaced by the requirement that signs capable of being protected as trademarks must be capable of being represented in the register in such a way that the competent authorities and the public can clearly and unambiguously determine the subject matter of protection. This means that, in principle, it is now also possible to register trademarks forms which have not yet been registrable, e.g. sound marks, movement marks, multimedia marks or hologram marks.
Autor: Dipl.-Ing. Gordian Prescher, LL.M.