An Overview of Trademark Registration in Germany

Germany is a member of the EU. Therefore the European Union Trademarks (EUTM) are protected in this jurisdiction, which implies that a trademark can be registered in Germany by registering a European Union trademark that is also valid in all the other European Union member countries or by registering locally  with the help of  the German Patent and Trade Mark Office (DPMA)  pursuant to  The Act on the Protection of Trade Marks and other Signs (Trade Mark Act)

The German trademark office provides the option of an accelerated trademark registration process through filing an application for the same and the payment of the additional fees. The accelerated trademark process in Germany enables faster trademark registration.

If the proprietor intends to register a combined trademark inclusive of both word elements and figurative elements) in Germany, the exclusive right to use the trademark is limited to the use of the trademark in the exact configuration or manner in which it was filed and registered. On the other hand, if a word element of the trademark is registered separately from the logo (or vice versa), it is recommended that the proprietor registers for another trademark, including only the word or figurative elements, if he wishes to use and protect separately.

Eligible Marks for Trademark Registration in Germany

The following marks are eligible for trademark registration in Germany-

All signs, particularly words including personal names, designs, letters, numerals, sounds, 3D designs, the shape of goods or of their packaging as well as other wrappings, inclusive of colours and colour combinations, can be protected as trademarks if they are capable to distinguish the goods or services of one undertaking from those of other undertakings.

Ineligible Marks

Signs consisting exclusively of shapes or other characteristics

• Resulting from the nature of the goods themselves;
• Necessitating the obtainment of a technical result; or
• Giving substantial value to the goods

The above-mentioned signs won’t be capable of being protected as trademarks in Germany.

Absolute Grounds

The absolute grounds which make the mark ineligible for trademark registration in Germany are enlisted below -

1. The marks that are incapable of being represented on the Register in a way which allows the relevant authorities and the public in ascertaining the precise and clear subject matter of protection won't be eligible for trademark registration in Germany.
2. Marks not having any distinctive character for the goods or services;
3. Marks consisting exclusively of signs or indications which might be serving  in trade for  designating  the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, or other characteristics of the goods or services;
4. Marks that contain exclusively signs or indications that have become customary in the present  language or in the bona fide and established trade practices  for designating  the goods or services
5. Marks which can deceive the public, such as the nature, quality or geographical origin of the goods or services;
6. Marks that are in contravention of the public policy or the accepted principles of morality;
7. Marks containing state coats of arms, state flags or other state symbols or coats of arms of a domestic locality or of a domestic municipal or other local authority association;
8. Marks having official signs or hallmarks indicating control or warranty;
9. Marks having coats of arms, flags or other signs, seals or designations of international intergovernmental organisations;
10. Marks that are excluded from registration as per the German law, to European Union legislation or to international agreements to which the European Union or the Federal Republic of Germany is party,  giving protection of designations of origin and geographical indications;
11. Marks which are excluded from registration owing to the European Union legislation or international agreements to which the European Union is party, giving protection of traditional terms for wine;
12. Marks which are excluded from registration owing to the European Union legislation or international agreements to which the European Union is party, giving protection of traditional specialities guaranteed;
13. Marks consisting of, or reproduce in their essential elements, an earlier plant variety denomination registered as per German law or European Union legislation, or international agreements to which the European Union or the Federal is party, providing for the protection of plant variety rights that is in  regard to plant varieties of the same or closely related species;
14. The use of the marks can evidently be prohibited in the public interest as per the other provisions, or
15. Marks the application of which is filed in bad faith

Relative Grounds

The relative grounds which make the mark ineligible for trademark registration in Germany are enlisted below -

1. The mark being identical to an earlier trade mark applied for or registered, and the goods or services for which it was registered are identical with the goods or services for which the earlier trade mark was applied for or registered;
2. If the mark is likely to confuse the general public and also cause confusion regarding the  existence of an association between the trademarks for the public  due to its similarity to  or identity with an earlier trade mark applied for or registered and owing to the similarity or identity of the goods/  services covered by both the trademarks; or
3. If it is identical with or similar to an earlier trade mark applied for or registered, if the earlier trade mark is a trade mark which has a reputation in Germany, and if the use of the registered trade mark would, without due cause, e detrimental to or take undue advantage of or, the distinct  character or the reputation of the trade mark which has a reputation

necessary papers Required for Trademark Registration in Germany

The necessary papers required for trademark registration in Germany are given below.

• A request for registration,
• Information permitting to identify the applicant,
• A representation of the trade mark, which is not subject to the ground for refusal
• A  list of the goods or services for which registration is being requested

Procedure for Trademark Registration in Germany

The applicant must follow the below-prescribed procedure for trademark registration in Germany

Filing the Application

The applicant is required to file the application for trademark registration in Germany with the German Patent and Trade Mark Office, along with paying the requisite fees. The application can also be filed via a patent information centre where such an agency has been designated to receive trade mark applications based on a notice published by the Federal Ministry of Justice and Consumer Protection in the Federal Law Gazette.

The date on which the relevant authority receives the application along with the necessary papers shall be considered the date of filing of the application. The application filed via the patent information centre shall be considered to be filed at the GPTO/DPMA .

Examination

The DPMA shall examine the application on some pre-defined parameters such as compliance with the prescribed requirements of the Act, conditions of filing, payment of fees and the legal capacity of the applicant as a proprietor.

In case of any discrepancies,  if the same are remedied in the prescribed timeline, and the day on which the application is submitted post, the remediation shall be considered as the date of filing. 

In the event of non-remediation of the discrepancies in the application in the prescribed time the application shall be deemed to be withdrawn by the applicant or refused by the competent authority

The application shall also be examined on the parameters of the existence of any absolute grounds of refusal, and the application can be refused by the DPMA in the event of the existence of such grounds.

Publication

 Upon the application satisfying the requirements for application and not being refused by the competent authority, the trade mark applied for will be entered in the Register. The registration shall be published, which may be in electronic format. For further processing or use for the purposes of trade mark information, DPMA may transmit the information recorded in the Register to third parties in electronic format. The transmission won’t take place in so far as inspection is excluded.

Opposition

Any party can file for opposition to the trademark within 3 months post the publication of the trademark.

Grant of Registration

If there hasn’t been any opposition in the prescribed timeline or the opposition proceeding are favouring the applicant, the competent authority shall grant the registration certificate to the applicant.

Term of Protection and Renewal

• The term of protection of a registered trade mark shall be 10 years, calculated from the date of filing the application.
• The renewal of the trademark registration shall be done for a further period of 10 years upon the request of the applicant of the trade mark or any person having the authorization to do so by law or by contract only after the payment of the renewal fee.
• The information for the renewal of the trademark registration shall be provided to the proprietor by The German Patent and Trade Mark Office at least 6 months before the said expiry. Failure to give such information shall not involve the liability of the German Patent and Trade Mark Office.
• The proprietor’s request for renewal shall be submitted in the 6 month period prior to the expiry of the duration of protection. Failing this, the request may be submitted within a further period of 6 months following the expiry of the duration of protection.
• The renewal of the duration of protection shall become effective on the day after the expiry of the previous duration of protection. It shall be recorded in the Register and published.
• If the duration of protection isn’t renewed, the registration of the trade mark shall be cancelled with effect from the expiry of the duration of protection.

Priority

• The determination of the priority of an earlier foreign application shall be governed by the provisions of the international agreements with the proviso that priority can also be claimed for services as per the Paris Convention.
• If the earlier foreign application has been filed in a state with which there isn’t any conclusion of an international treaty on the recognition of priority, the applicant may claim a right of priority corresponding to the right of priority under the Paris Convention, in so far as, per a notice published by the Federal Ministry of Justice and Consumer Protection in the Federal Law Gazette, the other state permits for a right of priority based on the first application filed with the GPTO which is comparable regarding the terms, conditions and content to the right of priority as per the Paris Convention.
• Any person claiming the priority shall within 2 months after the date of filing indicate the date and state of the earlier application.
• If the applicant has submitted these particulars, the German Patent and Trade Mark Office would be inviting him to indicate the file number of the earlier application along with submitting a copy of the earlier application within 2 months of the service of the request.
• The particulars may be changed within these time limits. If the particulars are not submitted in due time, the right of priority shall be forfeited for this application. Section

Exhibition Priority

The applicant can also claim exhibition priority if the goods and services are displayed under the trademark at a recognized international, domestic or foreign exhibition, and the application is filed within 6 months from the date of the 1st display.