The Trademark Law Modernization Act
New forms of presentation
From mid-January, in addition to the familiar trademark forms, sound marks, motion marks, hologram marks and multimedia marks in digital form (JEPEG, mp3, mp4), i.e., for example, as an electronic sound or video sequence, can also be registered.
The documents of the German Patent and Trademark Office (DPMA) will be provided with a QR code containing a link to the corresponding representation in the electronic trademark register. The law implements the EU Trademark Directive, which has been in force since 2016, into national law.
Warranty brand as a new brand category
The reform also makes a new trademark category available in the form of the warranty mark. A warranty mark focuses on the guarantee function for certain goods or services. Test seals can thus receive protection under trademark law.... However, a warranty mark may only be registered if the guaranteeing character is clearly recognizable from the sign.
Other innovations
In addition, protected geographical indications and protected designations of origin are included in the law, which can be registered as trademarks.
There are also innovations in the opposition procedure. For example, several earlier rights can now be asserted by the opponent at the same time. In addition, a "cooling-off" phase of (extendable) 2 months after filing is granted, during which the parties can come to an amicable agreement, if necessary, before the official proceedings begin.
Last but not least, there is a change with regard to the use requirement: The 5-year grace period for use now begins on the day from which an opposition can no longer be filed against the registration of a trademark. This is either the day after the expiry of the opposition period or the date on which the opposition proceedings are finally terminated.
.New regulation on revocation and invalidity proceedings from May 2020
As of May 1, 2020, nullity proceedings arising from earlier rights can be conducted and handled as official proceedings before the German Patent and Trademark Office (DPMA). The same also applies to revocation proceedings, in particular due to non-use. Currently, these proceedings can only be conducted before the civil courts.
Regarding Matthias Rößler:
Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.