Overview Development and origin of trade mark applications
With 77,427 trade mark applications at the DPMA in 2022, the rapid increase seen during the years of the pandemic came to an end. The number of applications was about the same as in 2019 (78,823 applications). This means that, compared to the previous year (92,335 applications), there was a decrease of 16.1%. The 77,427 applications included 73,309 applications and 4,118 international requests for protection in Germany, which were transmitted to us by the World Intellectual Property Organization (WIPO). Accordingly, there was also a decline in registrations, from 68,609 in 2021 to 53,621 in 2022. Since about as many applications as in the previous year were withdrawn (13,326), the number of procedures pending at the end of the year fell from 23,349 to 21,862.
In 2022, the highest number of applications from abroad once again came from China (2,231), followed by the United States (476). For foreign applicants, obtaining trade mark protection in Germany is, in many cases, more attractive via WIPO or an EU trade mark at the European Union Intellectual Property Office (EUIPO). However, the number of applications at EUIPO also decreased, namely from 197,989 in 2021 to 174,152 in 2022 (-12.0%). This means that there were fewer applications than in the first year of the pandemic (177,251 in 2020) but more than in 2019 (160,568).
Last year, applicants from Germany filed 23,631 EU trade mark applications and were thus the largest group of applicants, just ahead of China with 21,827 applications.
Despite the high number of applications at EUIPO, the situation was the same as in the previous years: Only around 25% of the applicants from Germany file EU trade mark applications, while 75% of the applicants file national trade mark applications at the DPMA. Many small and medium-sized enterprises (SMEs) often operate in a limited market, so a national IP right is sufficient.
As in the previous year, class 35 (advertising; business management, organisation and administration; office functions), class 41 (providing of training; entertainment; sporting and cultural activities) and class 9 (electrical apparatus and instruments; computer hardware; software; optical apparatus and instruments) were the classes most frequently indicated in applications. Class 35 was indicated in 24,742 trade mark applications, i.e. in one out of three trade mark applications. The situation was a bit different with regard to the EU trade mark applications at EUIPO, as class 9 was the class most frequently indicated, followed by class 35. Taking a look at the changes in the individual classes, the significant decreases with respect to foodstuffs and beverages are striking. After a strong increase during the pandemic, there was a 25% decrease in applications in food classes 29 and 30 compared to the previous year. Decreases were less significant in class 2 (paints; varnishes; lacquers; inks for printing) (-3.0%), 34 (tobacco; smokers’ articles) (-4.2%) and 4 (industrial oils and greases; fuels) (-4.8%).
Class heading according to current version of Nice Classiffication, available here.
1 A trade mark application can be attributed to several classes.
Most applications per 100,000 inhabitants once again came from the city states of Hamburg and Berlin, both cities where many companies are based. The territorial states North Rhine-Westphalia, Bavaria and Hesse with their high proportion of manufacturing industries followed, with Nord Rhine-Westphalia overtaking Bavaria and taking third place. Hesse overtook the city state of Bremen and thus also ranked among the top 5 Länder.
If the cursor is moved over the chart, it shows the trade mark applications in 2022 and the applications per 100,000 inhabitants as well as the change in percent per German Länder (residence or principal place of business of the applicant).
In 2022, the three millionth trade mark since 1 October 1948 was applied for at the DPMA. From this date onwards, filing trade marks at the receiving units for patent, utility model and trade mark applications in Darmstadt and Berlin was possible again after the fall of the German Reich. The new applications and registrations since then amounted to 3,048,485 and 2,066,462, respectively. A trade mark category created in 2019, the certification mark has so far been applied for 330 times; there have so far been 284 applications for collective marks. Both trade mark categories are not suitable for all applicants, but only for certain applicants such as certifying bodies or associations; one of the requirements is the submission of regulations governing use of the mark. The word mark is by far the most sought-after type of trade mark. Out of the 73,309 national trade mark applications, 43,705 applications were word marks. By contrast, new types of trade marks such as sound marks, three-dimensional marks in new formats and other types of trade marks accounted for a total of only 169 applications.
| Selected data | 2018 | 2019 | 2020 | 2021 | 2022 |
|---|---|---|---|---|---|
| New applications | 70,542 | 73,627 | 84,623 | 87,649 | 73,309 |
| Registrations | 50,588 | 55,030 | 60,436 | 68,609 | 53,621 |
| Refusals | 7,081 | 6,883 | 6,606 | 9,634 | 7,793 |
The top companies and institutions in terms of registrations usually vary considerably. An adjustment of the marketing strategy or new products lead to new trade mark applications. 2022 clearly brought a lot of innovation in the pharmaceutical industry. For example, BERLIN-CHEMIE AG, a company of the Italian MENARINI Group, took the lead with 103 registrations, followed by the consulting firm Apo-E Consulting GmbH with 94 registrations and the long-established pharmaceutical company Merck KGaA with 86 registrations.
About 40 staff of the trade mark administration at the Jena location deal with the secondary procedures after the definitive registration of a trade mark. These include, in particular, renewals, the recording of changes, restrictions on disposal, divisions, licensing procedures and cancellations. As another horizontal task, the trade mark administration staff issue priority documents, certifications of origin and other register extracts and provide internal services, e.g. quality assurance tasks, including corrections of the trade mark register.
In 2022, the trade mark administration staff achieved stable results. The high number of priority documents for pharmaceutical companies doing research, especially BioNTech SE in Mainz (in January 2022 alone, 396 requests for a priority document), was particularly remarkable. At the end of 2022, the register contained 880,538 trade marks. Since 2016 (804,800), there has been a constant increase in trade marks. With 74,160, the number of recorded changes concerning the proprietor, representative or address for service was somewhat below the previous year’s figure (80,739). With 40,616, the number of trade mark cancellations due to the non-renewal of the term of protection or a surrender also decreased compared to the previous year (45,452). With 34,369, the number of renewals was about the same as in the previous year (35,945). Licences were entered in the register for 8 trade marks. The declarations of willingness to license or sell/transfer continued to gain importance. The German Patent and Trade Mark Office received non-binding declarations of willingness to grant licences from the respective registered proprietors concerning 23,604 trade marks (previous year: 18,526). It also received non-binding declarations of willingness to sell/transfer from the respective trade mark proprietors with respect to 12,121 trade marks (previous year: 9,435). The option to make such a declaration of willingness to license or sell/transfer has been provided since the trade mark law reform at the beginning of 2019 and is becoming established in the application practice.
For further statistical data on trade mark administration, please see the “Statistics” chapter.
Although a request for the cancellation of a registration because of the existence of absolute grounds for refusal at the time of filing of the application has been possible since the entry into force of the Trade Mark Act in 1995, the only way to cancel a trade mark due to the existence of earlier rights (declaration of invalidity) or in the case of non-use (revocation) was, for a long time, to bring an action before the ordinary courts. Since 1 May 2020, there has been the option to file an application for a declaration of invalidity due to the existence of earlier rights or an application for revocation with the DPMA and to have the proceedings fully conducted at the DPMA. This means that, since then, there have been two ways to seek legal protection. In 2022, the DPMA received 141 applications for a declaration of invalidity due to the existence of earlier rights (previous year: 128) and 145 applications for revocation intended to have a substantive decision made (previous year: 229). In addition, 154 applications (previous years: 144) for a declaration of invalidity due to the existence of absolute grounds for refusal were filed, 84 of which concerned the ground for refusal that a trade mark had been filed in bad faith.
In focus Trade mark protection in the Metaverse
Sneakers, handbags, sports cars — we can all think of well-known trade marks associated with these products. But what if such products turn up in the virtual space? Trade mark protection also works in the digital world. However, a lot of uncertainty remains on the path to an established practice.
The Metaverse is the digital space that we are part of in many shapes and forms: virtual meetings, computer games, virtual concerts. The Metaverse, in contrast to the real world, is a digital parallel universe, where we are all active, to a greater or lesser extent.
As in the real world, trade marks are to be found all over the digital world. Soccer fans wear their favourite club’s jersey, a band gets to a gig in a luxury limousine, avatars of participants in the chatroom of an online presentation meet wearing clothes and accessories chosen by the participants. A designer handbag is proudly presented in the virtual world almost like at a real night at the opera.
For trade mark holders, for instance sellers of luxury handbags, the Metaverse raises questions concerning the protection of their trade marks. In the luxury segment especially, a trade mark is of considerable value. A handbag for 3,000 euros is not bought merely for its aesthetic appeal, but also and in particular because it is associated with a well-known trade mark. At the same time, the trade mark guarantees the reliability of the production quality as a well as the durability of the design. Such trade marks are typically protected for the merchandise classes that made them become well-established, for instance handbags, clothes or sports cars. Given the fact that real things are not used in the Metaverse, because the digital world consists solely of program codes, trade mark holders were quick to realise that their products were not protected in the Metaverse. This is how an urgent need arose to transfer trade mark protection from the real world to the digital world.
So far, there has been no established legal practice for this relatively new need to protect trade marks in the Metaverse. The future dynamics of the Metaverse being almost impossible to predict, trade mark holders are very keen to keep any gaps in protection from occurring or persisting. Given that digital versions of real products are essentially program codes, most trade mark offices in the world, including the DPMA, consider them to be software and classify them into class 9 of the Nice Classification of goods and services.
The digital version of an article is often secured by means of a Non-Fungible Token (NFT), a non-exchangeable data section of a blockchain, also used in cryptocurrencies. Examples for possible wordings in lists of goods are therefore, among others, “virtual sneakers authenticated by NFT” or “computer software for blockchain technology”.
This way of trade mark protection is currently chosen by many applicants. After all, the German trade mark register already has almost 50 entries mentioning “NFT” in the respective lists of goods. Additionally, just under 1,000 applications and entries include the term “blockchain”.
However, other questions remain unanswered. For instance, in order for any claims to have merit, resemblance between the goods of the opposing trade marks concerned is essential. But is there a resemblance between a digital perfume and a real one? The answer to this question can have considerable consequences, beyond the specific case, on the scope of protection of the many registered trade marks in the areas of software, clothing or other goods.
So, the future of trade marks is shaping up to bring suspense!
Briefly explained: Repeat filings The thin line between cleverness and bad faith
Repeat filings are often used as a trick to dodge a basic condition of trade mark protection: In many cases, these filings are intended to avoid the requirement to use registered trade marks. But what is assumed to be a clever move is risky — and can easily become an own goal.
The requirement of use is closely tied to the registration of a trade mark. A registered trade mark must be used (for all goods and services for which it has been registered) in order to permanently maintain the rights from that trade mark. If a trade mark is not used for a period of five years, it is no longer possible to derive any rights from the trade mark. Upon request, the trade mark can even be cancelled because of revocation.
As trade marks do not only promote economic competition by protecting investments but also constitute monopoly rights for the benefit of individual parties and thus constrain other market participants, only trade marks that are actually used enjoy full protection pursuant to European trade mark law. It is provided that only trade mark proprietors that actually use their trade marks and conduct business are entitled to the rights from the trade marks.
Requirement to give evidence of use
For trade mark proprietors, however, the requirement of use can sometimes be a nuisance, as the trade mark has to be used with respect to all registered goods and services and such use has to be proven. Especially giving evidence of use is often difficult and tedious. In many proceedings, it seems that a trade mark is used, but the required documentation to give objective evidence is not available. For example, with respect to each good or service, specific sales figures must be provided and it has to be demonstrated how the trade mark is used on the product.
That is why, to avoid the tedious provision of evidence, trade mark proprietors sometimes make a repeat filing for the trade mark concerned after five years, so it will be granted another grace period for non-use of five years — as with every newly registered trade mark. This seems to be an easy option to avoid issues associated with the requirement of use, not least because of the low filing fees.
However, making a repeat filing entails certain legal risks because the new filing also involves a loss of priority. If, in the meantime, a similar trade mark has been filed, the new filing can be challenged on the basis of this trade mark. This can result in the complete loss of the new filing.
When does a trade mark filing have to be considered made in bad faith?
If the new filing is identical to the earlier application and thus is a real repeat filing made only to avoid the evidence of use, the filing could be considered made in bad faith within the meaning of section 8 (2) no. 14 of the Trade Mark Act. In this case, the purpose of the filing is not to use the trade mark (as one would be entitled to use the trade mark anyway because of the existing registration) but to benefit from the non-applicability of the requirement of use. Accordingly, there is no intention to use the new filing. The filing is made for illegitimate purposes and thus in bad faith. In this case, the newly filed trade mark may not be registered or be cancelled at a later date.
It can be difficult to distinguish between a new filing made to adjust the list of goods and services to new developments and a new filling made only to avoid the evidence of use. For example, we believe that the new filing of a trade mark in order to maintain protection for new goods in the metaverse (see previous article) is basically unproblematic. However, if the goods or services already protected are also included in the new filing and this gives rise to a new grace period for non-use even for protected goods and services, this part of the filing may turn out to be problematic.
Further information on trade mark protection is available on our website.