Content

Notice No. 1/2023

of the President of the German Patent and Trade Mark Office of 2 August 2023 concerning the change in practice in case of insolvency of one of the parties to adversarial inter partes proceedings

By decision of 31 January 2019, the Federal Court of Justice ruled that the opening of domestic insolvency proceedings or foreign insolvency proceedings eligible for recognition in accordance with section 343 of the German Insolvency Code (Insolvenzordnung) concerning the assets of a party filing a request to the DPMA for cancellation of a trade mark due to absolute grounds for refusal leads to the interruption of the proceedings, if the party requesting cancellation and the proprietor of the trade mark are competitors.

Due to this ruling, Notice No. 20/08 of the President of the German Patent and Trade Mark Office, which states that section 240 of the German Code of Civil Procedure (Zivilprozessordnung) is generally not applicable to IP procedures before the DPMA and, therefore, proceedings and time limits are not interrupted, is repealed with regard to adversarial inter partes proceedings (zweiseitige, kontradiktorische Verfahren) before the DPMA.

The DPMA assumes that section 240 of the German Code of Civil Procedure is applicable to adversarial inter partes proceedings before the DPMA accordingly and that the opening of domestic insolvency proceedings or foreign insolvency proceedings eligible for recognition concerning the assets of one of the parties leads to an interruption of proceedings.

Where insolvency proceedings concerning the assets of the party filing the request have been opened, in revocation and invalidity proceedings under trade mark law due to absolute grounds for refusal, invalidity proceedings under design law in case of claimed absolute grounds for invalidity, opposition proceedings under patent law as well as cancellation proceedings under utility model law (in the two latter proceedings with the exception of cases where the request is based on usurpation as grounds for revocation), a condition for the application of section 240 of the German Code of Civil Procedure is for the party filing the request to be a competitor of the IP right holder.

The President of the German Patent and Trade Mark Office
Eva Schewior

3610 – 4.3.2 – Bd. III/9

Last updated: 25 August 2023