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Changes in the revocation and invalidity proceedings as from 1 May 2020

In detail:

1. Invalidity of a trade mark due to absolute grounds for refusal (section 50 of the Trade Mark Act¹)

The invalidity proceedings conducted due to absolute grounds for refusal will remain substantially unchanged by the amendments applicable as from May 2020:

Upon request, the registration of a trade mark is declared invalid and cancelled by the German Patent and Trade Mark Office due to absolute grounds for refusal if the trade mark has been registered contrary to section 3, section 7 or section 8 of the Trade Mark Act, that means if it was not eligible for trade mark protection, if the applicant was not capable of being the proprietor of a trade mark or if there were absolute grounds for refusal and such ground for refusal continues to exist at the time the decision on invalidity is made. Further grounds for invalidity concerning collective marks are specified in sections 106, 103 of the Trade Mark Act; further grounds for invalidity concerning certification marks are specified in sections 106h, 106e of the Trade Mark Act.

The application for a declaration of invalidity due to absolute grounds for refusal can be filed by any natural or legal person as well as any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers that can be a party to the proceedings (section 53 (2) of the Trade Mark Act).

The application for a declaration of invalidity must be filed in writing. In addition, section 53 (1) of the Trade Mark Act now provides that the facts and evidence in support of the statement of grounds must be indicated. For this reason, the application form concerning the invalidity proceedings due to absolute grounds for refusal (W 7442) has been changed accordingly. Please use the latest form!

A fee of 400 euros must be paid within three months from filing the application. If the registration of the trade mark has been applied for on or after 14 January 2019, the grounds for refusal under section 8 (2) nos. 9 to 12 of the Trade Mark Act (geographical indications and designations of origin, traditional terms for wine, traditional specialities, plant variety denominations) added by the Trade Mark Law Modernisation Act can also be referred to.

The adversarial proceedings are conducted only if the proprietor of the registered mark objects to the declaration of invalidity and cancellation within two months of the receipt of the application for a declaration of invalidity (section 53 (5) of the Trade Mark Act). Otherwise, the trade mark is declared invalid and cancelled from the Register.

If the application for a declaration of invalidity due to absolute grounds for refusal is granted, the effects of the trade mark are deemed not to have taken place, as from the outset, to the extent that the trade mark has been declared invalid (section 52 (2) of the Trade Mark Act).

The provisions set out above apply accordingly to the part of international registrations of marks that extends to Germany, section 115 of the Trade Mark Act.

2. Invalidity of a trade mark due to conflicting earlier rights (section 51 of the Trade Mark Act)

Starting from 1 May 2020, you also have the option to file an application for a declaration of invalidity and cancellation of a registered mark – or for invalidation of the part of an international registration that extends to Germany – due to any conflicting earlier right within the meaning of sections 9 to 13 of the Trade Mark Act. These proceedings could so far be conducted only before the ordinary courts.

The application for a declaration of invalidity because of earlier rights can be filed by the holder of the rights stipulated in sections 9 to 13 of the Trade Mark Act and by persons entitled to invoke rights resulting from a protected geographical indication or a protected designation of origin (section 53 (3) of the Trade Mark Act).

Such application can also be based on several earlier rights of the same holder (section 51 (1) of the Trade Mark Act). Section 51 (2) to (4) of the Trade Mark Act contains special provisions that exclude the declaration of invalidity because of conflicting earlier rights in certain cases (e.g. in case of acquiescence of the later trade mark or non-use of the earlier trade mark).

The application for a declaration of invalidity must be filed in writing and the facts and evidence in support of the statement of grounds must be indicated (section 53 (1) sentences 1 and 2 of the Trade Mark Act). Please use the relevant form (W 7642 and its Annexes W 7642.1 and/or W7642.2)!

A fee of 400 euros must be paid within three months from filing the application. If the application for a declaration of invalidity is based on more than one earlier right, an additional fee of 100 euros must be paid with respect to each additional right. The adversarial proceedings are conducted only if the proprietor of the registered mark objects to the declaration of invalidity and cancellation within two months of the receipt of the application for a declaration of invalidity (section 53 (5) of the Trade Mark Act). Otherwise, the trade mark is declared invalid and cancelled.

If the application for a declaration of invalidity because of conflicting earlier rights is granted, the effects of the trade mark are deemed not to have taken place, as from the outset, to the extent that the trade mark has been declared invalid (section 52 (2) of the Trade Mark Act).

The provisions set out above apply accordingly to the part of international registrations of marks that extends to Germany, section 115 of the Trade Mark Act.

3. Revocation of a trade mark (section 49 of the Trade Mark Act)

In the case of an application filed as from 1 May 2020, the revocation proceedings can be conducted fully at the German Patent and Trade Mark Office. The person filing the application has so far been required to pursue his application before the ordinary courts if the trade mark proprietor has objected to the application for revocation and cancellation of his trade mark.

Upon request, the registration of a trade mark is revoked and cancelled if it has not been used within a period of five years, if it is of such a nature now, unlike at the time of its registration, as to deceive the public or if the proprietor ceases to meet the requirements of section 7 of the Trade Mark Act. Further grounds for revocation concerning collective marks are specified in section 105 of the Trade Mark Act; further grounds for revocation concerning certification marks are specified in section 106g of the Trade Mark Act. Revocation proceedings concerning collective or certification marks can be conducted only at the German Patent and Trade Mark Office.

The application for revocation can be filed by any natural or legal person and by any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers that can be a party to the proceedings (section 53 (2) of the Trade Mark Act).

The application for revocation must be filed in writing. In addition, section 53 (1) of the Trade Mark Act now provides that the facts and evidence in support of the statement of grounds must be indicated. For this reason, the application form concerning the revocation proceedings (W 7440) has been changed accordingly. Please use the latest form!

A fee of 100 euros must be paid within three months from filing the application. If the proprietor of the registered mark objects to the application for revocation in due time, i.e. within two months of the receipt thereof, the adversarial proceedings will, from now on, be conducted at the German Patent and Trade Mark Office provided that the person filing the request pays a fee of 300 euros for pursuing the application further.

If the proprietor of the registered mark does not object to the revocation and cancellation of his trade mark, this trade mark will – as before – be revoked and cancelled (section 53 (5) of the Trade Mark Act).

If the application for revocation is granted, the effects of the trade mark are deemed not to have taken place, as from the date of the application – or, on request and where appropriate, even earlier – to the extent that the trade mark has been revoked (section 52 (1) of the Trade Mark Act).

The provisions set out above apply accordingly to the part of international registrations of marks that extends to Germany, section 115 of the Trade Mark Act.

4. Links between proceedings before the German Patent and Trade Mark Office and an action before the ordinary courts

Both the revocation of a trade mark (other than a collective or certification mark) and its invalidity due to conflicting earlier rights can also be asserted by way of action before the ordinary courts (section 55 (1) sentence 1 of the Trade Mark Act).

An action is inadmissible if a request concerning the same matter disputed between the parties has been made to the German Patent and Trade Mark Office (section 55 (1) sentence 2 no. 2 of the Trade Mark Act); conversely, an application for a declaration of invalidity due to conflicting earlier rights or for revocation with the German Patent and Trade Mark Office is inadmissible if an action concerning the same matter in dispute is pending in the ordinary courts between the parties (section 53 (1) sentence 5 of the Trade Mark Act).

For this reason, an entry is made in the Register of the German Patent and Trade Mark Office if, as from 1 May 2020, an application for revocation or for a declaration of invalidity of a registered mark has been filed with the German Patent and Trade Mark Office or a relevant action has been brought to an ordinary court (section 25 no. 24 of the Trade Mark Ordinance).

5. Additional changes in the revocation and invalidity proceedings

• Option to intervene in proceedings, section 54 of the Trade Mark Act

A person against whom proceedings are pending for trade mark infringement or who has been requested to stop an alleged infringement of a trade mark can intervene in revocation or invalidity proceedings against the same trade mark within the time limit specified in section 54 (1) sentence 2 of the Trade Mark Act as from 1 May 2020, provided that a final and non-appealable decision has not been made yet.
Such intervention in the proceedings, just as an application for revocation or for pursuing the application further and an application for a declaration of invalidity, is subject to a fee and can be made even at the appeal stage.

• Hearings, section 60 (2) sentence 4 of the Trade Mark Act

As from 14 January 2019, hearings are held in revocation and invalidity proceedings if they are requested by a party to the proceedings or deemed expedient by the German Patent and Trade Mark Office.

• Security, section 53 (1) sentence 3 of the Trade Mark Act in conjunction with section 81 (6) of the Patent Act

As from 1 May 2020, persons filing an application for revocation or for a declaration of invalidity that do not have their habitual residence in a Member State of the European Union or in a Contracting State to the Agreement on the European Economic Area must, at the request of the trade mark proprietor, provide security for the costs of the proceedings, with the amount of security to be determined by the German Patent and Trade Mark Office.

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¹ All citations from the Trade Mark Act refer to the version applicable as from 1 May 2020.

Last updated: 21 March 2024