2019-01-14

Changes to German trademark law

This Monday, 14 January 2019, marks an important day in the history of the German Trademark Law (“MarkenG”) due to the entering into force of the German Trademark Modernisation Act (“MaMoG”). In the name of legal harmonization within the EU, the latter will entail significant changes in an attempt to strengthen the rights of trademark owners.

We have outlined below the most important changes:

First, the most categorical change is precisely that – the introduction of a new category of trademarks. Known as a guarantee or certification mark, this new category acts like a seal of excellence whereby a trademark owner guarantees to the general public that the product or service provided has a certain characteristic or quality such as the manner of manufacture. As with all trademarks, an element of distinction is necessary: the mark must allow the covered products to stand out from products for which there is no guarantee. Likewise, the quality or characteristic being guaranteed must be clear from first sight. From a procedural point of view, the trademark must be designated as a guarantee or certification mark at the time of registration. This category could hence be of particular interest to businesses where the added value is found in a specific characteristic of the product or manufacturing method.

Secondly, the new law introduces the possibility to register a trademark based solely on a sign that is clear and definable, without necessarily requiring a graphical representation. This opens the door to new types of trademarks such as holograms, sound and multimedia brands. However, since WIPO still requires a two-dimensional graphic, this advancement will not be matched on the international stage for the time being.

Last but not least, the new German trademark law foresees various adjustments regarding opposition proceedings. To name only the most significant ones, as of 14 January 2019, the owner of several older rights can assert these rights by filing a single opposition. Moreover, in the future it will be possible to introduce an opposition based on protected geographical indications and indications of origin. Following the European approach, the new system will provide for a cooling-off period of two months which can be granted at the joined request of both parties and is extendable. However, the opposition fee will be adjusted to this new system.

In view of these numerous changes, please do not hesitate to contact us for further information. We are looking forward to hearing from you.

Marie-Christine SIMON