New grounds of opposition introduced

On May 28 2009 Parliament amended various provisions of the German Trademark Act. The amendments do not change the substantive law, but will have a significant impact on trademark prosecution and the way in which trademark owners enforce their rights. The new provisions will come into effect later this summer.
Currently, an opposition may be based only on an earlier registration or application for a German, Community or international trademark. Moreover, it is possible to oppose an application:
  • based on a well-known trademark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property; and
  • where the agent or representative of the trademark owner has applied for the registration of the mark in its own name without the owner's authorization (Article 6septies of the Paris Convention).
The last two grounds of opposition are rarely used.

Under the amendments, it will be possible to oppose an application based on rights in:
  • a company name or work title; or
  • an unregistered trademark which has acquired distinctive character through substantial use.
Currently, such rights (as well as rights in well-known marks) may be enforced only in regular court proceedings. Moreover, the owner of the earlier mark can base its opposition only on the fact that the mark applied for is identical or similar to the earlier mark, and covers identical or similar goods and services. Under the new act, the owner of the earlier mark will also be able to argue that the mark applied for takes unfair advantage of, or is detrimental to, the reputation of its mark.
With regard to remedies, it will be possible to speed up the proceedings by filing an appeal to the Federal Patent Court immediately. Therefore, the parties will not necessarily have to go down the route of a reconsideration appeal with a legally trained senior examiner.
Some practitioners believe that these amendments will strengthen the position of trademark owners, as the German Trademark Act is now in line with the Community Trademark Regulation (40/94). However, the current act is based on the view that opposition proceedings should be as simple as possible. Hence, some may argue that there were good reasons to reserve the more complex cases (where the opposition is based on a company name or a non-registered or well-known mark) for the courts.
Nevertheless, the German legislature was of the opinion that:
However, German examiners are not trained to deal with these new grounds of opposition. Moreover, they now have to hear evidence as to whether a mark is well known or has acquired distinctiveness, which may delay proceedings considerably. Furthermore, it is questionable whether the quality of their decisions in cases involving the new grounds of opposition will be the same as that of court decisions. Trademark owners may thus decide to bring court proceedings in more complex cases.

It remains to be seen whether the amendments will strengthen the position of trademark owners as expected. 
Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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