Examination, Registration and Renewal
The road to your trade mark registration
First, the Trade Mark Sections of the German Patent and Trade Mark Office make sure that all required data, for example, applicant, trade mark and the list of goods and services have been received. However, processing of the trade mark application only starts after full payment of fee for the application.
Then, the Trade Mark Sections examine whether the trade mark applied for could be excluded from registration because of absolute grounds for refusal. In particular, all words that merely describe the goods or services (for example, “apples” for fruit) are regarded as a criterion for exclusion, based on which a trade mark cannot be registered.
There is no right to registration in these cases, even if the same or a similar trade mark has already been registered in the Trade Mark Register at an earlier date. The decision in each individual case is taken on the basis of the Trade Mark Act (Markengesetz) alone.
If the application complies with the legal requirements and if there are no grounds for refusal, the DPMA enters the trade mark in the Register. The registration is published in the electronic Trade Mark Journal (Markenblatt). The proprietor receives a certificate of registration.
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... that the office does not check during the application procedure whether earlier trade marks or rights to signs of third parties conflict with the registration. The trade mark might have to be cancelled in the case of opposition or invalidity proceedings based on earlier rights.
Duration of protection and renewal of a trade mark
The duration of protection of a trade mark registered on or after 14 January 2019 starts on the day following the filing of the trade mark application and, as a rule, ends on the expiry of the day which corresponds in designation or number to the filing day (e.g. application of 17 January 2019 – end of protection on 17 January 2029). If the trade mark was registered before 14 January 2019, the ten-year duration of protection ends after the expiry of the month in which the filing date falls (e.g. application of 5 July 2017 – end of protection on 31 July 2027). You can renew trade mark protection for further periods of ten years. The renewal will take effect on the day following the expiry of the duration of protection. For an overall renewal of your trade mark it is sufficient to pay the renewal fees. If the trade mark is to be renewed only for some of the registered goods and services, please use the form W 7412 Antrag auf Verlängerung einer Marke (Request for the renewal of a trade mark [in German]).
The most important links concerning trade mark applications
The renewal fee for the following term of protection falls due six months before the expiry of the duration of protection and should be paid without surcharge within a six-month period. If the renewal fee is paid after the expiry of the duration of protection, a surcharge must be paid in addition to the renewal fee within a six-month grace period. If the duration of protection of the trade mark is to be extended for more than three classes, additional class fees will be charged. The DPMA will notify the trade mark proprietor eight months in advance of the expiry of the duration of protection, but will not accept liability in the event of failure to do so.
Please also note: The renewal fees may be paid six months before the due date at the earliest. If the renewal fees are not paid or if the payment is insufficient, the trade mark right will lapse.
Transitional provision: For registered trade marks for which duration of protection ends on 31 January 2020, the provisions on time limits and due dates of the old version of the Patent Costs Act shall apply (Sec. 159 Trade Mark Act [Markengesetz]).
Last updated: 17/10/19