Opposition and Cancellation
Opposition to a registration
After the publication of the newly registered trade mark, the proprietors of earlier trade marks can file a notice of opposition against the registration. Opposition can generally be raised if the proprietor fears that there is a risk of confusion with their own trade mark applied for or registered. This also applies to a European Union trade mark or an internationally registered mark (international registration). Notice of opposition must be filed in writing within three months after the publication of the registration. The opposition fee of 120 euros must be paid within this period too. During opposition proceedings a decision is taken on the opposition. Possibly, the newly registered trade mark will be cancelled.
Opposition can also be raised on the basis of earlier rights to signs acquired by use (“trade marks acquired through use” and commercial designations). Furthermore, it is possible to invoke rights arising from the enlarged protection of trade marks which are well known in Germany (Sec. 42(2) Trade Mark Act [Markengesetz]). However, this provision only applies to oppositions raised against the registration of trade marks applied for on or after 1 October 2009.
- Form W 7202: opposition against the registration of a trade mark (in German)
- Notice: information on oppositions based on non-registered rights to signs and on the special protection of a well-known trade mark (in German)
To enable the DPMA to make a speedy decision on the opposition
In order to decide as quickly as possible whether a challenged trade mark will be cancelled (in full or in part), the DPMA works towards speedy opposition proceedings. The legally prescribed minimum periods of one to two months are therefore granted for making statements and extending time limits. Further extensions of time limits will only be granted with the consent of the opponent. As a rule, the concluding statement should be made in the second written statement submitted.
Why a trade mark can be cancelled
Cancellation because of surrender
As the proprietor of a trade mark you can surrender the trade mark anytime. A trade mark may also be cancelled because of invalidity or revocation.
- Form W 7437: request for full/partial cancellation because of surrender (in German)
Cancellation because of invalidity
The registration of a trade mark will be cancelled upon request due to invalidity because of absolute grounds for refusal, if it had been registered contrary to Section 3, 7 or 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. The request for cancellation must be filed in writing within ten years after the registration of the trade mark. A fee of 300 euros must be paid within three months from filing the request.
The DPMA informs the trade mark proprietor about the request for cancellation. If the proprietor does not object within two months, the trade mark will be cancelled; if an objection to the cancellation is made, cancellation proceedings are conducted by the DPMA.
If the request for cancellation is granted, the registration of the trade mark is declared invalid because of absolute grounds for refusal under Section 50 of the Trade Mark Act and cancelled from the Register. Trade mark proprietors can lodge an action for cancellation based on the existence of earlier rights. Cancellation proceedings are conducted before the ordinary courts.
- Form W 7442: request for full/partial cancellation of a trade mark or the full/partial withdrawal of protection of an international registration of a mark because of absolute grounds for refusal (in German)
Cancellation because of revocation
The registration of a trade mark is cancelled upon a request because of revocation if the trade mark has not been used within a period of five years after registration.
You can either lodge an action for cancellation for revocation before the ordinary courts or file a request for cancellation with the DPMA. The office informs the trade mark proprietor about the request for cancellation. If the proprietor does not object within two months, the trade mark will be cancelled; if an objection to the cancellation is made, the person having filed the request can further pursue cancellation by bringing an action before the courts. In this case, the DPMA does not conduct cancellation proceedings.
- Form W 7440: request for full/partial cancellation of a trade mark or the full/partial withdrawal of protection of an international registration of a mark because of absolute grounds for refusal due to revocation (in German)
Last updated: 23/10/18