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 250 euros must be paid within this period too. It includes the opposition on the basis of one opposing sign. If an opposition is based on several earlier opposing signs of the same proprietor, an additional fee of 50 euros must be paid for each additional opposing sign. If the proprietors are not identical, this means that there are several oppositions, and 250 euros must be paid for each. 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.
Furthermore, the opposition may also be based on a protected geographical indication and a protected designation of origin, provided that the application for the trade mark in respect of which the opposition has been lodged was filed on or after 14 January 2019.
- Form W 7202: opposition against the registration of a trade mark (in German)
- Form W 7202.1: Annex to opposition based on registered signs (in German)
- Form W 7202.2: Annex to opposition based on non-registered signs (in German)
- Information sheet 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
The proprietor of a trade mark can surrender the trade mark anytime. A trade mark may also be cancelled because of invalidity or revocation.
Cancellation because of surrender
The proprietor of a trade mark can surrender the trade mark anytime.
- Form W 7437: request for full/partial cancellation because of surrender (in German)
Declaration of invalidity and cancellation due to absolute grounds for refusal
The registration of a trade mark will be revoked and cancelled upon request due to 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 is 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 application for a declaration of invalidity must be filed in writing. A fee of 400 euros must be paid within three months from filing the application.
In the case of a request pursuant to Section 50(2), third sentence, of the Trade Mark Act in conjunction with Section 8(2) nos. 1-3 of the Trade Mark Act, this request must be filed within ten years after the trade mark was registered.
Furthermore, Section 8(2) nos. 1-3 of the Trade Mark Act does not apply to invalidity proceedings pursuant to Section 50(2), second sentence, of the Trade Mark Act if, up to the time of the application for a declaration of invalidity, the trade mark has become established in the relevant trade circles following the use which has been made of it in respect of the goods and services for which it was registered.
The DPMA informs the trade mark proprietor about the application for a declaration of invalidity. If the proprietor does not object within two months, the trade mark will be cancelled; if an objection to the cancellation is made, invalidity proceedings will be conducted before 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.
- Form W 7442: application for full/partial declaration of invalidity and 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)
Declaration of invalidity and cancellation due to the existence of conflicting earlier rights
Trade mark proprietors may bring an action for invalidity on the basis of the existence of earlier rights. Invalidity proceedings are conducted before the ordinary courts. From May 2020, invalidity proceedings based on conflicting earlier rights will also be available as an alternative at the DPMA.
Revocation and cancellation
The registration of a trade mark is revoked and cancelled upon request if the trade mark has not been used within a period of five years after registration.
You can either lodge an action for revocation and cancellation before the ordinary courts or file an application for revocation with the DPMA. The fee for this is 100 euros. The office informs the trade mark proprietor about the application for revocation. If the proprietor does not object within two months, the trade mark will be revoked and cancelled; if an objection is made, the person having filed the application can further pursue revocation and cancellation by bringing an action before the civil courts. In this case, the DPMA does not conduct any revocation proceedings. From May 2020, the continuation of the revocation proceedings before the DPMA will also be available as an alternative option. Then a further 300 euros will have to be paid for pursuing the application for revocation further.
- 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: 22/08/19