Amendments concerning the duration of protection and renewal of trade marks
How to calculate the duration of protection of trade marks
The duration of protection of a trade mark registered on or after 14 January 2019 ends after ten years on the expiry of the day which corresponds to the filing day (e.g. application of 17 January 2019 – end of protection on 17 January 2029). The calculation of the duration of protection of a national trade mark was thus brought into line with the European Union trade mark.
The application is filed on 17 January 2019. The DPMA will issue a notification on the expiry of the duration of protection in May 2028. The renewal fee will be due on 17 July 2028. The end of protection of the trade mark is 17 January 2029; this is when the payment period without a surcharge ends. On 18 January 2029, the new period of protection starts. Until 17 July 2029, the renewal fee with a surcharge may still be paid. If the fee is not paid, the registration of the trade mark will be cancelled upon expiry of the duration of protection.
Example for the new way of calculating the duration of protection
For trade mark registrations up to 13 January 2019, the duration of protection ends, as before, after ten years at the end of the month (section 159 (1) of the Trade Mark Act in conjunction with section 47 (1) of the Trade Mark Act, old version).
Payment of the renewal fee
The request for renewal must be filed within a period of six months before the expiry of the duration of protection. The renewal fees for the following period of protection are due as early as six months before the expiry of the duration of protection. If the trade mark is to be renewed in full, no written request for renewal is required: The payment is deemed to be a request by the trade mark proprietor.
If the renewal fee is not paid until after expiry of the duration of protection, a surcharge must be paid in addition to the renewal fee within the six-month grace period. The same applies if further class fees have to be paid.
In case of partial renewals, necessary partial cancellations pursuant to section 47 of the Trade Mark Act can only be carried out after expiry of the duration of protection; the conclusion of the renewal procedures may be delayed accordingly. However, declarations of partial surrender pursuant to section 48 of the Trade Mark Act are carried out immediately.
SEPA Direct Debit Scheme
In the case of valid multiple or permanent mandates, the DPMA will collect the renewal fee and, if applicable, class fees after the due date. The trade mark is automatically renewed for all classes. Please revoke or change your mandate or the specification of the purpose of use in good time before the due date if you do not wish full renewal of the trade mark.
Initial experience and effects
The amendments concerning the duration of protection and renewal are of great practical importance in view of more than 820,000 existing trade marks and almost 40,000 renewals in 2019. They have led to numerous questions, particularly with regard to the transitional provisions of section 159 of the Trade Mark Act.
Last updated: 20 October 2020