New since January 2019: Registration of licences and register entries of declarations of willingness to license or sell/transfer
Trade mark licences are now entered in the register upon request of the trade mark proprietor (licensor) or the licensee if the respective other party consents to it. The entry includes information on the licensee, the type of licence and limitations, if any. A fee is charged for the registration, amendment and cancellation of a licence in the register. Furthermore, it is now possible to have licences for trade marks for which protection was extended to Germany recorded in the international register.
The holder of an exclusive licence may himself/herself bring an action before the ordinary courts for trade mark infringement if the trade mark proprietor does not himself/herself bring an action within a reasonable period of time after being formally requested to do so.
Information on licences that can be found in the register
Pursuant to section 30 (6) of the Trade Mark Act in conjunction with section 42a of the Trade Mark Ordinance, the following information is entered in the register:
- licensee (name, legal form, town and postal code)
- type of licence (exclusive or simple licence)
- sub-licence, if any
- partial licence/limitations:
- licence limited as to scope (only for some of the goods/services)
- geographically limited licence (only for part of Germany)
- temporary licence or licence for an indefinite period
A fee of 50 euros is charged for registration, amendment and cancellation.
Licences – tips
- Please use the new forms for registration, amendment, cancellation of a licence (W7633 - W7635) – Please do not submit any licensing agreements!
- Changes of name/address of the licensee will be handled free of charge.
- If the licensee applies for cancellation of the licence from the trade mark register, the consent of the licensor is not required.
- Licensing requests concerning international registrations must be submitted directly to WIPO!
Register entry of willingness to license and sell/transfer
Furthermore, trade mark applicants and proprietors can now have a non-binding declaration of their willingness to license or sell/transfer their trade mark included in the register (compare section 42c of the Trade Mark Ordinance). A request is required for this purpose, which is free of charge. The declarations of willingness may be withdrawn at any time.
A declaration of willingness to license is inadmissible:
- if a registered exclusive, unlimited licence exists
- or if a request for such registration has already been filed
How to make a declaration of willingness to license and sell/transfer?
- At the time of filing the trade mark application:
- electronically using the new data fields for declarations of willingness to license or sell/transfer in DPMAdirektWeb and DPMAdirektPro
- the application form W 7005 (only in German) also contains new fields for declarations of willingness to license or sell/transfer (see item 13)
- After filing the trade mark application:
- using the new request form for registration/amendment/cancellation of a declaration of willingness to license or sell/transfer W 7636 (only in German)
Initial experience gained
The declarations of willingness to license or sell/transfer have met with great response. Declarations of willingness to license or sell/transfer have already been entered in almost 20,000 files at the DPMA.
In contrast, not so many IP right holders have seized the opportunity of registration of a trade mark licence. Currently, licences are recorded in 71 files.
Last updated: 20 October 2020