Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 1 of 62 Übersetzung durch Brian Duffett und Neil Mu ssett. Übersetzung überarbeitet durch den 
Sprachendienst des Deutschen Patent - und Markenamtes.  
Translation provided by Brian Duffett und Ne il Mussett. Translation revised by the Language 
Service of the German Pat ent and Trade Mark Office.  
Stand: Die Übersetzung berücksichtigt die Änderung(en) des Gesetzes durch Artikel 5 des 
Gesetzes vom 1 0. August  2021 (BGBl. I S.  3490 ). 
Version information: The translation includes the amendment(s) to the Act by Article 5 of the  
Act of 10 August  2021 (Federal Law Gazette I p. 3490 ). 
 
Zur Nutzung dieser Übersetzung lesen Sie bitte den Hinweis auf www.gesetze -im-internet.de 
unter  "Translations" . 
 
For con ditions governing use of this translation, please see the information provided at 
www.gesetze -im-internet.de under  "Translations" . 
 
 
Act on the Protection of Trade Marks and oth er Signs  
Trade Mark Act  
Act on the Protection of Trade Marks and other Signs of 25 October 1994 (Federal Law 
Gazette [BGBl.]) Part I p. 3082, as last amended by Art icle 5 of the Act of 10 August 2021 , 
Federal Law Gazette (Bundesgesetzblatt) Part I p. 3490  
Part 1  
Scope  
Section 1  
Protected trade marks and other signs  
The following shall be protected in accordance with this Act:  
1. trade marks,  
2. commercial designations,  
3. indications of geographical origin.  
Section 2  
Application of other provisions  
The prot ection of trade marks, commercial designations and indications of geographical 
origin in accordance with this Act shall not exclude the application of other provisions on the 
protection of such signs.  
Part 2  
Preconditions, scope and restrictions of the pro tection of trade marks and 
commercial designations, transfer and licence  
Chapter 1  
Trade marks and commercial designations, precedence and seniority  
Section 3  
Signs eligible for protection as trade marks  
(1) All signs, particularly words including personal  names, designs, letters, numerals, 
sounds, three -dimensional designs, the shape of goods or of their packaging as well as other 
wrapping, including colours and colour combinations, may be protected as trade marks if 
they are capable of distinguishing the goods or services of one undertaking from those of 
other undertakings.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 2 of 62 (2) Signs consisting exclusively of shapes or other characteristics  
1. which result from the nature of the goods themselves;  
2. which are necessary to obtain a technical result; or  
3. which give substantial value to the goods  
shall not be capable of being protected as trade marks.  
Section 4  
Accrual of trade mark protection  
The following shall give rise to trade mark protection:  
1. the entry of a sign as a trade mark in the Register kept by the German Patent 
and Trade Mark Office;  
2. the use of a sign in trade in so far as the sign has acquired public recognition as 
a trade mark within the affected trade circles; or  
3. a trade mark constituting a well -known mark within the meaning of Artic le 6bis 
of the Paris Convention for the Protection of Industrial Property (Paris Convention).  
Section 5  
Commercial designations  
(1) Company signs and titles of works shall enjoy protection as commercial designations.  
(2) Company signs are signs used in tra de as a name, company name or special designation 
of a business operation or an enterprise. Business signs and other signs intended to 
distinguish the business operation from other business operations which are regarded as 
signs of the business operation w ithin affected trade circles shall be deemed equivalent to 
the special designation of a business operation.  
(3) Titles of works are the names or special designations of printed publications, cinematic 
works, music works, stage works or other comparable wor ks. 
Section 6  
Precedence and seniority  
(1) If, in the case of a concurrence of rights within the meaning of sections 4, 5 and 13, their 
seniority is relevant in accordance with this Act for the purposes of establishing which rights 
take precedence, seniori ty shall be determined in accordance with subsections (2) and (3).  
(2) The date of filing (section 33 (1)) or, if priority is claimed in accordance with section 34 or 
in accordance with section 35, the priority date shall be relevant for the purposes of 
establishing the seniority of trade marks that have been filed or registered.  
(3) The point in time when the right was acquired shall be relevant for the purposes of 
establishing the seniority of rights within the meaning of section 4 nos. 2 and 3 and sectio ns 
5 and 13.  
(4) If rights in accordance with subsections (2) and (3) have the same date as their seniority, 
the rights shall have equal ranking, and shall not give rise to any rights against one another.  
Chapter 2  
Prerequisites for the protection of trade  marks by means of registration  
Section 7  
Proprietorship  
Proprietors of trade marks that have been filed or registered may be the following:  
1. natural persons,  
2. legal persons, or  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 3 of 62 3. partnerships in so far as they are equipped with the capacity to acquir e rights 
and enter into liabilities.  
Section 8  
Absolute grounds for refusal  
(1) Signs eligible for protection as a trade mark within the meaning of section 3 which are not 
capable of being represented on the Register in a manner which enables the competent  
authorities and the public to determine the clear and precise subject matter of protection  
shall be excluded from registration.  
(2) The following trade marks shall not be registered  
1. which are devoid of any distinctive character for the goods or service s; 
2. which consist exclusively of signs or indications which may serve, in trade, to 
designate the kind, quality, quantity, intended purpose, value, geographical origin or the 
time of production of the goods or of rendering of the services, or other chara cteristics of 
the goods or services;  
3. which consist exclusively of signs or indications which have become customary 
in the current language or in the bona fide and established practices of the trade to 
designate the goods or services;  
4. which are of suc h a nature as to deceive the public, for instance as to the 
nature, quality or geographical origin of the goods or services;  
5. which are contrary to public policy or to accepted principles of morality;  
6. which contain state coats of arms, state flags or other state symbols or coats of 
arms of a domestic locality or of a domestic municipal or other local authority association;  
7. which contain official signs or hallmarks indicating control or warranty;  
8. which contain coats of arms, flags or other signs, seals or designations of 
international intergovernmental organisations;  
9. which are excluded from registration, pursuant to German law, to European 
Union legislation or to international agreements to which the European Union or the 
Federal Republic of Ger many is party, providing for protection of designations of origin 
and geographical indications;  
10. which are excluded from registration pursuant to European Union legislation or 
international agreements to which the European Union is party, providing for protection of 
traditional terms for wine ; 
11. which are excluded from registration pursuant to European Union legislation or 
international agreements to which the European Union is party, providing for protection of 
traditional specialities guaranteed;  
12. which consist of, or reproduce in their essential elements, an earlier plant 
variety denomination registered in accordance with German law or European Union 
legislation , or international agreements to which the European Union or the Federal 
Republic of Ge rmany  is party, providing for protection of plant variety rights, and which 
are in respect of plant varieties of the same or closely related species ; 
13. the use of which can evidently be prohibited in the public interest in accordance 
with other provision s, or 
14. which have been applied for in bad faith.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 4 of 62 (3) Subsection (2) nos. 1, 2 and 3 shall not apply if, prior to the point in time of the decision 
on registration, the trade mark has become established in the affected trade circles in 
consequence of the  use made of it with respect to the goods or services for which the 
application was filed.  
(4) Subsection (2) nos. 6, 7 and 8 shall also apply if the trade mark contains the imitation of a 
sign listed there. Subsection (2) nos. 6, 7 and 8 shall not apply i f the applicant is authorised 
to include in the trade mark one of the signs listed there, even if it can be confused with one 
of the other signs listed there. Subsection (2) no. 7 shall furthermore not apply if the goods or 
services for which the trade mar k application was filed are neither identical with nor similar to 
those for which the official sign or hallmark indicating control or warranty has been 
introduced. Subsection (2) no. 8 shall further not apply if the trade mark applied for is not 
suitable t o create among the public the incorrect impression of a connection with the 
international intergovernmental organisation.  
Section 9  
Trade marks that have been filed or registered as relative grounds for refusal  
(1) The registration of a trade mark may be c ancelled  
1. if it is identical to a n earlier  trade mark applied for or registered and the goods 
or services for which it was registered are identical with the goods or services for which 
the earlier trade mark was applied for  or registered;  
2. if a likelih ood of confusion exists, including the likelihood of association between 
the trade marks, for the public because of its identity with or similarity to a n earlier  trade 
mark applied for or registered and owing to the identity or similarity of the goods or 
services covered by both trade marks; or  
3. if it is identical with or similar to a n earlier  trade mark applied for or registered if 
the earlier trade mark is a trade mark which has a reputation in Germany and the use of 
the registered trade mark would with out due cause take unfair advantage of, or be 
detrimental to, the distinctive character or the repute of the trade mark which has a 
reputation.  
(2) Applications for trade marks shall only constitute a ground for refusal within the meaning 
of subsection (1)  if they are registered.  
(3) Goods and services shall not be regarded as being similar to each other merely on the 
ground that they appear in the same class under the classification system (Nice 
Classification) provided for in the Geneva Act of 13 May 1977  of the Nice Agreement 
Concerning the International Classification of Goods and Services for the Purposes of the 
Registration of Marks of 15 June 1957 (Federal Law Gazette [BGBl.] 1981 II, p. 358, 359). 
Goods and services shall not be regarded as being dis similar from each other merely on the 
ground that they appear in different classes under the Nice Classification.  
Section 10  
Well-known marks  
(1) A trade mark shall be excluded from registration if it is identical with or similar to an 
earlier trade mark t hat is well known in Germany within the meaning of Article 6bis of the 
Paris Convention and if the further prerequisites of section 9 (1) no. 1, 2 or 3 are met.  
(2) Subsection (1) shall not apply if the applicant has been authorised to file an application 
by the proprietor of the well -known mark.  
Section 11  
Trade mark registered for an agent  
The registration of a trade mark may be cancelled if the trade mark was registered without 
the consent of the trade mark proprietor for his agent or representative, unl ess there is a 
reason justifying the action of the agent or representative.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 5 of 62 Section 12  
Earlier trade marks and commercial designations acquired by virtue of use  
The registration of a trade mark may be cancelled if another person has acquired rights to a 
trade mark prior to the date that is relevant for the seniority of the registered trade mark 
within the meaning of section 4 no. 2 or to a commercial designation within the meaning of 
section 5 and these entitle him to prohibit the use of the registered trad e mark in the entire 
territory of the Federal Republic of Germany.  
Section 13  
Other earlier rights  
(1) The registration of a trade mark may be cancelled if another person has acquired another 
right not listed in sections 9 to 12 prior to the date relevant for the seniority of the registered 
trade mark, and this entitles him to prohibit the use of the registered trade mark in the entire 
territory of the Federal Republic of Germany.  
(2) The other rights within the meaning of subsection (1) shall include in pa rticular:  
1. rights to names,  
2. the right of personal portrayal,  
3. copyright,  
4. names of plant varieties,  
5. indications of geographical origin,  
6. other industrial property rights.  
Chapter 3  
Scope of protection, infringements of rights  
Section 14  
Exclu sive right of the proprietor of a trade mark, claim for injunctive relief, 
compensation claim  
(1) The acquisition of trade mark protection in accordance with section 4 shall grant to the 
proprietor of the trade mark an exclusive right.  
(2) A third party sh all be prohibited in trade, with regard to goods or services, without the 
consent of the proprietor of the trade mark, from  
1. using a sign which is identical to the trade mark for goods or services which are 
identical to those for which it enjoys protecti on; 
2. using a sign if the  sign is identical or similar to a trade mark and is used for 
goods or services that are identical or similar to those covered by the trade mark and 
there is a  likelihood of confusion on the part of  the public, including the likel ihood of 
association between the sign  and the trade mark; or  
3. using a sign identical with or similar to the trade mark for goods or services if 
the trade mark is a trade mark which has a reputation in Germany and the use of the sign 
without due cause tak es unfair advantage of, or is detrimental to, the distinctive character 
or the repute of the trade mark which has a reputation.  
Goods and services shall not be regarded as being similar to each other merely on the 
ground that they appear in the same class under  the classification system prescribed in  the 
Nice Classification. Goods and services shall not be regarded as being dissimilar from each 
other merely on the ground that they appear in different classes under the Nice 
Classification.  
(3) If the prerequ isites of subsection (2) are met, it shall in particular be prohibited  
1. to affix the sign to goods or their wrappings or packaging;  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 6 of 62 2. to offer goods under the sign, to put them on the market, or to stock them for 
the above purposes;  
3. to offer or provi de services under the sign;  
4. to import or export goods under the sign;  
5. to use  the sign as a trade name or commercial designation  or part of a trade 
name or commercial designation ; 
6. to use the sign in business papers or in advertising ; 
7. to use the sign in comparative advertising in a manner that is contrary to 
Directive  2006/114/EC  of the European Parliament and of the Council of 12 December 
2006 concerning misleading and comparative advertising  (OJ L 376 of 27 December 
2006, p. 21) . 
(4) Third parti es shall be furthermore prohibited in trade without the authorisation of the 
proprietor of the trade mark  
1. to affix a sign that is identical to the trade mark or a similar sign on wrappings or 
packaging or on means of identification such as labels, tags,  badges or the like,  
2. to offer, put on the market or stock for the listed purposes wrappings, packaging 
or means of identification which bear a sign that is identical to the trade mark or to a 
similar sign, or  
3. to import or export wrappings, packaging or means of identification which bear a 
sign that is identical to the trade mark or to a similar sign  
if there is a risk that the wrappings or packaging are used to wrap or package, or that the 
means of identification are used to identify goods or services  with regard to which third 
parties would be prohibited from using the sign in accordance with subsections (2) and (3).  
(5) Any person who uses a sign contrary to subsections (2) to (4) may, in the event of the 
risk of recurrent infringement, be sued by th e proprietor of the trade mark for injunctive relief. 
This right may also be asserted in the event of the risk of a first -time infringement.  
(6) Any person who performs the act of infringement intentionally or negligently shall be 
obliged to compensate the  proprietor of the trade mark for the damage incurred by the act of 
infringement. When assessing the compensation, consideration may also be given to the 
profit which the infringer has obtained by infringing the right. The claim for compensation 
may also b e calculated on the basis of the amount which the infringer would have been 
required to pay  as equitable remuneration if he had obtained permission to use the trade 
mark.  
(7) If the act of infringement is committed in a business operation by an employee or  agent, 
the claim for injunctive relief and, in so far as the employee or agent acted intentionally or 
negligently, the claim for compensation may also be asserted against the proprietor of the 
business  operation.  
Section 14a  
Goods under Customs Surveillan ce 
(1) The proprietor of a  trade mark or a commercial designation shall be entitled to prevent all 
third parties from bringing goods, in the course of trade, into the territory of the Federal 
Republic of Germany without being released for free circulation there, where such goods, 
including packaging, come from third countries and bear without authorisation a trade mark 
or commercial designation which is identical with the  trade mark or commercial designation 
registered in respect of such goods, or which can not be distinguished in its essential aspects 
from that trade mark or commercial designation.  
(2) The entitlement of the proprietor of the trade mark or commercial designation pursuant to 
subsection (1) shall lapse if, during the proceedings to determine w hether a registered trade Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 7 of 62 mark or commercial designation has been infringed, initiated in accordance with Regulation 
(EU) No  608/2013 of the European Parliament and the Council of 12 June 2013 concerning  
customs enforcement of intellectual property rights and repealing Council Regulation (EC) 
No 1383/2003 (OJ L 181 of 29 June 2013, p. 15), evidence is provided by the declarant or 
the holder of the goods that the proprietor of the  registered trade mark or the commercial 
designation is not entitled to prohibi t the placing of the goods on the market in the country of 
final destination.  
Section 15  
Exclusive right of the proprietor of a commercial designation, claim for injunctive 
relief, compensation claim  
(1) The acquisition of the protection of a commercial de signation shall grant to its proprietor 
an exclusive right.  
(2) Third parties shall be prohibited from using the commercial designation or a similar sign 
in trade, without authorisation, in a manner liable to cause confusion with the protected 
designation.  
(3) If the commercial designation is a commercial designation which has a reputation in 
Germany, third parties shall be furthermore prohibited from using the commercial 
designation or a similar sign in trade if there is no likelihood of confusion within t he meaning 
of subsection (2), in so far as the use of the sign without due cause takes unfair advantage 
of, or is detrimental to, the distinctive character or the repute of the commercial designation.  
(4) Any person who uses a commercial designation or a s imilar sign contrary to subsection 
(2) or subsection (3) may, in the event of the risk of recurrent infringement, be sued by the 
proprietor of the commercial designation for injunctive relief. This right may also be asserted 
in the event of the risk of an infringement.  
(5) Any person intentionally or negligently committing the act of infringement shall be liable to 
the proprietor of the commercial designation for compensation for the damage incurred 
thereby. Section 14 (6) sentences 2 and 3, shall apply acc ordingly.  
(6) Section 14 (7) shall apply accordingly.  
Section 16  
Reproduction of a registered trade mark in reference works  
(1) If the reproduction of a registered trade mark in a dictionary, encyclopaedia or similar 
reference work gives the impression tha t the trade mark constitutes the generic name of the 
goods or services for which the trade mark is registered, the proprietor of the trade mark may 
require from the publisher of the work that the reproduction of the trade mark be 
accompanied by an indicati on that it is a registered trade mark.  
(2) If the work has already been published, the right shall be restricted to the indication in 
accordance with subsection (1) being included in a new edition of the work.  
(3) Subsections (1) and (2) shall apply accord ingly if the reference work is sold in the form of 
an electronic database or if access is provided to an electronic database containing a 
reference work.  
Section 17  
Rights against agents or representatives  
(1) If a trade mark has been filed or registered c ontrary to section 11 for the agent or 
representative of the proprietor of the trade mark without his consent, the proprietor of the 
trade mark shall be entitled to demand from the agent or representative the transfer of the 
right given rise to by the appl ication for or registration of the trade mark.  
(2) If a trade mark has been registered contrary to section 11 for an agent or representative 
of the proprietor of the trade mark, the proprietor may prohibit the use of the trade mark 
within the meaning of se ction 14 by the agent or representative if he has not consented to its 
use. If the agent or representative acts intentionally or negligently, he shall be obliged to 
compensate the proprietor of the trade mark for the damage incurred by the act of 
infringem ent. Section 14 (7) shall apply accordingly.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 8 of 62 (3) The subsections (1) and (2) shall not apply if there are reasons justifying the action of the 
agent or representative.  
Section 18  
Destruction and recall rights  
(1) The proprietor of a trade mark or of a comm ercial designation may sue the infringer in 
cases falling under sections 14, 15 and 17 for destruction of the goods held or owned by the 
infringer that are unlawfully identified. Sentence 1 shall apply accordingly to materials and 
implements which are owne d by the infringer which were predominantly used for unlawfully 
identifying the goods.  
(2) The proprietor of a trade mark or of a commercial designation may sue the infringer in 
cases falling under sections 14, 15 and 17 for the recall of unlawfully identi fied goods or their 
final removal from the channels of commerce.  
(3) The claims under subsections (1) and (2) shall be ruled out if such a claim is 
disproportionate in an individual case. When examining proportionality, consideration shall 
be given to the legitimate interests of third parties.  
Section 19  
Right to information  
(1) The proprietor of a trade mark or of a commercial designation may sue the infringer in 
cases falling under sections 14, 15 and 17 for provision of information regarding the origin 
and the channels of commerce of unlawfully identified goods or services.  
(2) In cases of an obvious legal infringement or in cases where the proprietor of a trade mark 
or of a commercial designation has brought an action against the infringer, the claim may  
also be asserted, without prejudice to subsection (1), against a person who, on a commercial 
scale,  
1. had possession of infringing goods,  
2. made use of infringing services,  
3. provided services used for infringing activities, or  
4. according to the info rmation provided by a person referred to in no.  1, 2 or no.  3 
participated in manufacturing, creating or distributing such products or participated in the 
provision of such services,  
unless that person would be entitled under sections 383 to 385 of the Cod e of Civil 
Procedure (Zivilprozessordnung) to refuse to give testimony in proceedings against the 
infringer. In the event of assertion of the claim in judicial proceedings under sentence 1, the 
court may, upon motion, suspend the proceedings pending agains t the infringer until the 
proceedings on the claim concerning the provision of information have been concluded. The 
person obliged to provide the information may demand from the aggrieved party 
reimbursement of the expenditure for the provision of the info rmation.  
(3) The person obliged to provide the information shall give particulars of  
1. the name and address of the manufacturers, suppliers and other previous 
holders of the goods or services as well as of the intended wholesalers and retailers, and  
2. the quantity of the goods manufactured, delivered, received or ordered as well 
as the prices paid for the goods or services concerned.  
(4) The claims under subsections (1) and (2) shall be ruled out if such a claim is 
disproportionate in an individual case.  
(5) If the person obliged to provide the information, while acting intentionally or grossly 
negligently, provides false or incomplete information, he shall be obliged to compensate the 
proprietor of a trade mark or of a commercial designation for the damag e caused.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 9 of 62 (6) Any person who provides true information without having been obliged to do so in 
accordance with subsection (1) or subsection (2) shall be liable to third parties only if he 
knew that he was not obliged to provide the information.  
(7) In case s of an obvious legal infringement, the obligation to provide the information may 
be imposed by means of an interim injunction in accordance with sections 935 to 945 of the 
Code of Civil Procedure.  
(8) In criminal proceedings or in proceedings under the Ac t on Regulatory Offences (Gesetz 
über Ordnungswidrigkeiten), the findings may be used against one of the persons obliged on 
account of an act committed prior to the provision of the information or against a relative 
referred to in section 52 (1) of the Cod e of Criminal Procedure (Strafprozessordnung) only 
with the consent of the person obliged.  
(9) Where the information can be provided only by using traffic data (section 3 no. 70 of the 
Telecommunications Act [Telekommunikationsgesetz]), a court order regar ding the 
admissibility of the use of the traffic data shall first have to be obtained upon motion by the 
aggrieved party. For issuance of this order, that regional court (Landgericht) in whose district 
the person obliged to provide the information has his residence, principal place of business 
or an establishment shall have exclusive jurisdiction, irrespective of the value in dispute. The 
civil division shall decide. The provisions of the Act on Proceedings in Family Matters and in 
Matters of Non -Contentiou s Jurisdiction (Gesetz über das Verfahren in Familiensachen und 
in den Angelegenheiten der freiwilligen Gerichtsbarkeit) shall apply to the proceedings 
accordingly. The costs of the court order shall be borne by the aggrieved party. An appeal 
from the deci sion of the regional court shall be an available remedy. The notice of appeal 
shall be lodged within a time limit of two weeks. The provisions concerning the protection of 
personal data shall otherwise remain unaffected.  
(10) The basic right to privacy of telecommunications shall be restricted (Article 10 of the 
Basic Law [Grundgesetz]) by subsection (2) in conjunction with subsection (9).  
Section 19a  
Claims for production and inspection  
(1) If there is sufficient likelihood of a legal infringement in accor dance with sections 14, 15 
and 17, the alleged infringer may be sued by the proprietor of a trade mark or of a 
commercial designation for production of a document or inspection of an item which lies in 
his control if this is necessary for the purpose of es tablishing the claims of the proprietor of a 
trade mark or of a commercial designation. Where there is sufficient likelihood of a legal 
infringement being committed on a commercial scale, the claim shall extend to the 
production of bank, financial or comme rcial documents. If the alleged infringer asserts that 
the information concerned is confidential, the court shall take the measures necessary to 
ensure the specific protection required in an individual case.  
(2) The claim in accordance with subsection (1) shall be ruled out if such a claim is 
disproportionate in an individual case.  
(3) The obligation to produce a document or to acquiesce to the inspection of an item may 
be imposed by means of an interim injunction in accordance with sections 935 to 945 of t he 
Code of Civil Procedure. The court shall take the measures necessary to ensure the 
protection of confidential information. This shall in particular apply to those cases where the 
interim injunction is issued without giving a prior hearing to the opposin g party.  
(4) Section 811 of the German Civil Code (Bürgerliches Gesetzbuch) and section 19 (8) shall 
apply accordingly.  
(5) If there was no infringement or no risk of infringement, the alleged infringer may claim 
compensation for the damage caused to him b y the production or inspection sought in 
accordance with subsection (1) from the person who sought the production or inspection.  
Section 19b  
Securing compensation claims  
(1) In the event of a legal infringement being committed on a commercial scale in the cases 
referred to in section 14 (6), section 15 (5) as well as section 17 (2) sentence 2, the infringer Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 10 of 62 may be sued by the proprietor of a trade mark or of a commercial designation for production 
of bank, financial or commercial documents or provision of a ppropriate access to the 
relevant documents as are in the infringer’s control and are necessary for enforcing the claim 
for compensation if there is doubt as to whether the claim for compensation will be satisfied 
in the absence of such production. Where t he infringer asserts that the information is 
confidential, the court shall take the measures necessary to ensure the specific protection 
required in an individual case.  
(2) The claim in accordance with subsection (1) shall be ruled out if such a claim is 
disproportionate in an individual case.  
(3) The obligation to produce the documents referred to in subsection (1) may be imposed by 
means of an interim injunction in accordance with sections 935 to 945 of the Code of Civil 
Procedure in cases where there evi dently is a claim to compensation. The court shall take 
the measures necessary to ensure the protection of confidential information. This shall in 
particular apply to those cases where the interim injunction is issued without giving a prior 
hearing to the opposing party.  
(4) Section 811 of the German Civil Code and section 19 (8) shall apply accordingly.  
Section 19c  
Publication of judgments  
Where an action has been brought under this Act, the successful party may be entitled in the 
judgment to make the judg ment public at the expense of the unsuccessful party if the 
successful party demonstrates a legitimate interest. The nature and extent of the publication 
shall be laid down in the judgment.  The entitlement shall lapse if it is not used within three 
months of the judgment becoming final.  The pronouncement in accordance with sentence 1 
shall not be provisionally enforceable.  
Section 19d  
Claims under other statutory provisions  
Claims under other statutory provisions shall remain unaffected.  
Chapter 4  
Restricti ons of protection  
Section 20  
Limitation  
The provisions of Book 1, Division 5 of the German Civil Code shall apply accordingly to 
limitation in respect of claims referred to in sections 14 to 19c.  Where the person obliged has 
obtained something as a consequ ence of the infringement at the expense of the entitled 
person, section 852 of the German Civil Code shall apply accordingly.  
Section 21  
Forfeiting of rights  
(1) The proprietor of a trade mark or of a commercial designation shall not be entitled to 
prohibi t the use of a later registered trade mark for the goods or services for which it has 
been registered in so far as he has acquiesced, for a period of five successive years, to the 
use of the trade mark while being aware of such use, unless the registration  for the later 
trade mark was applied for in bad faith.  
(2) The proprietor of a trade mark or of a commercial designation shall not be entitled to 
prohibit the use of a trade mark within the meaning of section 4 no. 2 or 3, of a commercial 
designation or o f any other later right within the meaning of section 13 in so far as he has 
acquiesced, for a period of five successive years, to the use of this right while being aware of 
such use unless the proprietor of this right acted in bad faith at the time of acq uisition of the 
right.  
(3) In cases falling under subsections (1) and (2), the proprietor of the later right may not 
prohibit the use of the earlier right.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 11 of 62 (4) Subsections (1) to (3) shall not affect the application of general principles regarding the 
forfeiting of rights.  
Section 22  
Exclusion of rights if the registration of a later trade mark is definitive  
(1) The proprietor of a trade mark or of a commercial designation shall not be entitled to 
prohibit the use of a later registered trade mark for the go ods or services for which it has 
been registered if a request for cancellation of the later trade mark has been refused or 
would have to be refused  
1. because the earlier trade mark or commercial designation did not yet have a 
reputation within the meaning  of section 9 (1) no. 3, of section 14 (2) sentence 1 no. 3 or 
of section 15 (3) on the date relevant for the seniority of the registration of the later trade 
mark (section 51 (3)),  
2. because the registration of the earlier trade mark could have been revoked or 
declared invalid and cancelled because of revocation or because of absolute grounds for 
refusal on the date of the publication of the registration of the later trade mark (section 51 
(4)), 
3. because there was no likelihood of confusion within the m eaning of section 9  (1) 
no. 2, of section 14  (2) sentence 1 no. 2 or of section 15  (2) on the date relevant for the 
seniority of the registration of the later mark . 
(2) In cases falling under subsection (1), the proprietor of the later registered trade mar k may 
not prohibit the use of the earlier trade mark or commercial designation.  
Section 23  
Use of names and descriptive indications, spare parts business  
(1) The proprietor of a trade mark or of a commercial designation may not prohibit a third 
party in tr ade to use the following:  
1. the third party’s name or address  if the third party is a natural person,  
2. a sign identical or similar to the trade mark or commercial designation  which is 
not distinctive  or an identical or a similar sign as an indication of  characteristics or 
properties of goods or services, in particular their nature, quality, intended purpose, 
value, geographical origin or time of production or of rendering, or  
3. the trade mark or the commercial designation for the purposes of identifying  or 
referring to goods or services as those of the proprietor of that trade mark, in particular, 
where the use of that trade mark is necessary to  indicat e the intended purpose of a 
product or service , in particular as an accessory or spare part . 
(2) Subsec tion 1 shall only apply if the use made by the third party is in accordance with 
honest practices in industrial or commercial matters.   
Section 24  
Exhaustion  
(1) The  proprietor of a trade mark or of a commercial designation shall not be entitled to 
prohibit a third party from using the trade mark or the commercial designation for goods 
which have been put on the market under this trade mark or this commercial designat ion by 
him or with his consent in Germany, in one of the other Member States of the European 
Union or in another Contracting Party to the Agreement on the European Economic Area.  
(2) Subsection (1) shall not apply if the proprietor of the trade mark or of the commercial 
designation opposes the use of the trade mark or of the commercial designation in 
connection with the further commercialisation of the goods for legitimate reasons, in 
particular if the condition of the goods has been changed or impaired aft er being put on the 
market.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 12 of 62 Section 25  
Exclusion of rights for non -use 
(1) The proprietor of a registered trade mark may not assert rights vis -à-vis third parties 
within the meaning of sections 14 and 18 to 19c if the trade mark has not been used in 
accord ance with section 26 within the last five years prior to the assertion of the right for the 
goods or services which he invokes to establish his right, in so far as at that time an 
opposition against the trade mark has not been possible for at least five ye ars. 
(2) If rights within the meaning of sections 14 and 18 to 19c are asserted for an infringement 
of a registered trade mark by means of an action, the claimant must demonstrate in 
response to an objection by the defendant that the trade mark has been us ed in accordance 
with section 26 within the last five years prior to the filing of the action for the goods or 
services he invokes in order to establish his right or that there are proper reasons for non -
use, in so far as, at the date of filing of the acti on, an opposition against the trade mark has 
not been possible for at least five years. If the five -year period of non -use ends subsequent 
to the lodging of the action, the claimant shall demonstrate in response to an objection of the 
defendant that the tr ade mark has been used in accordance with section 26 within the last 
five years prior to the conclusion of the oral hearing or that there were proper reasons for 
non-use. The decision shall only take into consideration the goods or services for which use 
has been documented.  
Section 26  
Use of the trade mark  
(1) Where the assertion of rights from a registered trade mark or the upholding of the 
registration depends on the trade mark having been used, it must have been seriously used 
in Germany by its propriet or for the goods or services in respect of which it is registered 
unless there are legitimate grounds for non -use. 
(2) The use of the trade mark with the consent of the proprietor shall be deemed as use by 
the proprietor.  
(3) The use of the trade mark in a  form differing from the registration shall also constitute use 
of a registered trade mark, regardless of whether or not the trade mark in the form as used is 
also registered in the name of the proprietor, in so far as the differing element does not alter 
the distinctive character of the trade mark.  
(4) Use in Germany shall be deemed to also include the affixing of the trade mark on goods 
or their wrapping or packaging in Germany if the goods are exclusively intended for export.  
(5) In so far as use is nece ssary within five years from the date from which an opposition 
against the trade mark is no longer possible, in cases in which an opposition has been filed 
against the registration, the expiry of the period for entering an opposition shall be 
substituted b y the date on which the decision concluding opposition proceedings became 
final or the opposition was withdrawn.  
Chapter 5  
Trade marks as objects of property  
Section 27  
Transfer  
(1) The right established by the registration of a trade mark, the use of a tr ade mark or the 
fact of being a well -known mark may be transferred or pass to others for all or for a part of 
the goods or services for which the trade mark enjoys protection.  
(2) Where the trade mark is part of a business operation or of a component of a business 
operation, the right arising from the registration of the trade mark, the use of a trade mark or 
the fact of being a well -known mark shall in cases of doubt be covered by the assignment or 
the transfer of the business operation or of the component  of the business operation to which 
the trade mark belongs. This provision shall apply accordingly to the contractual obligation to 
transfer the business operation or a component of the business operation.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 13 of 62 (3) The transfer of the right arising from the reg istration of a trade mark shall, upon the 
request of one of the parties, be recorded in the Register if proof thereof is furnished to the 
German Patent and Trade Mark Office.  
(4) If the transfer only concerns one part of the goods or services for which the  trade mark is 
registered, the provisions on the division of the registration shall apply accordingly, with the 
exception of section 46 subsections (2) and (3) sentence 1.  
Section 28  
Presumption of proprietorship of the right, service on the proprietor  
(1) It shall be presumed that the party recorded in the Register as the proprietor is entitled to 
the right arising from the registration of a trade mark.  
(2) If the right arising from the registration of a trade mark has been transferred or has 
passed to ano ther, the successor, in proceedings before the German Patent and Trade Mark 
Office, in appeal proceedings before the Federal Patent Court or in appeal on points of law 
proceedings before the Federal Court of Justice, may only assert the right to protection  of 
this trade mark and the right arising from the registration from the time when the German 
Patent and Trade Mark Office has received the request for the registration of the transfer. 
Sentence 1 shall apply accordingly to other proceedings before the Ger man Patent and 
Trade Mark Office, to appeal proceedings before the Federal Patent Court or to appeal on 
points of law proceedings before the Federal Court of Justice in which the proprietor of a 
trade mark is involved. If the successor takes on proceedings  in accordance with sentence 1 
or 2, the consent of the other parties to the proceedings shall not be required.  
(3) Orders and decisions of the German Patent and Trade Mark Office which are required to 
be served on the proprietor of the trade mark shall be  served on the person registered as the 
proprietor. If the German Patent and Trade Mark Office has received a request for the 
registration of a transfer, the orders and decisions referred to in sentence 1 shall also be 
served on the successor.  
Section 29  
Rights in rem, levy of execution, insolvency proceedings  
(1) The right arising from the registration of a trade mark, the use of a trade mark or the fact 
of being a well -known mark may be  
1. pledged or form the object of another right in rem, or  
2. the obje ct of measures of levy of execution.  
(2) Where the rights referred to in subsection (1) no. 1 or the measures referred to in 
subsection (1) no. 2 concern the right arising from the registration of a trade mark, they shall 
be recorded in the Register upon t he request of one of the parties if proof thereof is furnished 
to the German Patent and Trade Mark Office.  
(3) Where the right arising from the registration of a trade mark is involved in insolvency 
proceedings, this shall be recorded in the Register upon application of the insolvency 
administrator or request of the insolvency court. In the case of personal management 
(section 270 of the Insolvency Statute [Insolvenzordnung]), the insolvency custodian shall 
take the place of the insolvency administrator.  
Section 30  
Licences  
(1) The right arising from the registration of a trade mark, the use of a trade mark or the fact 
of being a well -known mark may for all or for a part of the goods or services for which the 
trade mark enjoys protection form the subject -matter of exclusive or non -exclusive licences 
for the territory of the Federal Republic of Germany as a whole or part of this territory.  
(2) The proprietor of a trade mark may assert the rights from the trade mark against a 
licensee who acts contrary to a pro vision of the licence agreement with regard to  
1. the term of the licence,  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 14 of 62 2. the manner in which the trade mark may be used, as covered by the 
registration,  
3. the nature of the goods or services for which the licence was issued,  
4. the territory in which  the trade mark may be affixed, or  
5. the quality of the goods manufactured by them or of the services provided by 
them.  
(3) The licensee may file proceedings for infringement of a trade mark only with the consent 
of its proprietor. By way of derogation fr om sentence 1, the holder of an exclusive licence 
may file proceedings for infringement of a trade mark if the proprietor of the trade mark, after 
formal notice, does not himself bring proceedings for infringement of a trade mark within an 
appropriate peri od. 
(4) A licensee may, for the purpose of claiming compensation for damage suffered by him, 
intervene in an infringement action brought by the proprietor of the trade mark.  
(5) A transfer of rights in accordance with section 27 or the grant of a licence i n accordance 
with subsection (1) shall not affect licences previously granted to third parties.  
(6) At the request of the proprietor of the trade mark or the licensee, the German Patent and 
Trade Mark Office shall enter the grant of a licence in the Regist er if proof is furnished to it 
that the other party has given its consent. This shall apply accordingly to the modification of 
a registered licence. The registration shall be cancelled at the request of the proprietor of the 
trade mark or the licensee. The  request for cancellation by the proprietor of the trade mark 
shall be subject to proof of the consent of the licensee named upon registration or his 
successor in title.  
Section 31  
Trade marks applied for  
Sections 27 to 30 shall apply accordingly to rights  established by virtue of application for 
trade marks.  
Part 3  
Proceedings in the course of trade mark matters  
Chapter 1  
Registration proceedings  
Section 32  
Requirements concerning the application  
(1) Applications for the registration of a trade mark in the  Register shall be filed with the 
German Patent and Trade Mark Office.  The application can also be filed through a patent 
information centre where this agency has been designated to receive trade mark 
applications on the basis of a notice published by the Federal Ministry of Justice and 
Consumer Protection in the Federal Law Gazette.  
(2) The application shall contain:  
1. a request for registration,  
2. information permitting to identify the applicant,  
3. a representation of the trade mark, which is not subje ct to the ground for refusal 
specified in section 8 (1), and 
4. a list of the goods or services for which registration is being requested.  
(3) The application must meet the other requirements for filing provided for by statutory 
instrument  in accordance wi th section 65 (1) no. 2.  
(4) (repealed)  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 15 of 62 Section 33  
Date of filing, right to registration, publication of the application  
(1) The date of filing of the application for a trade mark shall be the date on which the 
applicant has filed the application containin g the information specified in section 32 (2) at the 
German Patent and Trade Mark Office. The receipt of the application documents by a patent 
information centre which has been designated to accept trade mark applications by notice 
published by the Federal  Ministry of Justice and Consumer Protection in the Federal Law 
Gazette shall be deemed as receipt by the German Patent and Trade Mark Office.  
(2) The application for a trade mark whose date of filing has been established shall give rise 
to a right to a re gistration. The application for a registration shall be granted unless the 
prerequisites for application are not met or absolute grounds for refusal oppose the 
registration.  
(3) The application for a trade mark which contains all the information pursuant t o section 32 
(2) shall be published including such information permitting to identify the applicant. The 
German Patent and Trade Mark Office may refrain from the publication insofar as the 
application concerns a trade mark that is obviously contrary to pub lic policy or to accepted 
principles of morality.  
Section 34  
Foreign priority  
(1) The assertion of the priority of an earlier foreign application shall be governed by the 
provisions of the international agreements with the proviso that priority can also be  claimed 
for services in accordance with the Paris Convention.  
(2) If the earlier foreign application has been filed in a state with which no international treaty 
on the recognition of priority has been concluded, the applicant may claim a right of priorit y 
corresponding to the right of priority under the Paris Convention, in so far as, in accordance 
with a notice published by the Federal Ministry of Justice and Consumer Protection in the 
Federal Law Gazette, the other state grants a right of priority on th e basis of the first 
application filed with the German Patent and Trade Mark Office which is comparable as 
regards the terms and conditions and content to the right of priority in accordance with the 
Paris Convention.  
(3) Any person who claims priority in accordance with subsection (1) or (2) shall within two 
months after the date of filing indicate the date and state of the earlier application. If the 
applicant has submitted these particulars, the German Patent and Trade Mark Office shall 
invite him to ind icate the file number of the earlier application and to submit a copy of the 
earlier application within two months of the service of the request. The particulars may be 
changed within these time limits. If the particulars are not submitted in due time, the  right of 
priority shall be forfeited for this application.  
Section 35  
Exhibition priority  
(1) Where the applicant for a trade mark has displayed goods or services under the trade 
mark applied for  
1. at an official or officially recognised international ex hibition falling within the 
terms of the Convention on International Exhibitions signed in Paris on 22 November 
1928, or  
2. at another domestic or foreign exhibition,  
he may, if he files the application within a period of six months following the first dis play of 
the goods or services under the trade mark applied for, claim a right of priority from that date 
within the meaning of section 34.  
(2) Notice of the exhibitions referred to in subsection (1) no. 1 shall be published by the 
Federal Ministry of Justi ce and Consumer Protection in the Federal Gazette 
(Bundesanzeiger).  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 16 of 62 (3) The exhibitions within the meaning of subsection (1) no. 2 shall be determined in each 
individual case by the Federal Ministry of Justice and Consumer Protection and notice 
thereof sha ll be published in the Federal Gazette.  
(4) Any person who claims a priority in accordance with subsection (1) shall, within two 
months after the date of filing, indicate the date of the first display as well as the exhibition. If 
the applicant has provide d this information, the German Patent and Trade Mark Office shall  
invite him to submit the documentation proving the display of the goods or services under the 
trade mark applied for within two months after the service of the request. If the 
documentation is not submitted in due time, the right of priority shall be forfeited  for this 
application.  
(5) The exhibition priority in accordance with subsection (1) shall not extend the period of 
priority specified in section 34.  
Section 36  
Examination of the condit ions of filing  
(1) The German Patent and Trade Mark Office shall examine whether  
1. the application for the trade mark satisfies the requirements for the accordance 
of a date of filing in accordance with section 33 (1);  
2. the application complies with the  other conditions of filing;  
3. the sufficient amount of fees has been paid; and  
4. the applicant may be a proprietor of a trade mark in accordance with section 7.  
(2) If deficiencies of the application ascertained in accordance with subsection (1) no. 1 a re 
not remedied within a period set by the German Patent and Trade Mark Office, the 
application shall be deemed to have been withdrawn. If thedeficiencies ascertained are 
remedied within that period, the date on which the deficiencies were remedied shall b e 
accorded as the date of filing.  
(3) If class fees are not subsequently paid within a period set by the German Patent and 
Trade Mark Office, or are not paid in a sufficient amount, or if the applicant does not specify 
which goods or service classes are to  be covered by the amount of fees paid, first the 
leading class and then the other classes shall be accounted for in the order of the 
classification. In other respects, the application shall be deemed to be withdrawn.  
(4) If other deficiencies are not reme died within a period determined by the German Patent 
and Trade Mark Office, the German Patent and Trade Mark Office shall refuse the 
application.  
(5) If the applicant cannot be a proprietor of a trade mark in accordance with section 7, the 
German Patent an d Trade Mark Office shall refuse the application.  
Section 37  
Examination for absolute grounds for refusal; observations by third parties  
(1) If the trade mark is excluded from registration in accordance with section 3, 8 or 10, the 
application shall be ref used.  
(2) If the examination reveals that the trade mark (section 33 (1)) did not meet the 
prerequisites of section 8 (2) no. 1, 2 or 3 on the date of filing, but that the ground for refusal 
no longer applies subsequent to the date of filing, the applicati on may not be refused if the 
applicant declares his agreement that, regardless of the original date of filing, and of any 
priority claimed for instance in accordance with section 34 or section 35, the date on which 
the ground for refusal ceased to apply is  deemed to be the date of filing and is relevant for 
the purposes of establishing seniority within the meaning of section 6 (2).  
(3) An application shall be refused in accordance with section 8 (2) no. 4 or no. 14 only if the 
deceptive nature or bad faith is evident.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 17 of 62 (4) An application shall only be refused in accordance with section 10 if the authorities know 
of the fact that the earlier trade mark is well known and if the further prerequisites of section 
9 (1) no. 1 or 2 apply.  
(5) Subsections (1) to (4) shall apply accordingly if the trade mark has only been excluded 
from registration for a part of the goods or services for which the application was filed.  
(6) Before registration of the trade mark, any natural or legal person and any group or body 
represe nting manufacturers, producers, suppliers of services, traders or consumers may 
submit to the German Patent and Trade Mark Office written observations, explaining on  
which grounds the trade mark should not be registered ex  officio. Persons and groups or 
bodies may also submit to the German Patent and Trade Mark Office written observations, 
explaining on which grounds the application for a collective mark or certification mark is to be 
refused. Persons and groups or bodies shall not be parties to the proceed ings before the 
German Patent and Trade Mark Office.   
Section 38  
Accelerated examination  
The examination in accordance with sections 36 and 37 shall be expedited at the request of 
the applicant.  
Section 39  
Withdrawal, restriction and correction of the application  
(1) The applicant may withdraw the application at any time or restrict the list of goods and 
services contained in the application.  
(2) The content of the ap plication may be altered at the request of the applicant to correct 
errors of wording or of transcription, or other obvious mistakes.  
Section 40  
Division of the application  
(1) The applicant may divide the application by declaring that the application for the trade 
mark shall continue to be dealt with as a divisional application for the goods and services 
listed in the declaration of division. The seniority of the original application shall be retained 
for each divisional application.  
(2) If the fee in acco rdance with the Patent Costs Act (Patentkostengesetz) for the division 
proceedings is not paid within three months after receipt of the declaration of division, the 
separated application shall be deemed to have been withdrawn. The declaration of division 
cannot be revoked.  
Section 41  
Registration, publication and trade mark information  
(1) If the application satisfies the requirements for application, and if it is not refused in 
accordance with section 37, the trade mark applied for shall be entered in the Register.  
(2) The registration shall be published. Publication may be in electronic format.  
(3) For further processing or use for the purposes of trade mark information, the German 
Patent and Trade Mark Office may transmit the information recorded in the  Register to third 
parties in electronic format. The transmission shall not take place in so far as inspection is 
excluded pursuant to section 62 (4).  
Section 42  
Opposition  
(1) Within a three -month period after the date of the publication of the registrati on of the 
trade mark in accordance with section 41, the proprietor of an earlier trade mark or 
commercial designation may file an opposition against the registration of the trade mark. 
Within that period, persons entitled to invoke rights deriving from an earlier protected 
designation of origin or protected geographical indication may file an opposition against the 
registration of the trade mark.  
(2) The opposition may only invoke that the trade mark may be cancelled  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 18 of 62 1. because of an earlier trade mark appl ied for or registered in accordance with 
section 9,  
2. because of an earlier well -known mark in accordance with section 10 in 
conjunction with section 9,  
3. because of its registration for an agent or representative of the trade mark 
proprietor in accordan ce with section 11,  
4. because of an earlier trade mark not registered in accordance with section 4 no. 
2 or of an earlier commercial designation in accordance with section 5 in conjunction with 
section 12 , or 
5. because of an earlier designation of origi n or geographical indication in 
conjunction with section 13 . 
(3) An opposition may be filed on the basis of one or more earlier rights if these rights belong 
to the same proprietor.  
(4) The parties to opposition proceedings shall, at the request of both pa rties, be granted a 
period of at least two months to enable them to reach a friendly settlement.  
Section 43  
Objection of insufficient use, decision on the opposition  
(1) If the opposition has been lodged by the proprietor of an earlier registered trade mar k, he 
shall, if the other party files an objection of non -use, furnish proof that the trade mark, within 
the last five years prior to the date of filing or priority of the trade mark which is targeted by 
the opposition, has been used in accordance with sec tion 26 in so far as an opposition 
against it has not been possible for at least five years at that point in time. Proof may also be 
provided by an affirmation in lieu of an oath. Only those goods and services shall be taken 
into consideration in the decis ion with respect to which use has been proved.  
(2) If the examination of the opposition reveals that the trade mark is to be cancelled for all or 
part of the goods or services in respect of which it is registered, the registration shall be 
cancelled in ful l or in part. If the registration of the trade mark cannot be cancelled, the 
opposition shall be refused.  
(3) If the registered trade mark is to be cancelled because of one or several earlier trade 
marks, the proceedings on further oppositions may be suspe nded until a decision has been 
handed down with legal force on the registration of the trade mark.  
(4) Section 52 (2) and (3) shall apply accordingly in the event of cancellation in accordance 
with subsection (2).  
Section 44  
Action for the grant of registr ation  
(1) The proprietor of the trade mark may claim by means of an action against the opponent 
that he has a right to the registration despite the cancellation of the registration in 
accordance with section 43.  
(2) The action in accordance with subsection  (1) shall be lodged within six months after the 
decision with which the registration has been cancelled ceases to be subject to appeal.  
(3) The registration on the basis of a decision in favour of the proprietor of the trade mark 
shall be effected preserv ing the seniority of the registration.  
Chapter 2  
Correction, division, duration of protection and renewal  
Section 45  
Correction of the Register and of publications  
(1) Entries in the Register can be altered upon request or ex officio to correct errors of 
wording or of transcription, or other obvious mistakes. If the registration affected by the 
correction had been published, the corrected registration shall be published.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 19 of 62 (2) Subsection (1) shall apply accordingly to the correction of publications.  
Section 4 6 
Division of the registration  
(1) The proprietor of a registered trade mark may divide the registration by declaring that the 
registration of the trade mark for the goods or services listed in the declaration of division 
shall continue as a separated regi stration. The seniority of the original registration shall be 
retained for each divisional registration.  
(2) The division may not be declared until after expiry of the time limit for the filing of the 
opposition. The declaration shall only be admissible if  an opposition pending at the time of its 
submission against the registration of the trade mark or an action pending at this time for 
revocation of rights or for a declaration of invalidity or an application for revocation of rights 
or for a declaration of  invalidity of the trade mark, filed at that time,  would, after the division, 
only address one of the parts of the original registration.  
(3) If the fee in accordance with the Patent Costs Act for the division proceedings is not paid 
within three months af ter receipt of the declaration of division, this shall be deemed to 
constitute surrender of the separated registration. The declaration of division cannot be 
revoked.  
Section 47  
Duration of protection and renewal  
(1) The duration of protection of a registe red trade mark shall be ten years, calculated from 
the date of filing the application (section 33 (1)).  
(2) The registration of the  trade mark shall be renewed for a further ten years, at the request 
of the proprietor of the  trade mark or any person author ised to do so by law or by contract, 
provided that the renewal fee has been paid.  
(3) The renewal of the duration of protection may also be effected by payment of a renewal 
fee and a class fee for each class to be renewed as from the fourth class of the c lassification 
of goods and services. Receipt of payment is deemed to be a request by the proprietor of the 
trade mark or an authorised person in accordance with subsection (2).  
(4) If the fees only relate to a part of the goods or services for which the tr ade mark is 
registered, the duration of protection shall only be renewed for these goods or services. If 
only the required class fees are not paid, the duration of protection, unless sentence 1 
applies, shall be renewed only for the classes for which the f ees paid suffice. If there is a 
leading class, it shall be given priority. In other respects, the classes shall be taken into 
account in the order of the classification.  
(5) The German Patent and Trade Mark Office shall inform the proprietor of the trade m ark of 
the expiry of the duration of protection at least six  months before the said expiry. Failure to 
give such information shall not involve the liability of the German Patent and Trade Mark 
Office.  
(6) The request for renewal shall be submitted in the s ix-month period prior to the expiry of 
the duration of protection. Failing this, the request may be submitted within a further period 
of six  months following the expiry of the duration of protection.  
(7) The renewal of the duration of protection shall beco me effective on the day after the 
expiry of the previous duration of protection. It shall be recorded in the Register and 
published.  
(8) If the duration of protection is not renewed, the registration of the trade mark shall be 
cancelled with effect from th e expiry of the duration of protection.  
Chapter 3  
Surrender, revocation and invalidity proceedings  
Section 48  
Surrender  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 20 of 62 (1) At the request of the proprietor of the trade mark, the registration shall be cancelled in the 
Register at any time for all or for a  part of the goods or services in respect of which it is 
registered.  
(2) If a person is entered in the Register as the proprietor of a right to the trade mark, the 
registration shall only be cancelled with the consent of this person.  
Section 49  
Revocation  
(1) The registration of a trade mark shall be be revoked and cancelled on application if the 
trade mark has not been used within an uninterrupted period of five years in accordance with 
section 26, after the date from which opposition to it is no longer po ssible. The revocation of 
a trade mark may however not be claimed if use of the trade mark in accordance with 
section 26 has been commenced or resumed after the end of this period and prior to the 
filing of the application for revocation. If, however, use is commenced or resumed following 
an uninterrupted period of five years of non -use within three months prior to the filing of the 
application for revocation, it shall remain unconsidered in so far as the preparations for the 
first or renewed use did not ta ke place until the proprietor of the trade mark became aware of 
the fact that an application for revocation might be filed. If the application for revocation is 
made to the German Patent and Trade Mark Office in accordance with section 53 (1), the 
applicat ion to the German Patent and Trade Mark Office shall remain relevant for the 
calculation of the three -month period in accordance with sentence 3 if the action for 
revocation in accordance with section 55 (1) is lodged within three months after service of 
the notice in accordance with section 53 (4).  
(2) The registration of a trade mark shall furthermore be revoked and cancelled on 
application  
1. if, as a consequence of acts or inactivity of the proprietor, the trade mark has 
become the common name in the tr ade of the goods or services in respect of which it is 
registered;  
2. if, as a consequence of the use made of the trade mark by the proprietor or with 
his consent in respect of the goods or services in respect of which it is registered, the 
trade mark is l iable to mislead the public particularly as to the nature, quality or 
geographical origin of those goods or services;  
3. if the proprietor of the trade mark no longer complies with the prerequisites set 
out in section 7.  
(3) If a ground for revocation appl ies only to a part of the goods or services for which the 
trade mark has been registered, the registration shall be revoked and cancelled in respect of 
those goods or services only.  
Section 50  
Invalidity because of absolute grounds for refusal  
(1) The regi stration of a trade mark shall be declared invalid and cancelled on application if it 
has been registered contrary to sections 3, 7 or 8.  
(2) If the trade mark has been registered contrary to section 3, 7 or 8 (2) nos. 1 to 13, the 
registration may only be  declared invalid and cancelled if the ground for refusal still exists at 
the time of the decision on the application for a declaration of invalidity. Section 8 (2) no. 1, 2 
or 3 shall not be applicable in invalidity proceedings if, before the application for a 
declaration of invalidity, the trade mark has become established in trade as a consequence 
of the use which has been made of it in relation to the goods and services for which it was 
registered, in the relevant section of the affected trade circles. If the trade mark has been 
registered contrary to section 8 (2) no. 1, 2 or 3, the registration may only be cancelled if the 
application for invalidity is lodged within ten years since the date of registration.  
(3) The registration of a trade mark may be d eclared invalid and cancelled ex officio if it has 
been registered contrary to section 8 (2) nos. 4 to 14, and  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 21 of 62 1. invalidity  proceedings are initiated within a period of two years from the date of 
registration;  
2. the absolute ground for refusal in accorda nce with section 8 (2) no s. 4 to 13 
continues to exist at the time of the decision on the declar ation  of invalidity ; and  
3. the registration has been manifestly made contrary to the provisions listed.  
(4) If there is a ground for invalidity only for a part  of the goods or services for which the 
trade mark has been registered, the registration shall only be declared invalid and cancelled 
for these goods or services.  
Section 51  
Invalidity because of the existence of earlier rights  
(1) The registration of a tr ade mark shall be declared invalid and cancelled in response to an 
action in accordance with section 55 or an application in accordance with section 53 if it is 
opposed by an earlier right within the meaning of sections 9 to 13. The application for a 
decla ration of invalidity may also be based on several earlier rights of the same proprietor.  
(2) The registration may not be declared invalid and cancelled because of the registration of 
an earlier trade mark in so far as the proprietor of the earlier trade ma rk has tolerated the 
use of the later trade mark for the goods or services in respect of which it is registered during 
a period of five consecutive years in the knowledge of this use, unless the application for the 
later trade mark has been made in bad fai th. The same shall apply to the proprietor of an 
earlier right to a trade mark acquired by use within the meaning of section 4 no. 2, in a well -
known mark within the meaning of section 4 no. 3, in a commercial designation within the 
meaning of section 5 or  in a name of a plant variety within the meaning of section 13 (2) no. 
4. The registration of a trade mark may further not be declared invalid and cancelled if the 
proprietor of one of the earlier rights listed in sections 9 to 13 has consented to the 
registration of the trade mark prior to the filing of the application for a declaration of invalidity.  
(3) The registration may not be declared invalid and cancelled because of an earlier trade 
mark which has a reputation or of an earlier commercial designati on which has a reputation if 
the trade mark or the commercial designation did not yet have a reputation within the 
meaning of section 9 (1) no. 3, of section 14 (2) sentence 1 no. 3 or of section 15 (3) on the 
date which is relevant for the seniority of th e registration of the later trade mark.  
(4) The registration may not be declared invalid and cancelled because of the registration of 
an earlier trade mark if the registration of the earlier trade mark could have been revoked or 
declared invalid and cancel led on the date of filing or date of priority of the later trade mark 
for the following reasons:  
1. revocation in accordance with section 49; or  
2. absolute grounds for refusal in accordance with section 50.  
For the purposes of the examination of likelihoo d of confusion under section 9 (1) no. 2, the 
distinctive character of the earlier trade mark on the date of filing or date of priority of the 
later trade mark shall be taken into account.  
(5) If there is a ground for invalidity only for a part of the good s or services for which the 
trade mark is registered, the registration shall only be declared invalid and cancelled for 
these goods or services.  
Section 52  
Consequences of revocation or invalidity  
(1) The effects of a registered trade mark shall be deemed not to have taken place, as from 
the date of the application (section 53) or of filing the action (section 55) for revocation, to the 
extent to which the trade mark has been revoked. An earlier date, on which one of the 
grounds for revocation occurred, may  be fixed in the decision at the request of one of the  
parties.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 22 of 62 (2) The effects of a registered trade mark shall be deemed to not have taken place, as from 
the outset, to the extent that the trade mark has been declared invalid.  
(3) Subject to the provisio ns on compensation for the damage caused by negligence or 
intentional conduct on the part of the proprietor of a trade mark as well as of the provisions 
on unjust enrichment, the cancellation of the registration due to revocation or invalidity of the 
trade  mark shall not affect  
1. decisions in infringement proceedings which have become final and have been 
enforced  prior to the decision on the application for revocation or a declaration of 
invalidity , and  
2. contracts concluded prior to the decision on the application for revocation or a 
declaration of invalidity  in so far as they have been performed prior to this decision. 
However , repayment, to an extent justified by the circumstances, of sums  paid under  the 
relevant contract may be claimed on grounds  of eq uity. 
Section 53  
Revocation and invalidity proceedings before the German Patent and Trade Mark 
Office 
(1) The application for revocation (section 49) and a declaration of invalidity because of 
absolute grounds for refusal (section 50) and the existence of earlier rights (section 51) shall 
be filed in writing with the German Patent and Trade Mark Office. The facts and evidence 
which serve as grounds shall be given. Section 81 (6) of the Patent Act ( Patentgesetz ) shall 
apply accordingly to the provision of se curity. The application shall be inadmissible to the 
extent that a decision by final order or final judgment has already been taken on the same 
subject matter of dispute between the parties. This shall also apply if an action pursuant to 
section 55 is pend ing at law concerning the same subject matter of dispute between the 
parties. Section 325 (1) of the Code of Civil Procedure ( Zivilprozessordnung ) shall apply 
accordingly. If several applications are filed between the same parties in accordance with 
senten ce 1, they may be combined and may be decided on by order in one procedure.  
(2) The application for revocation or a declaration of invalidity because of absolute grounds 
for refusal may be filed by any natural or legal person and any group or body set up f or the 
purpose of representing the interests of manufacturers, producers, suppliers of services, 
traders or consumers, and which m ay be party to the proceedings.  
(3) The application for a declaration of invalidity because of the existence of earlier rights  
may be filed by the proprietor of the earlier rights listed in sections 9 to 13 and persons 
entitled to assert the rights based on a protected geographical indication or a protected 
designation of origin.  
(4) If an application for revocation or a declarat ion of invalidity is filed or invalidity 
proceedings are initiated ex officio , the German Patent and Trade Mark Office shall serve a 
notice thereof on the proprietor of the registered trade mark and shall invite him to make a 
statement on the application o r the proceedings initiated ex officio  within two months of 
service of the notice.  
(5) If the proprietor does not object to the cancellation because of revocation or a declaration 
of invalidity within the period stated in subsection (4), the trade mark sha ll be revoked or 
declared invalid and the registration shall be cancelled. If the application for a declaration of 
invalidity is objected to within the time limit, the German Patent and Trade Mark Office shall 
notify the applicant of the objection. If the application for revocation is objected to within the 
time limit, the German Patent and Trade Mark Office shall serve the objection on the 
applicant. The revocation proceedings shall only be continued if the fee to pursue the 
revocation proceedings further pursuant to the Patent Costs Act ( Patentkostengesetz ) is paid 
within one month after service of the objection. Otherwise, the revocation proceedings are 
deemed to be concluded.  
(6) If the application for a declaration of invalidity because of the existence  of earlier rights 
has been filed by the proprietor of an earlier registered trade mark, he shall prove in Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 23 of 62 response to an objection on the part of the person objecting to the application that the trade 
mark has been used in accordance with section 26 withi n the last five years prior to the filing 
of the application, in so far as an opposition against the trade mark has not been possible for 
at least five years at that date. If an opposition was filed, the period of five years is calculated 
as from the date on which the decision ending the opposition proceedings became final or 
the opposition was withdrawn. If the period of five years of non -use ends after the filing of the 
application, the applicant shall prove in response to an objection on the part of the person 
objecting to the application that the trade mark has been used in accordance with section 26 
within the last five years prior to the decision. If the earlier trade mark was already registered 
for at least five years on the filing date or priority da te of the later trade mark, the applicant 
shall also prove in response to an objection on the part of the person objecting to the 
application that, on that date, the registration of the earlier trade mark could not have been 
declared invalid pursuant to se ction 49 (1). Only those goods or services for which use has 
been proved shall be taken into account in the decision. Proof may also be provided by an 
affirmation in lieu of an oath.  
(7) If the right arising from the registration of the trade mark has been  transferred or passed 
on to another person, the decision on the merits themselves shall also be effective and 
executable against the successor. Sections 66 to 74 and 76 of the Code of Civil Procedure 
shall apply accordingly to the power of the successor t o accede to the legal dispute.  
Section 54  
Intervention in revocation and invalidity proceedings  
(1) A third party may intervene in revocation or invalidity proceedings if a final decision on 
the application for revocation or a declaration of invalidity has  not yet been taken and if the 
third party can substantiate that  
1. proceedings for infringement of the same registered trade mark are pending 
against him; or  
2. he was required to cease and desist from an alleged infringement of the same 
registered trade mark.  
The intervention may be requested within three months from initiating proceedings pursuant 
to sentence (1) no. (1) or from receipt of the request to cease and desist pursuant to 
sentence (1) no. (2).   
(2) For filing the request, section 53 (1) to (3)  shall apply accordingly. If the intervention 
occurs in appeal proceedings before the Federal Patent Court, the intervening party shall 
become a party to the appeal.  
Section 55  
Revocation and invalidity proceedings before the courts of ordinary jurisdicti on 
(1) The action for revocation (section 49) or a declaration of invalidity because of the 
existence of earlier rights (section 51) shall be brought against the party registered as the 
proprietor of the trade mark or his successor. The action shall be ina dmissible if, concerning 
the same subject matter of dispute between the parties,  
1. a decision in accordance with section 53 has already been taken,  
2. an application in accordance with section 53 has been filed with the German 
Patent and Trade Mark Offic e. 
Section 325 (1) of the Code of Civil Procedure shall apply accordingly.  
(2) The following shall be entitled to file the action:  
1. in cases of a n application  for revocation, any person,  
2. in cases of a n application for a declaration of invalidity  beca use of the existence 
of earlier rights, the proprietors of the rights listed in sections 9 to 13,  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 24 of 62 3. in cases of a n application for a declaration of invalidity  because of the existence 
of an earlier indication of geographical origin (section 13 (2) no. 5),  the party entitled to 
assert rights in accordance with section 8 (3) of the Act Against Unfair Competition 
(Gesetz gegen den unlauteren Wettbewerb).  
(3) If the action for a declaration of invalidity has been lodged by the proprietor of a 
registered earlie r trade mark, he shall prove in response to an objection by the defendant 
that the trade mark has been used in accordance with section 26 within the last five years 
prior to the filing of the action, in so far as an opposition has no longer been possible a t this  
date for at least five years. If the five -year period of non -use ends after the action has been 
lodged, the claimant shall prove in response to an objection on the part of the defendant that 
the trade mark has been used in accordance with section 26  within the last five years prior to 
the conclusion of the oral hearing. If the earlier trade mark had already been registered for at 
least five years on the date of filing or date of priority of the later trade mark, the claimant 
shall further prove in re sponse to an objection on the part of the defendant that the 
registration of the earlier trade mark could not have been revoked and cancelled in 
accordance with section 49 (1) on this day. Only those goods or services for which use has 
been proved shall be  taken into account in the decision.  
(4) If prior to or subsequent to the lodging of the action the right arising from the registration 
of the trade mark has been transferred or passed to another person, the decision on the 
merits themselves shall also be effective and executable against the successor. Sections 66 
to 74 and 76 of the Code of Civil Procedure shall apply accordingly to the power of the 
successor to accede to the legal dispute.  
(5) The court shall notify the German Patent and Trade Mark Office  of the date on which the 
action was brought. The German Patent and Trade Mark Office shall note the date of 
bringing the action in the Register. The court shall send a copy of the final judgment to the 
German Patent and Trade Mark Office. The German Paten t and Trade Mark Office shall 
enter the result of the proceedings in the Register together with the date on which the 
judgment became final.  
Chapter 4  
General provisions for the procedures before the German Patent and Trade Mark 
Office  
Section 56  
Competenc es in the German Patent and Trade Mark Office  
(1) Trade Mark Sections and Trade Mark Divisions shall be established at the German 
Patent and Trade Mark Office to conduct proceedings in trade mark matters.  
(2) The Trade Mark Sections shall be competent for the examination of trade marks applied 
for and for taking decisions in the registration proceedings. The tasks of a Trade Mark 
Section shall be performed by a member of the German Patent and Trade Mark Office 
(examiner). The tasks may also be carried out b y an official of the higher intermediate 
service or by a comparable employee. Officials of the higher intermediate service and 
comparable employees shall however not be entitled to order an oath to be sworn or to 
administer an oath or to address a request in accordance with section 95 (2) to the Federal 
Patent Court.  
(3) The Trade Mark Divisions shall have jurisdiction for those matters which do not fall within 
the jurisdiction of the Trade Mark Sections. The tasks of a Trade Mark Division shall be 
carried out by a team composed of at least three members of the German Patent and Trade 
Mark Office. The chair of a Trade Mark Division may work alone on all matters falling within 
the jurisdiction of the Trade Mark Division, with the exception of the decision on revocation or 
a declaration of invalidity of a trade mark in accordance with section 53, or transfer such 
matters to a member of the Trade Mark Division for processing.  
Section 57  
Exclusion and objection  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 25 of 62 (1) Sections 41 to 44, 45 (2) sentence 2, and sectio ns 47 to 49 of the Code of Civil 
Procedure with regard to the exclusion of and objection to court personnel shall apply 
accordingly to the exclusion of and objection to the examiners and of the members of the 
Trade Mark Divisions as well as of the civil se rvants of the higher intermediate and 
intermediate service or employees entrusted with the handling of matters incumbent upon 
the Trade Mark Sections or the Trade Mark Divisions.  
(2) A Trade Mark Division shall decide on the objection request in so far as a decision is 
necessary.  
Section 58  
Opinions  
(1) The German Patent and Trade Mark Office shall be obliged to provide opinions at the 
request of the courts or of the public prosecution offices with regard to questions relating to 
trade marks filed or regist ered if divergent opinions have been submitted in the proceedings 
by more than one expert witness.  
(2) In other respects, the German Patent and Trade Mark Office shall not be entitled without 
the permission of the Federal Ministry of Justice and Consumer P rotection to take decisions 
or to provide opinions outside of its statutory scope of activities.  
Section 59  
Ascertaining the facts, right to be heard  
(1) The German Patent and Trade Mark Office shall ascertain the facts ex officio. It shall not 
be bound by  the pleadings and the motions to take evidence filed by the parties.  
(2) If the decision of the German Patent and Trade Mark Office is to be based on 
circumstances which have not yet been communicated to the applicant or to the proprietor of 
the trade mar k or to another party to the proceedings, he shall first be given the opportunity 
to comment within a specific time limit.  
Section 60  
Investigations, hearings, minutes  
(1) The German Patent and Trade Mark Office may summon and hear the parties at any 
time,  may examine witnesses, experts and parties under oath or not under oath, take visual 
evidence, evaluate the evidentiary value of a furnished document and may undertake further 
examination as necessary to examine the matter. The provisions of Book 2 of the  Code of 
Civil Procedure concerning such evidence and section 128a of the Code of Civil Procedure 
shall apply accordingly.  
(2) Until the decision with which the proceedings are concluded, the applicant or proprietor of 
the trade mark or another party to th e proceedings shall be heard on request if this is 
expedient. If the German Patent and Trade Mark Office does not consider a hearing to be 
expedient, it shall refuse the request. The decision to refuse the request shall not be 
independently contestable. In  revocation or invalidity proceedings, a hearing shall be held if 
one of the parties so requests or if it is deemed expedient by the German Patent and Trade 
Mark Office.  
(3) Minutes shall be drawn up of the hearings and taking of evidence containing the 
essentials of the proceedings and the relevant statements made by the parties. Sections 
160a, 162 and 163 of the Code of Civil Procedure shall apply accordingly. The parties shall 
receive a copy of the minutes.  
Section 61  
Decisions, instructions on appellate  remedy  
(1) Even if they have been delivered in accordance with sentence 3, the decisions of the 
German Patent and Trade Mark Office shall be reasoned and a copy thereof served on the 
parties ex officio; a certification of the copy is not required. Executi on copies will only be 
issued at the request of one of the parties and only in paper format. If a hearing has taken 
place, they may also be delivered at the end of the hearing. The decision need not be Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 26 of 62 reasoned if only the applicant or proprietor of the tr ade mark is party to the proceedings and 
his request is granted.  
(2) Upon service of the decision, the parties shall be instructed on the appellate remedy 
which is available from the decision, on the authority with which the appellate remedy shall 
be filed , on the time limit for filing of an appellate remedy, and, where a fee is payable for the 
appellate remedy in accordance with the Patent Costs Act, on the fee. The time limit for filing 
the appeal only begins to run if the parties have been instructed in accordance with sentence 
1. If the instruction has not been given or was given incorrectly, filing the appellate remedy 
shall only be admissible within one year following service of the decision, except in cases 
where the party has been instructed in writi ng that an appellate remedy is available. Section 
91 shall apply accordingly. Sentences 1 to 4 shall apply accordingly to the appellate remedy 
special motion (Erinnerung) in accordance with section 64.  
Section 62  
Inspection of files, inspection of the Regi ster 
(1) Upon request, the German Patent and Trade Mark Office shall grant inspection of the 
files of applications for trade marks if a legitimate interest is substantiated.  
(2) After the registration of the trade mark, inspection of the files of the regis tered trade mark 
shall be granted.  
(3) Inspection of the files in accordance with subsection  (2) may also be granted via the 
Internet where the files are kept electronically.  
(4) The inspection of the files in accordance with subsections  (1) to (3) shall b e ruled out 
where  
1. it is precluded by a legal provision ; 
2.  the interest meriting protection of the data subject within the meaning of Article 
4 (1) of the Regulation (EU) 2016/679 of the European Parliament and of the Council of 
27 April 2016 on the p rotection of natural persons with regard to the processing of 
personal data and on the free movement of such data, and repealing Directive  95/46/EC 
(General Data Protection Regulation ) (OJ L 119, 4 May 2016, p. 1, L 314, 22 November 
2016, p. 72 , L 127 of 2 3 May 2018, p. 2 ) in its respectively applicable version obviously 
prevails ; or 
3. it refers to contents of the files that are obviously contrary to public policy or to 
accepted principles of morality.   
(5) The Register may be inspected by any person.  
Sect ion 62a  
Data protection  
Insofar as the Register or publicly available electronic information services of the German 
Patent and Trade Mark Office contain personal data, the following shall not apply:  
1. the right of access pursuant to point (c) of Article 1 5 para. 1 of Regulation (EU) 
2016/679,  
2. the notification obligation pursuant to sentence 2 of Article 19 of Regulation 
(EU) 2016/679, and  
3. the right to object pursuant to Article 21 para. 1 of Regulation (EU) 2016/679.  
The right to obtain a copy pursua nt to Article 15 para. 3 of Regulation (EU) 2016/679 shall be 
deemed to be satisfied where the data subject has been granted inspection of the Register 
or publicly available information services of the German Patent and Trade Mark Office.  
Section 63  
Costs of the proceedings  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 27 of 62 (1) If several persons are involved in the proceedings, the German Patent and Trade Mark 
Office may determine in the decision that the costs of the proceedings, including the 
expenses of the German Patent and Trade Mark Office and the co sts incurred by the parties, 
in so far as they were necessary for the appropriate defence of the claims and rights, be 
imposed on one of the parties in full or in part if this is equitable. This may also be 
determined if the party withdraws the special mot ion (Erinnerung), the application for the 
trade mark, the opposition or the application for revocation or a declaration of invalidity in full 
or in part or if the registration of the trade mark is cancelled in full or in part in the Register 
because of sur render or because of non -renewal of the duration of protection. In so far as no 
determination is made as to the costs, each of the parties shall bear the costs incurred by 
him himself.  
(2) Where a decision is taken pursuant to subsection (1), the German Pa tent and Trade 
Mark Office shall fix the value of the claim; section 23 (3) sentence 2, and section 33 (1) of 
the Act on the Remuneration of Lawyers (Rechtsanwaltsvergütungsgesetz) shall apply 
accordingly. The decision on the value of the claim may be comb ined with the decision 
referred to in subsection (1).  
(3) The German Patent and Trade Mark Office may order that the fee in accordance with the 
Patent Costs Act for the accelerated examination, for the opposition, revocation or invalidity 
proceedings shall  be reimbursed in full or in part if this is equitable.  
(4) The amount of the costs to be reimbursed shall be determined upon request by the 
German Patent and Trade Mark Office. The provisions of the Code of Civil Procedure 
concerning the procedure for the  assessment of costs  (sections 103 to 107) and compulsory 
enforcement based on orders assessing the costs  (sections 724 to 802) shall apply 
accordingly. The appeal from the order assessing the costs shall be available instead of the 
appellate remedy provid ed for by the Code of Civil Procedure (Erinnerung). Section 66 shall 
apply with the proviso that the appeal shall be lodged within two weeks. The enforceable 
execution copy shall be issued by the registry clerk at the registry of the Federal Patent 
Court.  
Section 64  
Special motion (Erinnerung)  
(1) The special motion (Erinnerung) shall be available against the decisions of the Trade 
Mark Sections and the Trade Mark Divisions which have been issued by a civil servant of the 
higher intermediate service or a co mparable employee. The special motion (Erinnerung) 
shall have a suspensive effect.  
(2) The special motion (Erinnerung) shall be filed with the German Patent and Trade Mark 
Office within one month of service of the decision.  
(3) If the civil servant or empl oyee whose decision is contested regards the special motion 
(Erinnerung) as well founded, he shall rectify his decision. This shall not apply if the party 
that lodged the special motion (Erinnerung) is opposed by another party to the proceedings.  
(4) A mem ber of the German Patent and Trade Mark Office shall decide on the special 
motion (Erinnerung).  
(5) The Trade Mark Section or the Trade Mark Division may order that the fee to be paid in 
accordance with the Patent Costs Act for the special motion (Erinneru ng) shall be 
reimbursed in full or in part.  
(6) In place of the special motion (Erinnerung), the appeal in accordance with section 66 may 
be lodged. If, in proceedings in which several persons are involved, one party has lodged a 
special motion (Erinnerung ), and another party has lodged an appeal against a decision, the 
party that lodged the special motion (Erinnerung) may also lodge an appeal. If the appeal of 
the party that lodged the special motion (Erinnerung) is not lodged within one month of 
service o f the appeal of the other party in accordance with section 66 (4) sentence 2, his 
special motion (Erinnerung) shall be deemed to have been withdrawn.  
(7) It shall no longer be possible to rule on a special motion (Erinnerung) after an appeal has 
been lodge d in accordance with subsection (6) sentence 2, or in accordance with section 66 Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 28 of 62 (3). A decision on a special motion (Erinnerung) nonetheless issued after an appeal has 
been lodged shall be null and void.  
Section 64a  
Costs arrangements in the proceedings b efore the German Patent and Trade Mark 
Office  
The Patent Costs Act shall apply to the costs in the proceedings before the German Patent 
and Trade Mark Office.  
Section 65  
Authorisation to issue statutory instruments  
(1) The Federal Ministry of Justice and C onsumer Protection shall be authorised, by 
statutory instrument not requiring the consent of the Bundesrat,  
1. to regulate the establishment and the business procedure, as well as the form 
taken by the proceedings in trade mark matters unless these have b een regulated by 
statute,  
2. to determine further requirements for the application for trade marks,  
3. to determine the classification of goods and services,  
4. to make detailed arrangements for the implementation of the examination, 
opposition , revocation  and invalidity  proceedings,  
5. to make arrangements regarding the Register of registered trade marks and, 
where appropriate, separate provisions regarding the Register for collective marks  and 
certification marks , 
6. to regulate the indications regarding registered trade marks and regarding 
opposition and invalidity proceedings to be included in the Register and to determine the 
extent and the nature of the publication of these indications,  
7. to make arrangements regarding the other procedures before the German 
Patent and Trade Mark Office provided for in this Act, such as in particular the procedure 
in the division of applications and of registrations, the procedure to issue information or 
certificates, the procedure for the re -establishment of rights, th e procedure to inspect 
files, the procedure regarding protection of international registrations and the procedure 
regarding the conversion of European Union  trade marks,  
8. to make arrangements regarding indications concerning licences to be included 
in the Register,  
9. to make arrangements regarding the form in which requests and submissions 
are to be submitted in trade mark matters, including the transmission of requests and 
submissions by means of electronic data transmission,  
10. to make arrangements re garding the form in which decisions, notices or other 
communications of the German Patent and Trade Mark Office in trade mark matters are 
to be transmitted to the parties, including transmission by means of electronic data 
transmission unless a specific fo rm of transmission is prescribed by law,  
11. to make arrangements regarding the cases in which and the circumstances 
under which submissions and documents in trade mark matters are considered in other 
languages than German,  
12. to entrust civil servants of  the higher intermediate service or comparable 
employees with carrying out matters which are incumbent on the Trade Mark Divisions 
and which by their nature do not pose any particular legal difficulties, with the exception Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 29 of 62 of taking decisions on the cancel lation of trade marks due to surrender, revocation or 
invalidity (section 48 (1) and section 53), the submission of expert reports (section 58 (1)) 
and the decisions whereby the submission of an expert report is refused,  
13. to entrust civil servants of th e intermediate service or comparable employees 
with the carrying out of tasks which are incumbent on the Trade Mark Sections or Trade 
Mark Divisions and which by their nature do not pose any particular legal difficulties, with 
the exception of decisions on  applications and oppositions,  
14. to prescribe the indications to be included in the publication in accordance with 
section 33 (3), as well as to determine the scope and nature of the publication of these 
indications , 
15. to create rules on the public hol idays to be taken into account for time limits in 
trade mark matters which apply to all offices of the German Patent and Trade Mark 
Office . 
(2) The Federal Ministry of Justice and Consumer Protection may, by statutory instrument 
not requiring the consent o f the Bundesrat, delegate the authorisation to issue statutory 
instruments referred to in subsection (1), in whole or in part, to the German Patent and Trade 
Mark Office.  
Section 65a  
Administrative cooperation  
The German Patent and Trade Mark Office shall cooperate effectively with other national 
trade mark offices, the World Intellectual Property Organization and the European Union 
Intellectual Property Office in the fields of activity relevant to national, international trade 
mark protection and trade mar k protection in the European Union and shall promote the 
convergence of practices and tools in the fields of examination, registration, administration 
and cancellation of trade marks.  
Chapter 5  
Proceedings before the Federal Patent Court  
Section 66  
Appeal  
(1) The appeal to the Federal Patent Court shall be available from the decisions of the Trade 
Mark Sections and the Trade Mark Divisions, without prejudice to the provision of section 64. 
The parties to the proceedings before the German Patent and Trade Ma rk Office shall be 
entitled to appeal.  The appeal shall have suspensive effect.  
(2) The appeal shall be filed in writing with the German Patent and Trade Mark Office within 
one month of service of the decision.  
(3) If no decision has been taken regarding a  special motion (Erinnerung) in accordance with 
section 64 within six months after its lodging, and if the party that lodged the special motion 
(Erinnerung) has made a request for a decision after expiry of this period, the appeal shall be 
admissible direc tly against the decision of the Trade Mark Section or the Trade Mark Division 
in derogation from subsection (1) sentence 1, if no decision has been taken on the special 
motion (Erinnerung) within two months after receipt of the request. If the party that l odged 
the special motion (Erinnerung) is opposed in the special motion (Erinnerung) proceedings 
by another party, sentence 1 shall apply with the proviso that the six -month time limit after 
the lodging of the special motion (Erinnerung) shall be replaced b y a time limit of ten months. 
If the other party has also lodged a special motion (Erinnerung), the appeal in accordance 
with sentence 2 shall require the consent of the other party. The written declaration of 
consent shall be enclosed with the appeal. If the other party does not also lodge an appeal 
within a period of one month after service of the appeal in accordance with subsection (4) 
sentence 2, his special motion (Erinnerung) shall be deemed to have been withdrawn. The 
running of the periods in accor dance with sentences 1 and 2 shall be suspended if the Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 30 of 62 proceedings are stayed or if a party is granted a time limit at his request or because of 
binding provisions. The remaining part of the periods in accordance with sentences 1 and 2 
shall commence after  the ending of the suspension or after expiry of the time limit that has 
been granted. After the decision on the special motion (Erinnerung) has been taken, an 
appeal in accordance with sentences 1 and 2 shall no longer be available.  
(4) Copies for the oth er parties shall be enclosed with the appeal and all written pleadings. 
The appeal and all written pleadings containing substantive motions or the declaration of 
withdrawal of the appeal or of a motion shall be served on the other parties ex officio. Other  
written pleadings shall be informally communicated to them unless service is ordered.  
(5) If the unit whose decision is contested regards the appeal as well founded, it shall rectify 
its decision. This shall not apply if the appellant is opposed by anothe r party to the 
proceedings. The unit may order that the appeal fee in accordance with the Patent Costs Act 
be reimbursed. If the appeal is not allowed in accordance with sentence 1, it shall be 
remitted to the Federal Patent Court within one month and with out comment as to its merit. 
The appeal shall be submitted to the Federal Patent Court promptly in cases falling under 
sentence 2. In proceedings with no third -party participation within the meaning of sentence 2, 
a request for the grant of legal aid for t he appeal proceedings shall be submitted to the 
Federal Patent Court for a preliminary ruling without delay.  
Section 67  
Boards of Appeal, public nature of the hearing  
(1) A Board of Appeal at the Federal Patent Court sitting in a composition of three legal ly 
qualified members shall decide on appeals within the meaning of section 66.  
(2) Proceedings regarding appeals from decisions of the Trade Mark Sections and the Trade 
Mark Divisions, including delivery of the decisions, shall be public in so far as the r egistration 
has been published.  
(3) Sections 172 to 175 of the Courts Constitution Act (Gerichtsverfassungsgesetz) shall 
apply accordingly, with the proviso that  
1. the public may also be excluded from the proceedings at the request of one of 
the parties i f there are concerns of a threat to the interests of the applicant meriting 
protection,  
2. the public is excluded when the decisions are delivered until the publication of 
the registration.  
Section 68  
Participation of the President of the German Patent and  Trade Mark Office  
(1) The President of the German Patent and Trade Mark Office may, if he considers it 
appropriate to safeguard the public interest, make written declarations to the Federal Patent 
Court in the appeal proceedings, participate in the hearin gs and make statements in the 
course of the proceedings. Written declarations on the part of the President of the German 
Patent and Trade Mark Office shall be notified to the parties by the Federal Patent Court.  
(2) The Federal Patent Court may provide the  President of the German Patent and Trade 
Mark Office with the option to intervene in the appeal proceedings if it considers this to be 
suitable because of a legal issue which is of fundamental importance. Upon receipt of the 
declaration of intervention, t he President of the German Patent and Trade Mark Office shall 
become a party.  
Section 69  
Oral proceedings  
Oral proceedings shall take place if  
1. one of the parties makes a request for them,  
2. the Federal Patent Court takes evidence (section 74 (1)), or  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 31 of 62 3. the Federal Patent Court considers them to be expedient.  
Section 70  
Decision on the appeal  
(1) A decision on the appeal shall be taken by order.  
(2) The order by means of which an appeal is rejected as inadmissible may be given without 
oral proceedings.  
(3) The Federal Patent Court may annul the contested decision without deciding on the 
merits if  
1. the German Patent and Trade Mark Office has not yet decided on the merits,  
2. the proceedings before the German Patent and Trade Mark Office suffer from a 
substantial defect, or  
3. new facts or evidence become known which are essential for the decision.  
(4) The German Patent and Trade Mark Office shall also base its decision on the legal 
assessment on which the annulment in accordance with subsection (3) was b ased.  
Section 71  
Costs of the appeal proceedings  
(1) If several persons are involved in the proceedings, the Federal Patent Court may 
determine that the costs of the proceedings, including the costs incurred by the parties, in so 
far as they were necessary  to appropriately safeguard the claims and rights, be imposed on 
one of the parties in full or in part if this is equitable. If no arrangement is made as to the 
costs, each party shall bear the costs incurred by the party itself.  
(2) Costs may be imposed o n the President of the German Patent and Trade Mark Office 
only if he or she has made requests after intervening in the proceedings.  
(3) The Federal Patent Court may order the reimbursement of the appeal fee in accordance 
with the Patent Costs Act.  
(4) Sub sections (1) to (3) shall also apply if the party withdraws the appeal, the application 
for the trade mark, the opposition or the application for revocation or a declaration of 
invalidity in full or in part, or if the registration of the trade mark is canc elled in the Register in 
full or in part because of surrender or because of non -renewal of the duration of protection.  
(5) In other respects, the provisions of the Code of Civil Procedure concerning the procedure 
for the assessment of costs (sections 103 t o 107) and compulsory enforcement based on 
orders assessing the costs (sections 724 to 802) shall apply accordingly.  
Section 72  
Exclusion and objection  
(1) Sections 41 to 44 and 47 to 49 of the Code of Civil Procedure shall apply accordingly to 
the exclusi on of and objection to court personnel.  
(2) Any person shall also be excluded from exercising the office of judge who was involved in 
the preceding proceedings before the German Patent and Trade Mark Office.  
(3) That board of whom the judge objected to is a member shall decide on the objection to 
that judge. If the number of board members ceases to constitute a quorum on account of the 
member objected to, another Board of Appeal shall take the decision.  
(4) The board in whose sphere of business the matter f alls shall decide on the objection to a 
registry clerk.  
Section 73  
Investigation of the facts, preparation of the oral hearing  
(1) The Federal Patent Court shall investigate the facts ex officio. It shall not be bound by the 
pleadings and the motions to ta ke evidence filed by the parties.  
(2) Before the oral proceedings or, if no oral proceedings are held, before the Federal Patent 
Court takes its decision, the presiding judge or a member of the boards to be determined by Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 32 of 62 him or her shall issue all orders w hich are necessary to dispose of the matter in oral 
proceedings or in one session if at all possible. In other respects, section 273 (2), (3) 
sentence 1, and (4) sentence 1, of the Code of Civil Procedure shall apply accordingly.  
Section 74  
Taking of evide nce 
(1) The Federal Patent Court shall take evidence in the oral proceedings. In particular, it may 
carry out an inspection, hear witnesses, experts and parties, and consult documents.  
(2) In appropriate cases, the Federal Patent Court may, even before the  oral proceedings, 
have one of its members as a judge by commission take evidence or may request another 
court to take evidence by designation of the individual question regarding which evidence is 
to be taken.  
(3) The parties shall be informed of all date s scheduled for the taking of evidence and may 
attend the taking of evidence. They may address relevant questions to witnesses and 
experts. Where a question is challenged, the Federal Patent Court shall decide.  
Section 75  
Summonses  
(1) As soon as the date for oral proceedings has been scheduled, the parties shall be 
summoned with at least two weeks’ notice. In urgent cases, the presiding judge may shorten 
this period.  
(2) The notice of summons shall indicate that if a party fails to appear, the proceedings may 
be held and a decision taken in his absence.  
Section 76  
Course of the proceedings  
(1) The presiding judge shall open and conduct the oral proceedings.  
(2) After the case has been called up, the presiding judge or the reporting judge shall present 
the e ssential content of the files.  
(3) Then the parties shall be allowed to speak in order to bring and reason their motions.  
(4) The presiding judge shall discuss the facts and legal aspects of the case with the parties.  
(5) The presiding judge shall permit e ach member of the board on request to ask questions. 
Where a question is challenged, the board shall decide.  
(6) After discussing the case, the presiding judge shall declare the oral proceedings closed. 
The board may decide to reopen the oral proceedings.  
Section 77  
Minutes  
(1) A registry clerk of the registry shall act as recording clerk at the oral proceedings and the 
taking of the evidence.  If, on the order of the presiding judge, no recording clerk is required, 
a judge shall draw up the minutes.  
(2) Min utes of the oral proceedings and any taking of evidence shall be drawn up.  Sections 
160 to 165 of the Code of Civil Procedure shall apply accordingly.  
Section 78  
Assessment of evidence, legal right to be heard  
(1) The Federal Patent Court shall decide acco rding to its independent conviction gained as 
an overall result of the proceedings. The decision shall state the grounds by which the 
judges were guided in coming to their conviction.  
(2) The decision may be based only on facts and results of evidence on w hich the parties 
were able to comment.  
(3) If prior oral proceedings took place, a judge who was not present at the last session of 
the oral proceedings may participate in the taking of the decision only with the consent of the 
parties.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 33 of 62 Section 79  
Delivery , notification, grounds  
(1) Where oral proceedings were conducted, the final decisions of the Federal Patent Court 
shall be delivered at the session at which the oral proceedings were closed or at a session to 
be scheduled immediately. This session shall b e scheduled not more than three weeks later 
unless important grounds so require, in particular the extent or the complexity of the case. 
Notification of the final decision shall be permissible instead of delivery. If the Federal Patent 
Court takes its deci sion without oral proceedings, delivery shall be replaced by notification to 
the parties. The final decisions shall be notified to the parties ex officio.  
(2) The decisions of the Federal Patent Court by means of which a motion is refused or a 
decision is taken on an appellate remedy shall be reasoned.  
Section 80  
Corrections  
(1) Errors of transcription, miscalculations and similar obvious mistakes in the decision shall 
be corrected by the Federal Patent Court at any time.  
(2) If the elements of the decision  contain other mistakes or ambiguities, the correction may 
be requested within two weeks of service of the decision.  
(3) A decision on the correction in accordance with subsection (1) may be taken without prior 
oral proceedings.  
(4) The Federal Patent Cour t shall decide on the request for correction in accordance with 
subsection (2) by order without taking evidence. Only those judges shall be involved who 
participated in the decision whose correction has been requested.  
(5) The order for correction shall be  noted in the decision and execution copies.  
Section 81  
Representation, power of attorney  
(1) The parties may pursue proceedings before the Federal Patent Court themselves. 
Section 96 shall remain unaffected.  
(2) The parties may be represented by a lawyer or patent attorney as agent. In addition, only 
the following may be entitled to represent the parties as agents before the Federal Patent 
Court:  
1. employees of the party or of an associated company (section 15 of the Share 
Capital Companies and Partnershi ps Act [Aktiengesetz]); authorities and legal persons 
under public law, including associations formed by them for the fulfilment of their public 
duties, may also be represented by employees of other authorities or legal persons under 
public law, including associations formed by them for the fulfilment of their public duties;  
2. family members of full age (section 15 of the Fiscal Code [Abgabenordnung], 
section 11 of the Act on Registered Life Partnerships [Lebenspartnerschaftsgesetz]), 
persons qualified to hold judicial office and joined parties if the representation is not 
linked to a paid activity.  
Agents who are not natural persons shall act through their organs and persons appointed to 
represent them in proceedings.  
(3) The court shall, by final order, r efuse those agents who are not entitled to represent in 
accordance with subsection (2). Procedural acts by an agent who is not entitled to represent 
and notifications or communications to this agent shall be effective until the agent is refused. 
The court may, by final order, refuse the agents designated in subsection (2) sentence 2, 
from further representation if they are unable to properly present the facts and the dispute.  
(4) Judges may not act as agents before the court of which they are member.  
(5) Th e authorisation shall be filed with the court in writing. It may be subsequently filed. The 
Federal Patent Court may determine a time limit for this purpose.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 34 of 62 (6) Deficiencies of the authorisation may be asserted at any stage of the proceedings. The 
Federal  Patent Court shall give due consideration to the deficiencies of the authorisation ex 
officio unless a lawyer or a patent attorney is acting as agent.  
Section 81a  
Legal aid  
(1) In proceedings before the Federal Patent Court, a party shall receive legal ai d upon 
request subject to the application, accordingly, of sections  114 to  116 of the Code of Civil 
Procedure.  
(2) In other respects, section  130 (2) and  (3) as well as sections  133 to  137 of the Patent Act 
shall apply accordingly.  
Section 82  
Application o f further provisions, contestability, inspection of files  
(1) Where this Act does not contain any provisions in respect of the proceedings before the 
Federal Patent Court, the Courts Constitution Act and the Code of Civil Procedure shall 
apply accordingly unless it is precluded by the special characteristics of the proceedings 
before the Federal Patent Court. Section 227 (3) sentence 1 of the Code of Civil Procedure 
shall not apply. The Patent Costs Act shall apply to the fees in the proceedings before the 
Federal Patent Court; the Court Costs Act (Gerichtskostengesetz) shall apply to the 
expenses accordingly.  
(2) The decisions of the Federal Patent Court shall be contestable only in so far as this is 
permitted under this Act.  
(3) Section 62 (1) to (4) shall  apply accordingly in respect of the grant of inspection of the 
files to third persons. The Federal Patent Court shall decide on the request.  
Chapter 6  
Proceedings before the Federal Court of Justice  
Section 83  
Appeals on points of law allowed and those no t needing to be allowed  
(1) An appeal on points of law may be filed with the Federal Court of Justice from the orders 
of the Boards of Appeal of the Federal Patent Court ruling on an appeal under section 66 if 
the Board of Appeal allowed the appeal on poin ts of law in its order. The appeal on points of 
law shall have suspensive effect.  
(2) The appeal on points of law shall be allowed if  
1. a decision needs to be taken on a legal matter of fundamental importance; or  
2. the development of the law or ensuring the consistency of court rulings requires 
a decision by the Federal Court of Justice.  
(3) It shall not be required to allow an appeal on points of law if it is noted  
1. that the court issuing the order did not sit in the composition required by law;  
2. that a judge was involved in taking the decision who was excluded from 
exercising judicial office by operation of law or was successfully objected to if suspected 
of partiality;  
3. that one of the parties was denied the right to be heard;  
4. that one of the p arties was not represented in the proceedings in accordance 
with the provisions set out in this Act, unless he explicitly or tacitly consented to the 
conduct of the proceedings;  
5. that the order was issued on the basis of oral proceedings in which the 
provisions on the admission of the public to the proceedings were violated; or  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 35 of 62 6. that the order is not reasoned.  
Section 84  
Entitlement to lodge an appeal, grounds for appeal  
(1) The appeal on points of law shall be open to the parties to the appeal proceedi ngs. 
(2) The appeals on points of law may only rely on the fact that the order is based on a 
violation of the law. Sections 546 and 547 of the Code of Civil Procedure shall apply 
accordingly.  
Section 85  
Formal prerequisites  
(1) The appeal on points of law shall be filed in writing with the Federal Court of Justice 
within one month of service of the order.  
(2) The provisions set out in section 142 on reduction of the value in dispute shall apply 
accordingly in the proceedings on the appeal on points of law b efore the Federal Court of 
Justice.  
(3) The appeal on points of law shall be reasoned. The time limit for submission of the 
grounds is one month. This period shall begin to run upon the filing of the appeal on points of 
law and may be extended by the presi ding judge upon request.  
(4) The grounds for the appeal on points of law shall contain the following:  
1. the declaration as to the extent to which the decision is being contested and its 
amendment or annulment is being requested;  
2. the indication of the v iolated legal provision; and  
3. if the appeal on points of law is based on the infringement of procedural 
provisions, the description of the facts which result in the defect.  
(5) The parties shall be represented before the Federal Court of Justice by a law yer as agent 
who has been admitted to practise before the Federal Court of Justice. At the request of one 
of the parties, his patent attorney shall be permitted to speak. In respect of the costs arising 
from the participation of a patent attorney, fees pur suant to section 13 of the Act on the 
Remuneration of Lawyers (Rechtsanwaltsvergütungsgesetz) as well as the necessary 
expenses of the patent attorney shall be reimbursed.  
Section 86  
Examination of admissibility  
The Federal Court of Justice shall examine, ex officio, whether the appeal on points of law 
per se is an available remedy and whether it has been filed and reasoned in the statutory 
form and within the statutory time limit. If any of these requirements is not met, the appeal on 
points of law shall b e rejected as inadmissible.  
Section 87  
Several parties  
(1) If several persons are involved in the proceedings on the appeal on points of law, the 
notice of appeal and the statement of grounds of appeal shall be served on the other parties, 
inviting them to  make any statements in writing to the Federal Court of Justice within a 
specific time limit after service. The date on which the appeal on points of law was filed shall 
be communicated when the notice of appeal is served. The appellant should submit the 
required number of certified copies together with the notice of appeal or the statement of 
grounds of appeal.  
(2) If the President of the German Patent and Trade Mark Office is not involved in the 
proceedings on an appeal on points of law, section 68 (1) sh all apply accordingly.  
Section 88  
Application of further provisions  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 36 of 62 (1) The provisions of the Code of Civil Procedure on the exclusion of and objection to court 
personnel (sections 41 to 49), on agents and advisers (sections 78 to 90), on notifications ex 
officio (sections 166 to 190), on summonses, hearings and time limits (sections 214 to 229), 
and on the re -establishment of rights  (sections 233 to 238) shall apply accordingly in 
proceedings on the appeal on points of law. Section 91(8) shall apply accord ingly in the case 
of the re -establishment of rights. Upon request, a party shall be granted legal aid subject to 
the application, accordingly, of section  138 of the Patent Act.  
(2) Section 67(2) and (3) shall apply accordingly to the public nature of the p roceedings.  
Section 89  
Decision on the appeal on points of law  
(1) The decision on the appeal on points of law shall be given by order. The decision may be 
taken without oral proceedings.  
(2) The Federal Court of Justice shall be bound in its decision by f acts established in the 
contested order unless admissible and reasoned grounds for appeal on points of law are 
submitted in relation to these facts.  
(3) The decision shall be reasoned and served on the parties ex officio.  
(4) Where the contested order is a nnulled, the case shall be referred back to the Federal 
Patent Court for further proceedings and decision. The Federal Patent Court shall also base 
its decision on the legal assessment on which the annulment was based.  
Section 89a  
Remedy in case of an infr ingement of the right to be heard  
Upon the filing of a notice of defect by the party adversely affected by the decision, the 
proceedings shall be continued if the court has violated this party’s right to be heard in a 
manner which has a decisive influence on the decision. A notice of defect shall not be an 
available remedy against a decision given prior to the final decision. Section 321a (2) to (5) 
of the Code of Civil Procedure shall apply accordingly.  
Section 90  
Ruling on costs  
(1) If several persons are  involved in the proceedings, the Federal Court of Justice may 
determine that the costs of the proceedings, including the costs incurred by the parties, in so 
far as they were necessary to appropriately safeguard the claims and rights, be imposed on 
one of  the parties in full or in part if this is equitable. Such a determination may also be made 
if the party in full or in part withdraws the appeal on points of law, the application for the trade 
mark, the opposition or the application for revocation or a dec laration of invalidity, or if the 
registration of the trade mark is in full or in part cancelled in the Register because of 
surrender or because of non -renewal of the duration of protection. In so far as a 
determination on the costs is not made, each party  shall bear the costs incurred by him.  
(2) If the appeal on points of law is refused or rejected as inadmissible, the costs caused by 
the appeal on points of law shall be imposed on the appellant. If a party has caused costs 
through gross negligence, they shall be imposed on him.  
(3) Costs may be imposed on the President of the German Patent and Trade Mark Office 
only if he or she has filed the appeal on points of law or brought motions in the proceedings.  
(4) In other respects, the provisions of the Code o f Civil Procedure concerning the procedure 
for the assessment of costs (sections 103 to 107) and compulsory enforcement based on 
orders assessing the costs (sections 724 to 802) shall apply accordingly.  
Chapter 7  
Joint provisions  
Section 91  
Re-establishmen t of rights  
(1) Any person who through no fault of his own was prevented from observing a time limit 
vis-à-vis the German Patent and Trade Mark Office or Federal Patent Court, where non -Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 37 of 62 observance of which causes a legal disadvantage in accordance with leg al provisions, shall 
have his rights re -established upon request.  This shall not apply to the time limit for filing an 
opposition and for paying the opposition fee (section 6 (1) sentence 1 of the Patent Costs 
Act). 
(2) The re -establishment of rights shall  be requested within two months of removal of the 
cause of non -compliance.  
(3) The request shall state the facts on which the re -establishment of rights is based. These 
facts shall be substantiated when the request is filed or in the proceedings concerning  the 
request.  
(4) The omitted act shall be completed within the period for making the request. Where this 
is done, the re -establishment of rights may also be granted without request.  
(5) The re -establishment of rights can no longer be requested and the omi tted act no longer 
be completed one year after the expiry of the period which was not observed.  
(6) The unit competent to decide on the completed act shall decide on the request.  
(7) The re -establishment of rights shall be final.  
(8) Where the proprietor o f a trade mark has his rights re -established, he may not invoke 
rights with regard to these acts vis -à-vis third parties who, in good faith, have put goods on 
the market or supplied services under a sign identical with or similar to the trade mark in the 
course of the period between the loss of the right in the registration of the trade mark and the 
re-establishment of rights.  
Section 91a  
Further treatment of the application  
(1) Where the trade mark application has been refused upon failure to comply with a  time 
limit set by the German Patent and Trade Mark Office, the decision shall become ineffective 
without the need for its express annulment if the applicant requests further processing of the 
application and completes the omitted act.  
(2) The request shal l be filed within one month of service of the decision to refuse the trade 
mark application. The omitted act shall be subsequently carried out within this period.  
(3) Re -establishment of rights shall be ruled out in respect of non -observance of the period 
under subsection (2) and the period for payment of the further processing fee under section 
6 (1) sentence 1 of the Patent Costs Act.  
(4) The unit competent to decide on the completed act shall decide on the request.  
Section 92  
Obligation to tell the truth  
In proceedings before the German Patent and Trade Mark Office, the Federal Patent Court 
and the Federal Court of Justice, the parties shall make their statements on facts and 
circumstances in full and truthfully.  
Section 93  
Official language and court lan guage  
The language before the German Patent and Trade Mark Office and the Federal Patent 
Court shall be German. In other respects, the provisions of the Courts Constitution Act on 
the court language shall apply.  
Section 93a  
Compensation of witnesses, remun eration of expert witnesses  
Witnesses shall receive compensation and experts shall receive remuneration pursuant to 
the Justice Remuneration and Compensation Act (Justizvergütungs - und -
entschädigungsgesetz).  
Section 94  
Service, authorisation to issue stat utory instruments  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 38 of 62 (1) The provisions of the Act on Service in Administrative Procedures 
(Verwaltungszustellungsgesetz) shall apply to service in proceedings before the German 
Patent and Trade Mark Office subject to the following conditions:  
1. Service on a ddressees who are staying abroad and who, contrary to the 
requirement under section 96, have not appointed a representative in Germany may be 
effected by posting a registered letter. The same shall apply accordingly  to addressees 
who themselves are represe ntatives in Germany within the meaning of section 96 (2). 
Section 184 (2) sentences  1 and 4 , of the Code of Civil Procedure shall apply 
accordingly . 
2. Section 5 (4) of the Act on Service in Administrative Procedures shall apply 
accordingly  to service on h olders of a certificate of representation (section 177 of the 
Patent Attorney Code [Patentanwaltsordnung]).  
3. Service on addresses for whom a post box has been set up at the German 
Patent and Trade Mark Office may also be effected by depositing the docume nt in the 
addressee’s post box. A record of the deposit shall be added to the files. A note shall be 
made on the document of the date when it was deposited. Service shall be deemed to 
have been effected on the third day following deposit in the post box.  
4. Electronic documents shall be served by a transmission route which guarantees 
the authenticity and integrity of the data and which, when using generally accessible 
networks, ensures the confidentiality of the data to be transmitted by means of an 
encrypt ion method. The Federal Ministry of Justice and Consumer Protection shall issue 
by statutory instrument, not requiring the consent of the Bundesrat, more detailed 
provisions on the appropriate routes of transmission referred to in sentence 1 as well as 
on the format of and the documentation proving electronic service.  
(2) The provisions of the Code of Civil Procedure shall apply to service in proceedings before 
the Federal Patent Court.  
Section 95  
Judicial assistance  
(1) The courts shall be obliged to provi de judicial assistance to the German Patent and 
Trade Mark Office.  
(2) In proceedings before the German Patent and Trade Mark Office, the Federal Patent 
Court shall, upon the request of the German Patent and Trade Mark Office, impose 
administrative penalti es and measures of compulsion on witnesses or experts who fail to 
appear or who refuse to give evidence or to give evidence under oath. In like manner, a 
warrant shall be issued for a witness who has failed to appear to be brought before the court.  
(3) A B oard of Appeal at the Federal Patent Court sitting in a composition of three legally 
qualified members shall decide on the request in accordance with subsection (2). The 
decision shall be given by order.  
Section 95a  
Electronic conduct of proceedings, autho risation to issue statutory instruments  
(1) In so far as the written form is required in proceedings before the German Patent and 
Trade Mark Office in respect of applications, requests or other acts, the provisions contained 
in section 130a (1), (2) senten ce 1, (5), and (6) of the Code of Civil Procedure shall apply 
accordingly.  
(2) The case files of the Federal Patent Court and of the Federal Court of Justice may be 
kept in electronic form. The provisions of the Code of Civil Procedure on electronic 
docume nts, the electronic file and the electronic conduct of proceedings shall apply 
accordingly in other respects, unless otherwise provided by this Act.  
(3) The Federal Ministry of Justice and Consumer Protection shall, by statutory instrument  
not requiring th e consent of the Bundesrat, determine  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 39 of 62 1. the date from when electronic documents may be submitted to the German 
Patent and Trade Mark Office and the courts, the appropriate form for processing the 
documents, whether an electronic signature shall be used an d the form of such signature;  
2. the date from when the case files may be kept in electronic form in accordance 
with subsection (2), as well as the applicable general organisational and technical 
conditions for the creation, keeping and storage of the elec tronic case files.  
Section 96  
Domestic representative  
(1) Any person who has neither their residence nor principal place of business nor an 
establishment in Germany may participate in the proceedings before the German Patent and 
Trade Mark Office or the Fe deral Patent Court which are regulated under this Act and assert 
the rights deriving from a trade mark only if he has appointed as his representative a lawyer  
or patent attorney who is entitled and authorised to represent him in proceedings before the 
Germ an Patent and Trade Mark Office, before the Federal Patent Court and in civil litigation 
affecting this trade mark, as well as to file an application for criminal prosecution.  
(2) The place where a representative appointed pursuant to subsection (1) has hi s 
commercial premises shall be deemed, within the meaning of section 23 of the Code of Civil 
Procedure, to be the place where the asset is located; if there are no such commercial 
premises, the place where the representative is residing in Germany shall be  decisive or, if 
there is no such place, the place where the German Patent and Trade Mark Office has its 
seat.  
(3) The legal termination of the appointment of a representative in accordance with 
subsection (1) shall not become effective until the German Pa tent and Trade Mark Office or 
the Federal Patent Court has been informed of both the termination of this appointment and 
the appointment of another representative.  
Section 96a  
Legal protection in case of excessively long court proceedings  
The provisions of  the Seventeenth Title of the Courts Constitution Act shall apply accordingly 
to proceedings before the Federal Patent Court and the Federal Court of Justice.  
Part 4  
Collective marks  
Section 97  
Collective marks  
(1) All signs eligible for protection as a tr ade mark within the meaning of section 3 may be 
registered as collective marks if they are liable to distinguish the goods or services of the 
members of the proprietor of the collective mark from those of other enterprises in terms of 
their origin from a g iven enterprise or their geographical origin, their nature, quality or other 
properties. A collective mark shall be described as such when the mark is applied for.  
(2) The provisions of this Act shall apply to collective marks unless otherwise provided in this 
Part.  
Section 98  
Proprietorship  
The proprietor of collective marks that have been filed or registered can only be associations 
of manufacturers, producers, suppliers of services, or traders, including the umbrella 
associations and central associations  whose members themselves are associations which 
have the capacity in their own name to have rights and obligations, to make contracts or 
accomplish other legal acts and to sue and be sued in a court of law. Legal persons under 
public law shall be deemed t o be equivalent to these associations.  
Section 99  
Eligibility for registration of indications of geographical origin as collective marks  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 40 of 62 In derogation from section 8 (2) no. 2, collective marks may consist exclusively of signs or 
indications which, in trad e, may serve as a designation of the geographical origin of the 
goods or services.  
Section 100  
Restrictions of protection, use  
(1) In addition to the restrictions of protection emerging from section 23, the registration of an 
indication of geographical ori gin as a collective mark shall not provide for the proprietor the 
right to prohibit a third party from using such indications in trade in so far as the use 
corresponds to the accepted principles of morality and is not contrary to section 127. In 
particular , such a mark shall not be invoked against a third party who is entitled to use a 
geographical name.  
(2) The genuine use of a collective mark by at least one person authorised to do so, or by 
the proprietor of the collective mark, shall be deemed to consti tute use within the meaning of 
section 26.  
Section 101  
Right of action, compensation  
(1) Unless otherwise provided in the regulations governing use of the collective mark, a 
person authorised to use the collective mark may lodge an infringement action of a  collective 
mark only with the consent of its proprietor.  
(2) The proprietor of the collective mark may also demand compensation for the damage 
which was incurred by the persons entitled to use the collective mark from the unauthorised 
use of the collectiv e mark or of a similar sign.  
Section 102  
Regulations governing use of the collective mark  
(1) The application for the collective mark must include regulations governing use of the 
collective mark.  
(2) The regulations governing use of the collective mark mu st contain at least:  
1. the name and principal place of business of the association;  
2. the purpose and representation of the association;  
3. prerequisites for membership;  
4. indications regarding the group of persons entitled to use the collective mark;  
5. the prerequisites for the use of the collective mark; and  
6. indications regarding the rights and obligations of the parties in the case of 
infringements of the collective mark.  
(3) If the collective mark consists of an indication of geographical origin,  the regulations must 
provide that any person whose goods or services originate from the corresponding 
geographical territory and comply with the conditions contained in the regulations governing 
use of the collective mark may become a member of the associ ation and is to be included in 
the group of persons entitled to use the collective mark.  
(4) The regulations governing use of the collective mark shall be recorded in the Register.  
(5) Inspection of the regulations governing use of the collective mark shal l be open to 
everyone.  
Section 103  
Examination of the application  
(1) The application for a collective mark shall also be refused, in addition to cases falling 
under section 37, if it does not comply with the prerequisites of section 97, 98 or 102 or if th e Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 41 of 62 regulations governing use of the collective mark are contrary to public policy or to accepted 
principles of morality.  
(2) The application for a collective mark shall also be refused if the public is liable to be 
misled as regards the character or the sig nificance of the mark, in particular if it is likely to be 
taken to be something other than a collective mark.  
(3) The application for a collective mark shall not be refused if the applicant amends the 
regulations governing use of the collective mark such that the grounds for refusal of 
subsections 1 and 2 no longer exist.  
Section 104  
Amendment of the regulations governing use of the collective mark  
(1) The proprietor of the collective mark shall inform the German Patent and Trade Mark 
Office of any amendme nt to the regulations governing use of the collective mark.  
(2) Sections 102 and 103 shall apply accordingly in the case of an amendment to the 
regulations governing use of the collective mark.  
(3) For the purposes of this act, the amendment of the regulat ions governing use of the 
collective mark shall only take effect as from the date when the amendment is entered in the 
Register.   
(4) Written observations by third p arties in accordance with section 37 (6) sentence 2 may 
also be filed with respect to amended regulations governing use of the collective mark.  
Section 105  
Revocation  
(1) The registration of a collective mark shall be revoked on application and cancelled i n 
addition to the grounds for revocation listed in section 49  
1. if the proprietor of the collective mark no longer exists;  
2. if the proprietor of the collective mark does not take any suitable measures to 
prevent the collective mark from being used abusi vely in a manner contrary to the 
purposes of the association or the regulations governing use of the collective mark;  
3. if the manner in which the mark has been used by the authorised  persons has 
caused it to become liable to mislead the public in the ma nner referred to in section 103 
(2); or  
4. if an amendment to the regulations governing use of the collective mark has 
been entered in the Register contrary to section 104 (2), unless the proprietor of the 
collective mark once more amends the regulations g overning use of the mark such that 
the ground for cancellation no longer exists.  
(2) Abusive use within the meaning of subsection (1) no. 2 shall in particular be considered 
to have been committed if the use of the collective mark by persons other than tho se entitled 
to use is liable to mislead the public.  
(3) The application for revocation in accordance with subsection (1) shall be made to the 
German Patent and Trade Mark Office. The proceedings shall be governed by section 53.  
Section 106  
Invalidity becau se of absolute grounds for refusal  
(1) The registration of a collective mark shall be declared invalid on application and 
cancelled, in addition to the grounds for invalidity listed in section 50, if it has been registered 
contrary to section 103. If the g round for invalidity relates to the regulations governing use of 
the collective mark, the registration shall not be declared invalid and cancelled if the 
proprietor of the collective mark amends the regulations governing use of the collective mark 
such tha t the ground for invalidity no longer exists.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 42 of 62 (2) The application for a declaration of invalidity in accordance with subsection (1) shall be 
filed with the German Patent and Trade Mark Office. The procedure shall be governed by 
section 53.  
Part 5  
Certification marks  
Section 1 06a 
Certification marks  
(1) The proprietor of the certification mark shall certify in respect of the goods and services 
for which it was applied for, one or more of the following characteristics:  
1. the material;  
2. the mode of manufacture of goods or performance of services;  
3. the quality, accuracy or other characteristics, with the exception of geographical 
origin.  
The mark shall be capable of d istinguishing goods and services which are certified from 
goods and services which are not so certified. A certification mark shall be described as such 
when the mark is applied for.  
(2) The provisions of this Act shall apply to certification marks to the extent that this Part 
does not provide otherwise.  
Section 106b  
Proprietorship and genuine use  
(1) Any natural or legal person, including institutions, authorities and bodies governed by 
public law, may be proprietor of certification marks applied for or re gistered provided that 
such person does not carry on a business involving the supply of goods or services of the 
kind certified.  
(2) The genuine use of a certification mark by at least one person who has authority to use it 
shall be regarded as use within the meaning of section 26.  
Section 106c  
Right of action, compensation  
(1) Unless otherwise provided in the regulations governing use of the certification mark, a 
person authorised to use the certification mark may file an action for infringement of a 
certification mark only with the consent of its proprietor.  
(2) The proprietor of the certification mark shall also be entitled to claim compensation for the 
damage which the persons who have authority to use the certification mark have sustained 
in consequence  of the unauthorised use of the certification mark or of a similar sign.  
Section 106d  
Regulations governing use of the certification mark  
(1) The application for the certification mark must include regulations governing use of the 
certification mark.  
(2) The regulations governing use of the certification mark must contain at least:  
1. the name of the proprietor of the certification mark ; 
2. a declaration by the proprietor of the certification mark that he does not carry on 
a business involving the supply of  goods or services of the kind certified ; 
3. a representation of the certification mark ; 
4. indications regarding the goods and services to be certified ; 
5. indications regarding the characteristics of the goods or services to be covered 
by the certificati on; Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 43 of 62 6. prerequisites for use of the certification mark, in particular, sanctions;  
7 indications regarding the group of persons who have authority  to use the 
certification  mark ; 
8. indications regarding how the proprietor of the certification mark has to te st the 
characteristics covered by the certification  and to supervise the use of the mark;  
9. indications regarding the rights and obligations of the parties in the case of 
infringements of the  certification  mark.  
(3) The regulations governing use of the ce rtification mark shall be recorded in the Register.  
(4) Inspection of the regulations governing use of the certification mark shall be open to 
everyone.  
Section 106e  
Examination of the application  
(1) The application for a certification mark shall also be refused, in addition to cases falling 
under section 37, if it does not comply with the prerequisites of sections 106a, 106b (1) or 
106d or if the regulations governing use of the certification mark are contrary to public policy 
or to accepted principles of  morality.  
(2) The application for a certification mark shall also be refused if the public is liable to be 
misled as regards the character or the significance of the mark, in particular if it is likely to be 
taken to be something other than a certificatio n mark.  
(3) The application for a certification mark shall not be refused if the applicant amends the 
regulations governing use of the certification mark such that the grounds for refusal of 
subsections 1 and 2 no longer exist.  
Section 106f  
Amendment of th e regulations governing use of the certification mark  
(1) The proprietor of the certification mark shall inform the German Patent and Trade Mark 
Office of any amendment to the regulations governing use of the certification mark.  
(2) Sections 106d and 106e shall apply accordingly in the case of an amendment to the 
regulations governing use of the certification mark.  
(3) For the purposes of this Act, the amendment of the regulations governing use of the 
certification mark shall only take effect as from the da te on which the amendment is entered 
in the Register.   
(4) Written observations by third parties in accordance with section 37 (6) sentence 2 may 
also be filed with respect to amended regulations governing use of the certification mark.  
Section 106g  
Revocation  
(1) The registration of a certification mark shall be revoked on application and cancelled in 
the following cases, in addition to the grounds for revocation lis ted in section 49  
1. if the proprietor of the certification  mark does no longer comply with the 
requirements of section 106b ; 
2. if the proprietor of the certification  mark does not take any suitable measures to 
prevent the certification  mark from being us ed abusively in a manner contrary to the 
regulations governing use of the certification  mark;  
3. if the manner in which the certification mark has been used by the authorised  
persons has caused it to become liable to mislead the public pursuant to  section  106e 
(2); or  
4. if an amendment to the regulations governing use of the certification  mark has 
been entered in the Register contrary to section 10 6f (2) in accordance with section 106d Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 44 of 62 (3), unless the proprietor of the certification  mark once more amends the regulations 
governing use of the certification mark such that the ground for revocation  no longer 
exists.  
(2) Abusive use within the meaning of subsection (1) no. 2 shall in particular be considered 
to have been committed if the use of the certificatio n mark by persons other than those who 
have the authority to use is liable to deceive the public.  
(3) The application for revocation in accordance with subsection (1) shall be filed with the 
German Patent and Trade Mark Office. The proceedings shall be gov erned by section 53.  
Section 106h  
Invalidity because of absolute grounds for refusal  
(1) The registration of a certification mark shall be declared invalid on application and 
cancelled, in addition to the grounds for invalidity listed in section 50, if it has not been 
refused and has been registered contrary to section 106e. If the ground for invalidity relates 
to the regulations governing use of the certification mark, the registration shall not be 
declared invalid and cancelled if the proprietor of the ce rtification mark amends the 
regulations governing use of the certification mark such that the ground for invalidity no 
longer exists.  
(2) The application for a declaration of invalidity in accordance with subsection (1) shall be 
filed with the German Paten t and Trade Mark Office. The procedure shall be governed by 
section 53.   
Part 6  
Protection of trade marks in accordance with the Protocol Relating to the Madrid 
Agre ement; European Union trade marks  
Chapter 1  
Protection of trade marks in accordance with the Protocol Relating to the Madrid 
Agreement  
Section 107  
Application of the provisions of this Act; languages  
(1) The provisions of this Act shall apply accordingly t o international registrations of marks in 
accordance with the Protocol of 27 June 1989 Relating to the Madrid Agreement Concerning 
the International Registration of Marks (Federal Law Gazette 1995 II, p. 1016, 1017), last 
amended by the Ordinance of 24 Aug ust 2008 (Federal Law Gazette 2008 II, p. 822) 
(Protocol Relating to the Madrid Agreement) which are effected through the intermediary of 
the German Patent and Trade Mark Office or whose protection extends to the territory of the 
Federal Republic of German y, unless provided otherwise in this Chapter or in the Protocol 
Relating to the Madrid Agreement.  
(2) All requests as well as other communications in the proceedings of the international 
registration and the list of goods and services shall be submitted in  French or English, at the 
choice of the person making the request.  
Section 108  
Application for international registration  
(1) The application for the international registration of a mark for which an application has 
been made for entry in the Register or of a trade mark which is already entered in the 
Register in accordance with Article 3 of the Protocol Relating to the Madrid Agreement shall 
be filed with the German Patent and Trade Mark Office. The application may be filed prior to 
the registration of th e trade mark if the international registration is to be effected based on a 
trade mark entered in the Register.  
(2) If the international registration is to be effected on the basis of a trade mark that has been 
entered in the Register, and if the applicati on for international registration is filed prior to the 
registration of the trade mark in the Register, it shall be deemed to have been received on 
the date of the registration of the trade mark.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 45 of 62 (3) The list of goods and services shall be submitted with t he application, grouped into 
classes, in the order of the international classification of goods and services.  
Section 109  
Fees  
(1) If the international registration is to be effected on the basis of a trade mark entered in the 
Register, and if the applicat ion for international registration has been filed prior to the entry of 
the trade mark in the Register, the national fee in accordance with the Patent Costs Act for 
the international registration shall become due on the date of registration.  
(2) The nation al fee in accordance with the Patent Costs Act for the international registration 
shall be payable within one month after it becomes due. The due date is determined in 
accordance with section 3 (1) of the Patent Costs Act or in accordance with subsection ( 1). 
Section 110  
Note in the files, entry in the Register  
(1) If the international registration has been effected on the basis of a trade mark for which 
an application has been made for entry in the Register, the date and the number of the 
international reg istration shall be noted in the files of the trade mark applied for.  
(2) The date and the number of the international registration which has been effected on the 
basis of a trade mark that has been entered in the Register shall be entered in the Register. 
Sentence 1 shall also apply if the international registration was effected on the basis of a 
trade mark for which an application has been filed for entry in the Register and the 
application has resulted in a registration.  
Section 111  
Subsequent extension o f protection  
(1) The request for subsequent extension of protection of an international registration in 
accordance with Article 3 ter (2) of the Protocol Relating to the Madrid Agreement may be 
filed with the German Patent and Trade Mark Office. If protecti on on the basis of a trade 
mark entered in the Register is to be extended subsequently and if the request is already 
filed prior to the registration of the trade mark, it shall be deemed to have been received on 
the date of registration.  
(2) The national f ee in accordance with the Patent Costs Act for the subsequent extension of 
protection shall be payable within one month after becoming due (section 3 (1) of the Patent 
Costs Act).  
Section 112  
Effect of the international registration and the subsequent exte nsion of protection  
(1) The international registration or the subsequent extension of protection of a mark whose 
protection in accordance with Articles 3 and 3 ter of the Protocol Relating to the Madrid 
Agreement has been extended to the territory of the Fe deral Republic of Germany shall have 
the same effect as if the trade mark had been filed for recording and registered on the date 
of the international registration in accordance with Article 3 (4) of the Protocol Relating to the 
Madrid Agreement or on the date of the registration of subsequent extension of protection in 
accordance with Article 3 ter (2) of the Protocol Relating to the Madrid Agreement in the 
Register kept by the German Patent and Trade Mark Office.  
(2) The effect referred to in subsection (1 ) shall be deemed not to have accrued if the 
international registration is refused protection in accordance with sections 113 to 115.  
Section 113  
Examination for absolute grounds for refusal  
(1) International registrations shall be examined for absolute gr ounds for refusal in 
accordance with section 37 in the same way as trade marks whose recordal in the Register 
has been applied for. Section 37 (2) shall not apply.  
(2) The refusal of protection shall take the place of the refusal of the application (sectio n 37 
(1)). Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 46 of 62 Section 114  
Opposition against an international registration  
(1) For international registrations, publication in the Gazette published by the International 
Bureau of the World Intellectual Property Organization shall take the place of the public ation 
of the registration (section 41 (2)).  
(2) The time limit to file the opposition (section 42 (1)) against the grant of protection for 
international registrations shall start on the first day of the month following the month stated 
as the issue month o f the Gazette issue containing the publication of the international 
registration.  
(3) Refusal of protection shall take the place of the cancellation of the registration (section 43 
(2) sentence 1).  
Section 115  
Invalidation  
(1) For international registratio ns, the request or the action for invalidation shall take the 
place of the application (section 49) or the action (section 55) for revocation of a trade mark 
or the application for a declaration of invalidity because of absolute grounds for refusal 
(sectio n 50) or the application or the action for a declaration of invalidity because of the 
existence of earlier rights (section 51).  
(2) In the case of the request or the action for invalidation for non -use in accordance with 
section 49 (1) or section 55,  
1. the date on which the procedure of extension of protection was concluded  or  
2. the date on which the time limit contained in Article 5 (2a) of the Protocol 
Relating to the Madrid Agreement expired if at that time neither a statement of grant of 
protection  nor a notification of provisional refusal of protection has been received  by the 
International Bureau of the World Intellectual Property Organization  
shall take the place of the date from which opposition to the trade mark is no longer possible.  
Section 116  
Opposition because of an international registration and application or action for a 
declaration of invalidity because of an international registration  
(1) If an opposition has been filed against the registration of a trade mark because of an 
international  registration, section 43 (1) shall apply provided that one of the dates referred to 
in section 115 (2) shall take the place of the date from which opposition to the trade mark 
was no longer possible.  
(2) If an application for a declaration of invalidity o f a registered trade mark is filed in 
accordance with section 51 or such an action is brought because of an international 
registration, section 53 (6) and section 55 (3) shall apply provided that one of the dates 
referred to in section 115 (2) shall take t he place of the date from which opposition to the 
trade mark was no longer possible.  
Section 117  
Exclusion of rights for non -use 
If rights within the meaning of sections 14 and 18 to 19c are asserted because of the 
infringement of an international registra tion, section 25 shall apply provided that one of the 
dates referred to in section 115 (2) shall take the place of the date from which opposition to 
the trade mark was no longer possible.  
Section 118  
Transformation of an international registration  
(1) If a n application is filed with the German Patent and Trade Mark Office in accordance 
with Article 9 quinquies  of the Protocol Relating to the Madrid Agreement for transformation 
of a trade mark that has been cancelled in the International Register in accordanc e with 
Article 6 (4) of the Protocol Relating to the Madrid Agreement, and if the application is Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 47 of 62 received by the German Patent and Trade Mark Office with the necessary indications within 
a period of three months after the date of the cancellation of the tr ade mark in the 
International Register, the date of the international registration of this mark in accordance 
with Article 3 (4) of the Protocol Relating to the Madrid Agreement or the date of the 
registration of the subsequent extension of protection in a ccordance with Article 3 ter (2) of 
the Protocol Relating to the Madrid Agreement, where appropriate with the priority claimed 
for the international registration, shall be relevant for the purposes of establishing seniority 
within the meaning of section 6 ( 2). 
(2) The person filing the application shall submit a certificate from the International Bureau of 
the World Intellectual Property Organization designating the trade mark and the goods or 
services for which the protection of the international registrati on extended to the Federal 
Republic of Germany prior to its cancellation in the International Register.  
(3) The person filing the application shall furthermore submit a German translation of the list 
of goods or services for which the registration is reque sted.  
(4) In other respects, the application for transformation shall be treated in the same way as 
an application to register a trade mark. If, however, on the date of the cancellation of the 
trade mark in the International Register the time limit in acco rdance with Article 5 (2a) of the 
Protocol Relating to the Madrid Agreement to refuse protection had already expired, and if 
no proceedings were pending on this day to refuse protection or for invalidation, the trade 
mark shall be directly entered in the R egister in accordance with section 41 (1) with no prior 
examination. No opposition may be filed against the registration of a trade mark in 
accordance with sentence 2.  
Chapter 2  
European Union trade marks  
Section 119  
Application of the provisions of this A ct 
The provisions of this Act shall apply to trade marks which have been filed or registered in 
accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council 
of 14 June 2017 on the European Union trade mark (OJ L 154 of 16 June 20 17, p. 1) in the 
cases of nos. 1 and 2 directly and in the cases of nos. 3 to 6 accordingly as follows:  
1. For the application of section 9 (relative grounds for refusal), earlier European 
Union trade marks filed or registered shall be deemed equivalent to  the earlier trade 
marks filed or registered in accordance with this Act, but with the proviso that having a 
reputation in Germany in accordance with section 9 (1) no. 3 shall be replaced with 
having a reputation in the European Union in accordance with Ar ticle 9 (2) (c) of 
Regulation (EU) 2017/1001 . 
2. In addition to the rights in accordance with Articles 9 to 13 of Regulation (EU) 
2017/1001 , the proprietor of a registered European Union trade mark shall be entitled to 
the rights to compensation (section 1 4 (6) and ( 7)), destruction and recall (section 18), 
information (section 19), production and inspection (section 19a), securing of 
compensation claims (section 19b) and publication of judgments (section 19c).  
3. If rights from a registered European Union trade mark are asserted against the 
use of a later trade mark registered in accordance with this Act, section 21 (1) shall apply 
accordingly . 
4. If an opposition to the registration of a trade mark (section 42) is based on an 
earlier registered European Un ion trade mark, section 43 (1) shall apply accordingly  with 
the proviso that the use of the earlier European Union trade mark in accordance with 
Article 1 8 of Regulation (EU) 2017/1001  shall take the place of the use of the earlier trade 
mark in accordance  with section 26.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 48 of 62 5. If an application  (section 53 (1)) or an action (section 55 (1)) for revocation or a 
declaration of invalidity of  the registration of a trade mark is based on an earlier 
registered European Union trade mark,  
a) section 51 (2) sentence  1 shall apply accordingly ; 
b) section 5 3 (6) and section 55 (3) shall apply accordingly  with the proviso that 
the use of the European Union trade mark in accordance with Article 1 8 of 
Regulation (EU) 2017/1001 shall take the place of the use of the earlier  trade 
mark in accordance with section 26.  
6. Requests for seizure on import and export may be filed by proprietors of 
registered European Union trade marks in the same manner as by proprietors of trade 
marks registered in accordance with this Act ; section s 146 to 149 shall apply accordingly . 
Section 120  
Subsequent determination of the invalidity (Ungültigkeit) of a trade mark  
(1) If the seniority of a trade mark that has been entered in the Register of the German 
Patent and Trade Mark Office has been claim ed in accordance with Article 39 or 40 of the 
Regulation on the European Union trade mark for a European Union trade mark which has 
been filed or registered, and if the trade mark that has been entered in the Register of the 
German Patent and Trade Mark Of fice has been cancelled because of non -renewal of the 
duration of protection in accordance with section 47 (8) or because of surrender in 
accordance with section 48 (1), on request the invalidity (Ungültigkeit) of this trade mark may 
be subsequently found because of revocation or because of invalidity. In this case, the 
seniority has no effect.  
(2) The finding of invalidity (Ungültigkeit) shall take place subject to the same prerequisites 
as revocation or a declaration of invalidity. However, the invalidity  (Ungültigkeit) of a trade 
mark because of revocation in accordance with section 49 (1) may only be found if the 
prerequisites for revocation in accordance with this provision also already applied at the time 
when the trade mark was cancelled because of no n-renewal of the duration of protection or 
because of surrender.  
(3) The proceedings for a finding of invalidity (Ungültigkeit) shall be in accordance with the 
provisions applicable to revocation and invalidity proceedings of a registered trade mark, 
with the proviso that the finding of its invalidity (Ungültigkeit) shall take the place of 
revocation or a declaration of invalidity.  
Section 121  
Conversion of European Union trade marks  
(1) If a request for conversion of a European Union  trade mark applied for  or registered has 
been transmitted to the German Patent and Trade Mark Office in accordance with Article 139 
(3) of the Regulation on the European Union  trade mark, the fee and the class fees in 
accordance with the Patent Costs Act for the conversion proc eedings shall become due on 
receipt of the request for conversion by the German Patent and Trade Mark Office.  
(2) If the conversion request relates to a trade mark which was not yet registered as a 
European Union  trade mark, the conversion request shall be  treated in the same way as the 
application for entry of a trade mark in the Register of the German Patent and Trade Mark 
Office, with the proviso that the date of filing of the European Union  trade mark in 
accordance with Article 32 of the Regulation on t he European Union trade mark or the date 
of a priority claimed for the European Union  trade mark shall take the place of the date of 
filing in accordance with section 33 (1). If the seniority of a trade mark entered in the 
Register of the German Patent and  Trade Mark Office had been claimed for the application 
for the European Union  trade mark in accordance with Article 39 of the Regulation on the 
European Union  trade mark, this seniority shall take the place of the date that is relevant in 
accordance with sentence 1.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 49 of 62 (3) If the conversion request relates to a trade mark which was already registered as a 
European Union  trade mark, the German Patent and Trade Mark Office shall directly enter 
the trade mark in the Register with no further examination in accord ance with section 41 (1), 
retaining its original seniority. No opposition may be lodged against the registration.  
(4) In other respects, the provisions of this Act for the application of trade marks shall apply 
to conversion requests.  
Section 122  
European Union trade mark disputes; European Union trade mark courts  
(1) The regional courts shall have exclusive jurisdiction as European Union trade mark 
courts of first instance for all actions for which, in accordance with the Regulation on the 
European Union t rade mark, the European Union trade mark courts have jurisdiction within 
the meaning of Article 123 (1) of the Regulation on European Union trade marks (European 
Union trade mark litigation), irrespective of the value in dispute.  
(2) The European Union tra de mark court of second instance shall be the higher regional 
court (Oberlandesgericht) in whose district the European Union trade mark court of first 
instance has its seat.  
(3) The Land (federal state) governments shall be authorised to assign, by statuto ry 
instrument, European Union trade mark litigation cases for the districts of more than one 
European Union trade mark court to one such court. The Land governments may delegate 
this authorisation to the Land departments of justice by statutory instrument.  
(4) The Länder may, by agreement, delegate duties incumbent upon the European Union 
trade mark courts of one Land to the competent European Union trade mark court of another 
Land, in whole or in part.  
(5) Section 140 (4) and section 142 shall apply accord ingly to proceedings before the 
European Union trade mark courts.  
Section 123  
Communication to the European Commission  
The Federal Ministry of Justice and Consumer Protection shall communicate to the 
Commission of the European Communities the European Unio n trade mark courts of first 
and second instance as well as any change in the number, name or territorial jurisdiction of 
the European Union trade mark courts of first and second instance.  
Section 124  
Territorial jurisdiction of the European Union trade ma rk courts  
Where, in accordance with Article 125 of the Regulation on the European Union trade mark, 
German European Union trade mark courts have international jurisdiction, those provisions 
shall apply accordingly to the territorial jurisdiction of these c ourts which would be applicable 
if the application was an application for a trade mark filed with the German Patent and Trade 
Mark Office or the trade mark was a trade mark registered in the Register of the German 
Patent and Trade Mark Office. Where jurisd iction is not established on this basis, then the 
court shall have territorial jurisdiction with which the claimant has his general venue.  
Section 125  
Insolvency proceedings  
(1) If the insolvency court is aware that a European Union trade mark applied for or 
registered is part of the insolvency estate, it shall request the European Union Intellectual 
Property Office in the direct course of trade to register  
1. the opening of the proceedings and, unless already contained therein, the order 
of a restriction o n property transfers;  
2. the release or the sale of the European Union trade mark or of the application 
for the European Union trade mark;  
3. the final discontinuation of the proceedings; and  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 50 of 62 4. the stay on the proceedings, in the case of the supervision o f the debtor 
however only after termination of this supervision, and of a restriction on property 
transfers  
in the Register of European Union  trade marks or, if it is an application, in the files of the 
application.  
(2) The entry in the Register of Europea n Union trade marks or in the application files may 
also be requested by the insolvency administrator. In the case of debtor’s personal 
management (section 270 of the Insolvency Statute), the insolvency custodian shall take the 
place of the insolvency admi nistrator.  
Section 125a  
Order for enforcement  
The Federal Patent Court shall have jurisdiction to issue the order for enforcement in 
accordance with Article 110 (2) sentence 3, of the Regulation on the European Union trade 
mark. The enforceable execution c opy shall be issued by the registry clerk at the registry of 
the Federal Patent Court.  
Part 7  
Indications of geographical origin  
Chapter 1  
Protection of indications of geographical origin  
Section 126  
Names, indications or signs protected as indications of geographical origin  
(1) Indications of geographical origin within the meaning of this Act shall be the names of 
places, areas, territories or countries as well as other indications or signs which are used in 
trade to identify the geographical origin of goo ds or services.  
(2) Names, indications or signs within the meaning of subsection (1) which are generic 
names shall not be eligible for protection as indications of geographical origin. Designations 
shall be regarded as generic names which contain an indica tion of the geographical origin 
within the meaning of subsection (1) or are derived from such an indication, but which have 
lost their original significance and serve as the name of goods or services or as designations 
or indications of the nature, quality , variety or other properties or characteristics of goods or 
services.  
Section 127  
Scope of protection  
(1) Indications of geographical origin may not be used in trade for goods or services which 
do not originate from the place, area, territory or country w hich is designated by the 
indication of geographical origin if it is likely to mislead concerning the geographical origin if 
such names, indications or signs for goods or services of different origin are used.  
(2) If the goods or services marked by an indi cation of geographical origin have special 
properties or a special quality, the indication of geographical origin may only be used in trade 
for the corresponding goods or services of this origin if the goods or services have these 
properties or this qualit y. 
(3) If an indication of geographical origin enjoys a particular reputation, it may not be used in 
trade for goods or services of a different origin even if it is not likely to mislead concerning 
the geographical origin if use provides without good cause  an opportunity for goods or 
services of a different origin to take unfair advantage of or be detrimental to the reputation of 
the indication of geographical origin or its distinctive character.  
(4) The above subsections shall also apply if names, indicati ons or signs are used which are 
similar to the protected indication of geographical origin or if the indication of geographical 
origin is used with additions in so far as  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 51 of 62 1. in cases falling under subsection (1), despite the deviation or the additions, it is 
likely to mislead concerning the geographical origin; or  
2. in cases falling under subsection (3), despite the deviation or the additions, it is 
suitable to take unfair advantage of or be detrimental to the reputation or the distinctive 
character of the  indication of geographical origin.  
Section 128  
Rights because of infringement  
(1) Any person who, in trade, uses names, indications or signs contrary to section 127 may 
be sued by persons entitled to assert claims in accordance with section 8 (3) of the A ct 
Against Unfair Competition for injunctive relief in the event of the risk of recurrent 
infringement. The right may also be asserted in the event of the risk of an infringement. 
Sections 18, 19, 19a and 19c shall apply accordingly.  
(2) Any person intenti onally or negligently acting contrary to section 127 shall be liable to pay 
compensation to the entitled party of the indication of geographical origin for the damage 
incurred by the infringement. In assessing the compensation, consideration may also be 
given to the profit which the infringer has obtained by infringing the right. Section 19b shall 
apply accordingly.  
(3) Section 14 (7) and section 19d shall apply accordingly.  
Section 129  
Lapse  
Rights in accordance with section 128 shall lapse in accordance w ith section 20.  
Chapter 2  
Protection of geographical indications and designations of origin in accordance with 
Regulation (EU) No 1151/2012  
Section 130  
Proceedings before the German Patent and Trade Mark Office; national opposition 
proceedings  
(1) Applicat ions for the registration of a geographical indication or of a designation of origin in 
the Register of protected designations of origin and of protected geographical indications 
which is maintained by the European Commission in accordance with Article 11 of the 
Regulation (EU) No 1151/2012 of the European Parliament and the Council of 21 November 
2012 on quality schemes for agricultural products and foodstuffs (OJ L 343 of 14 December 
2012, p. 1) in its respectively applicable version, shall be filed with the German Patent and 
Trade Mark Office.  
(2) The Trade Mark Divisions established at the German Patent and Trade Mark Office shall 
have competence for the proceedings as regulated in this Chapter.  
(3) When examining the application, the German Patent and T rade Mark Office shall ask for 
the opinions of the Federal Ministry of Food and Agriculture, of the competent specialist 
ministries of the Länder in question, of the interested public corporations as well as those of 
the interested associations and industr y organisations.  
(4) The German Patent and Trade Mark Office shall publish the application. An opposition 
may be lodged with the German Patent and Trade Mark Office against the application within 
two months of publication by any person with a legitimate in terest who is based or resides in 
the territory of the Federal Republic of Germany.  
(5) If the application meets the requirements of Regulation (EU) No 1151/2012 and complies 
with the provisions issued for its implementation, the German Patent and Trade Ma rk Office 
shall find this by decision. Otherwise, the application shall be refused by decision. The 
German Patent and Trade Mark Office shall publish the favourable decision. Should there be 
major alterations to the indications published in accordance with  subsection (4), these shall 
be published together with the granting decision. The decision in accordance with sentence Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 52 of 62 1 and in accordance with sentence 2 shall be served on the applicant and on those who 
lodged oppositions by the time limit.  
(6) If it is  found with legal force that the application complies with the requirements of 
Regulation (EU) No 1151/2012 and of the provisions issued for its implementation, the 
German Patent and Trade Mark Office shall inform the applicant hereof and shall transmit 
the application to the Federal Ministry of Justice and Consumer Protection with the 
necessary documents. Further, the German Patent and Trade Mark Office shall publish the 
version of the specification to which the positive decision refers. The Federal Minist ry of 
Justice and Consumer Protection shall transmit the application to the European Commission 
with the necessary documents.  
(7) If the specification has been amended during the registration procedure at the European 
Commission, the German Patent and Trad e Mark Office shall publish the version of the 
specification on which the registration is based.   
Section 131  
Intergovernmental opposition procedure  
(1) Notices of o pposition in accordance with Article 51 (1) subparagraph 2 of Regulation (EU) 
No 1151/2012 against the intended entry of geographical indications or designations of origin 
in the Register kept by the European Commission of the protected designations of ori gin and 
of the protected geographical indications shall be lodged with the German Patent and Trade 
Mark Office within two months from the publication, which is effected in the Official Journal of 
the European Union in accordance with Article 50 (2) of Regu lation (EU) No 1151/2012.  
(2) The payment time limit for the opposition fee shall be determined in accordance with 
section 6 (1) sentence 1 of the Patent Costs Act. There shall be no re -establishment of rights 
of the opposition time limit or of the time li mit for payment of the opposition fee.  
Section 132  
Request for a change to the specification, cancellation proceedings  
(1) Sections 130 and 131 shall apply accordingly to requests to change the specification of a 
protected geographical indication or of a p rotected designation of origin in accordance with 
Article 53 (2) sentence 1 of Regulation (EU) No 1151/2012.  
(2) Sections 130 and 131 shall apply accordingly to requests for the cancellation of a 
protected geographical indication or of a protected designa tion of origin in accordance with 
Article 54 (1) of Regulation (EU) No 1151/2012.  
Section 133  
Appellate remedies  
The appeal to the Federal Patent Court and the appeal on points of law to the Federal Court 
of Justice shall be available against decisions tak en by the German Patent and Trade Mark 
Office in accordance with the provisions contained in this Chapter. Those persons who have 
lodged an opposition against the application in due time or whose legitimate interest is 
affected by the granting decision on the basis of the altered indications published in 
accordance with section 130 (5) sentence 4 shall be entitled to lodge an appeal against a 
decision in accordance with section 130 (5) sentence 1. In other respects, the provisions of 
this Act on the appeal proceedings before the Federal Patent Court (sections 66 to 82) and 
on proceedings on the appeal on points of law before the Federal Court of Justice (sections 
83 to 90) shall apply accordingly.  
Section 134  
Supervision  
(1) The monitoring and controls requi red in accordance with Regulation (EU) No 1151/2012 
and the provisions issued for its implementation shall be incumbent on the agencies 
competent in accordance with Land law.  
(2) In so far as is necessary for supervision and verification within the meaning  of subsection 
(1), the commissioners of the competent agencies may with operations marketing or Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 53 of 62 producing agricultural products or foodstuffs (section 3 (1) no. 1 of the Food and Feed Code 
[Lebensmittel - und Futtermittelgesetzbuch]) or transferring, impor ting or exporting them 
within the European Union, during opening or operating hours  
1. enter business premises and land, sales facilities and means of transport and 
carry out inspections there;  
2. take samples in return for a receipt; at the request of the  party, a part of the 
sample or, if it is indivisible, a second sample shall be left behind officially closed and 
sealed;  
3. inspect and examine business documents;  
4. request information.  
These powers shall also cover agricultural products or foodstuffs w hich are put on the 
market in public places, in particular in markets, places and streets or by peddling.  
(3) The proprietors or managers of the establishments shall be obliged to permit entry to the 
business premises and land, sales facilities and means o f transport as well as the 
inspections to be carried out there, to present the agricultural products or foodstuffs to be 
inspected themselves or through others such that the inspection can be carried out properly, 
to provide the necessary assistance in ins pections themselves or through others, to have the 
samples taken, to submit and have examined the corporate documents, and to provide the 
information.  
(4) If the supervision takes place on import or export, subsections (2) and (3) shall apply 
accordingly a lso to the party who transfers, imports or exports the agricultural products or 
foodstuffs for the proprietor of the establishment within the EU.  
(5) The party obliged to provide information may refuse to provide the information with 
regard to those questi ons whose answering would expose him or a relative designated in 
section 383 (1) nos. 1 to 3 of the Code of Civil Procedure to the risk of criminal prosecution 
or of proceedings in accordance with the Act on Regulatory Offences.  
(6) Cost -covering fees and expenses shall be charged for official acts which are to be carried 
out in accordance with Article 37 (1) of Regulation (EU) No 1151/2012 for the purposes of 
verification. The elements subject to a fee shall be determined by Land law.  
Section 135  
Rights be cause of infringement  
(1) Any person who carries out acts in trade contrary to Article 13 of Regulation (EU) No 
1151/2012 may be sued by the party entitled to assert rights in accordance with section 8 (3) 
of the Act Against Unfair Competition for injuncti ve relief if there is a risk of recurrence. This 
right may also be asserted in the event of the risk of a first -time infringement. Sections 18, 
19, 19a and 19c shall apply accordingly.  
(2) Section 128 (2) and (3) shall apply accordingly.  
Section 136  
Lapse  
The rights in accordance with section 135 shall lapse in accordance with section 20.  
Chapter 3  
Authorisation to issue statutory instruments  
Section 137  
More detailed provisions on the protection of individual indications of geographical 
origin  
(1) The Fede ral Ministry of Justice and Consumer Protection is herewith authorised to make 
more detailed provisions, in agreement with the Federal Ministry for Economic Affairs and 
Energy and the Federal Ministry of Food and Agriculture, by statutory instrument  with t he 
consent of the Bundesrat on individual indications of geographical origin.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 54 of 62 (2) The statutory instrument  can regulate  
1. by referring to political or geographical borders, the region of origin;  
2. the quality or other properties within the meaning of sec tion 127 (2) as well as 
the circumstances relevant thereto, such as in particular the procedure or the nature of 
the manufacture or production of the goods or of the provision of the services or quality or 
other properties of the basic material used such a s their origin; and  
3. the nature of the use of the indication of geographical origin.  
The previous fair practices, habits and customs in the use of the indication of geographical 
origin shall be taken into consideration when preparing regulations.  
Section  138 
Other provisions for the proceedings in applications and oppositions in accordance 
with Regulation (EU) No 1151/2012  
(1) The Federal Ministry of Justice and Consumer Protection is herewith authorised to make 
more detailed provisions regarding the appl ication, opposition, amendment and cancellation 
proceedings (sections 130 to 132) by statutory instrument  not requiring the consent of the 
Bundesrat.  
(2) The Federal Ministry of Justice and Consumer Protection may, by statutory instrument 
not requiring the  consent of the Bundesrat, delegate the authorisation to the German Patent 
and Trade Mark Office, in whole or in part, to issue statutory instruments in accordance with 
subsection (1).  
Section 139  
Provisions transposing Regulation (EU) No 1151/2012; author isation to issue 
statutory instruments  
(1) The Federal Ministry of Justice and Consumer Protection is herewith authorised in 
agreement with the Federal Ministry for Economic Affairs and Energy and the Federal 
Ministry of Food and Agriculture by statutory i nstrument  with the consent of the Bundesrat to 
regulate further details of the protection of designations of origin and geographical 
indications in accordance with Regulation (EU) No 1151/2012 in so far as the requirement 
therefor emerges from Regulation ( EU) No 1151/2012 or from the provisions issued by the 
Council or the European Commission for its implementation. In particular, provisions relating 
to 
1. the marking of agricultural products or foodstuffs,  
2. the entitlement to use the protected designatio ns, or  
3. the prerequisites and the procedure in supervision or inspection in intra -
Community transfer or in import and export  
may be issued in statutory instruments  in accordance with sentence 1. Statutory instruments  
in accordance with sentence 1 may als o be issued if the Member States are authorised in 
accordance with the provisions of Community law listed therein to issue supplementary 
provisions.  
(2) The Land governments are herewith authorised by statutory instrument  to assign the 
performance of the i nspections necessary in accordance with Article 37 (1) of Regulation 
(EU) No 1151/2012 to approved private inspection agencies or to involve such agencies in 
the performance of these inspections. The Land governments may also regulate the 
prerequisites and  the procedure for the approval of private inspection agencies by statutory 
instrument. They shall be authorised to assign the authorisation in accordance with 
sentences 1 and 2 by statutory instrument to other authorities in whole or in part.  
Part 9  
Sign litigation proceedings  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 55 of 62 Section 140  
Sign litigation  
(1) The regional courts shall have exclusive jurisdiction, irrespective of the value in dispute, 
over all actions in which a claim from one of the legal relationships regulated under this Act 
is asserted ( disputes on signs).  
(2) The Land governments shall be authorised to assign, by statutory instrument, disputes on 
signs in whole or in part for the districts of more than one regional court to one such regional 
court in so far as this serves the factual adv ancement or more rapid conclusion of the 
proceedings. The Land governments may delegate this authorisation to the Land 
departments of justice. In addition, the Länder may, by agreement delegate duties incumbent 
upon the courts of one Land to the competent court of another Land, in whole or in part.  
(3) In order to secure the claims for injunctive relief specified in this Act, iterim injunctions 
may also be issued without presentation and substantiation of the requirements specified in 
sections 935 and 940 o f the Code of Civil Procedure.  
(4) In respect of the costs arising from the participation of a patent attorney in a dispute on a 
sign, fees pursuant to section 13 of the Act on the Remuneration of Lawyers as well as the 
necessary expenses of the patent att orney shall be reimbursed.  
Section 141  
Place of jurisdiction for claims under this Act and under the Act Against Unfair 
Competition  
Claims in respect of legal relationships which are regulated under this Act and which are also 
based on the provisions of th e Act Against Unfair Competition shall not require to be 
asserted at the court venue referred to in section 14 of the Act Against Unfair Competition.  
Section 142  
Reduction of the value in dispute  
(1) Where a party substantiates in civil litigation in which  by means of an action a claim is 
asserted from one of the legal relationships regulated in this that the burden of the costs of 
the proceedings based on the full value in dispute would pose a substantial risk to his 
economic situation, the court may, upon  motion by that party, order that such party’s 
obligation to pay court costs shall be proportionate to a part of the value in dispute as 
adjusted to his economic situation.  
(2) The order in accordance with subsection (1) shall have the effect that the bene ficiary 
shall also have to pay the fees of his lawyer only in relation to this part of the value in 
dispute. In so far as the costs of the proceedings are imposed on such party or the latter 
assumes these costs, the party shall reimburse the court costs pa id by the opposing party 
and the fees of his lawyer only in relation to the part of the value in dispute. Where the extra -
judicial costs are imposed on the opposing party or are assumed by that party, the 
beneficiary’s lawyer may recover his fees from the opposing party in relation to such value in 
dispute as applies to the latter.  
(3) The motion in accordance with subsection (1) may be declared before and recorded with 
the court registry. It shall be made before the court hearing on the merits. Thereafter,  it shall 
be admissible only where the court subsequently increases the presumed or assessed value 
in dispute. The opposing party shall be heard before a decision is taken on the motion.  
Part 8  
Criminal and regulatory fine regulations, seizure on import an d export  
Chapter 1  
Criminal and regulatory fine regulations  
Section 143  
Punishable infringement of signs  
(1) Any person who, in trade, unlawfully  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 56 of 62 1. uses a sign contrary to section 14 (2) sentence 1 no. 1 or 2;  
2. uses a sign contrary to section 14 (2) sen tence 1 no. 3 with the intention to take 
advantage of or be detrimental to  the distinctive character or the repute of a trade mark 
which has a reputation;  
3. affixes a sign contrary to section 14 (4) no. 1 or offers, puts on the market, 
stocks, imports or exports contrary to section 14 (4) no. 2 or 3 a wrapping or packaging or 
a means of identification, in so far as to third parties the use of the sign  
a) would be prohibited in accordance with section 14 (2) sentence 1 no. 1 or 2; 
or 
b) would be prohibited in accordance with section 14 (2) sentence 1 no. 3 and 
the act is carried out with the intention of facilitating the taking advantage of or 
impairment of the distinctive character or the repute of a trade mark which has a 
reputation;  
4. uses a designation or a sign contrary to section 15 (2); or  
5. uses a designation or a sign contrary to section 15 (3) with the intention to take 
advantage of  or be detrimental to  the distinctive character or the repute of a commercial 
designation which has a reputation  
shall be liable to imprisonment of up to three years or a fine.  
(1a) (repealed)  
(2) If the offender acts on a commercial basis or as a member of a gang formed for the 
purpose of the continued commission of such offences in cases coming under subsection  
(1), th e penalty shall be imprisonment for between three months to five years.  
(3) An attempt shall be punishable.  
(4) In the cases referred to in subsection (1), the offence shall be prosecuted upon motion 
only, unless the criminal prosecution authorities consid er ex officio intervention imperative on 
account of the particular public interest in criminal prosecution.  
(5) Objects to which the criminal offence relates may be confiscated.  Section 74a of the 
Criminal Code (Strafgesetzbuch) shall apply. Where the clai ms to destruction referred to in 
section 18 are upheld in proceedings pursuant to the provisions of the Code of Criminal 
Procedure governing compensation for the aggrieved person (sections 403 to 406c of the 
Code of Criminal Procedure), the provisions on c onfiscation (sections 74 to 74f of the Code 
of Criminal Procedure) shall not apply.  
(6) Where a penalty is imposed, an order shall be made upon motion by the aggrieved party 
and upon demonstration of a legitimate interest to the effect that the conviction be made 
public upon demand.  The nature of the publication shall be laid down in the judgment.  
(7) (repealed)  
Section 143a  
Punishable infringement of a European Union trade mark  
(1) Any person who infringes the rights of the proprietor of a European Union t rade mark in 
accordance with Article 9 paragraph 1 of the Regulation on the European Union trade mark 
by using, in trade, despite a prohibition and without the consent of the trade mark proprietor,  
1. a sign that is identical to the European Union trade m ark for goods or services 
which are identical to those in respect of which it is registered;  
2. a sign if, because of the identity or similarity of the sign to the European Union 
trade mark and the identity or similarity of the goods or services covered by  the European 
Union trade mark and the sign, there is a likelihood of confusion for the public, including 
the likelihood of association with the trade mark; or  Service provided by the Federal Ministry of Justi ce 
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Page 57 of 62 3. a sign which is identical with or similar to the European Union trade mark for 
goods or servi ces which are not similar to those for which the European Union trade mark 
is registered if the latter has  a reputation in the Community and the sign is used with the 
intention without good cause to take unfair advantage of or be detrimental to the 
distinc tive character or the repute of the European Union trade mark  
shall be liable to imprisonment of up to three years or a fine.  
(2) Section 143 (2) to (6) shall apply accordingly.  
Section 144  
Punishable use of indications of geographical origin  
(1) Any perso n who, in trade, unlawfully uses an indication of geographical origin, a name, 
an indication or a sign  
1. contrary to section 127 (1) or (2), in each case also in conjunction with 
subsection (4), or of a statutory instrument  in accordance with section 137 (1); or  
2. contrary to section 127 (3), also in conjunction with subsection (4), or of a 
statutory instrument  in accordance with section 137 (1), with the intention to take 
advantage of  or be detrimental to  the reputation or distinctive character of an ind ication of 
geographical origin  
shall be liable to imprisonment of up to two years or a fine.  
(2) The same punishment shall be imposed on any person who, contrary to Article 13 (1) (a) 
or (b) of Regulation (EU) No 1151/2012 of the European Parliament and of  the Council of 21 
November 2012 on quality schemes for agricultural products and foodstuffs (OJ L 343 of 14 
December 2012, p. 1) in trade  
1. uses a registered name for a product listed therein, or  
2. adopts or imitates a registered name.  
(3) An attempt sh all be punishable.  
(4) In the case of a conviction, the court shall find that the unlawful marking of objects  in the 
possession of the convict shall be removed or, if this is not possible, the objects  shall be 
destroyed.  
(5) Where a penalty is imposed, and  if necessary in the public interest, an order shall be 
made to the effect that the conviction be made public. The nature of the publication shall be 
laid down in the judgment.  
(6) (repealed)  
Section 145  
Provisions relating to regulatory fines  
(1) Any pers on shall be deemed to have committed a regulatory offence who, in trade, 
unlawfully uses in an identical or imitated form  
1. a coat of arms, a flag or other state symbol or a coat of arms of a domestic 
locality or of a domestic municipal or local authority  association within the meaning of 
section 8 (2) no. 6;  
2. an official sign or hallmark indicating control or warranty within the meaning of 
section 8 (2) no. 7; or  
3. a sign, a seal or a designation within the meaning of section 8 (2) no. 8  
to mark goods or services.  
(2) Any person shall be deemed to have committed a regulatory offence who intentionally or 
negligently  
1. contrary to section 134 (3), also in conjunction with subsection (4);  Service provided by the Federal Ministry of Justi ce 
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Page 58 of 62 a) refuses to permit entry to business premises, land, sales facili ties or means 
of transport or their inspection;  
b) does not present the agricultural products or foodstuffs to be inspected in 
such a way that the inspection can be carried out properly;  
c) does not provide the necessary assistance in the inspection;  
d) does not permit samples to be taken;  
e) does not submit corporate documents, or not in their entirety, or does not 
permit them to be examined; or  
f) does not provide information, or does not do so correctly, or not completely; 
or 
2. acts contrary to a statut ory instrument  in accordance with section 139 (1) in so 
far as it refers to this provision on regulatory fines for a specific circumstance.  
(3) The regulatory offence may be sanctioned in cases falling under subsection (1) with a 
regulatory fine of up to t wo thousand and five hundred Euros, and in cases falling under 
subsection (2) with a regulatory fine of up to ten thousand Euros.  
(4) Section 144 (4) shall apply accordingly in cases falling under subsection (1).  
(5) The administrative authority within the  meaning of section 36 (1) no. 1 of the Act on 
Regulatory Offences shall be the Federal Office of Justice in cases falling under subsection 
(1). 
Chapter 2  
Seizure of goods on import and export  
Section 146  
Seizure in case of infringements of rights to signs  
(1) Goods which are unlawfully affixed with a trade mark or commercial designation 
protected in accordance with this Act shall, in so far as there is no requirement to apply 
Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 J une 
2013 concerning customs enforcement of intellectual property rights and repealing Council 
Regulation (EC) No 1383/2003 (OJ L 181 of 29 June 2013, p. 15), as amended, shall be 
subject, on request and in return for a security of the proprietor of the rig ht, to seizure by the 
customs authority on their import or export in so far as the infringement of rights is manifest. 
This shall apply to transactions with other Member States of the European Union and with 
the Contracting Parties to the Agreement on the European Economic Area only to the extent 
that controls are carried out by the customs authorities.  
(2) Where the customs authority orders seizure, it shall without delay inform the person 
entitled to exercise the control and the person making the request.  The origin, quantity and 
place of storage of the  goods as well as of name and address of the person entitled to 
exercise the control shall be communicated to the person making the request. The privacy of 
correspondence and posts (Article 10 of the Basic L aw) shall thus be restricted. The person 
making the request  shall be given the opportunity to inspect the goods provided that this 
does not interfere with business or trade secrets . 
Section 147  
Confiscation, opposition, suspension of seizure  
(1) Where no o bjection is lodged in respect of the seizure before the expiry of a period of two 
weeks following service of the communication in accordance with section 146 (2) sentence 
1, at the latest, the customs authority shall order confiscation of the seized goods.  
(2) Where the person entitled to exercise the control objects to the seizure, the customs 
authority shall inform the person making the request without delay. The latter shall declare to Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 59 of 62 the customs authority without delay whether he upholds the request in  accordance with 
section 146 (1) in respect of  the seized goods.  
(3) Where the person making the request withdraws his request, the customs authority shall 
revoke the seizure without delay. Where the person making the request upholds his request 
and submit s an enforceable court decision ordering the impounding of the seized goods or 
imposing a restriction on the control, the customs authority shall take the necessary 
measures.  
(4) Where the cases referred to in subsection (3) do not apply, the customs autho rity shall 
revoke the seizure after the expiry of a period of two weeks following service of the 
communication to the person making the request  in accordance with subsection (2). Where 
the person making the request proves that he has requested, but not yet  received, a court 
decision in accordance with subsection (3) sentence 2 the seizure shall remain in force for a 
maximum of a further two weeks.  
Section 148  
Competences, appellate remedies  
(1) The request in accordance with section 146 (1) shall be made to  the Central Customs 
Authority (Generalzolldirektion) and shall remain in force for one year unless the request has 
been made for a shorter duration. The request may be repeated.  
(2) The person making the request shall be charged with the costs of official  acts connected 
with the request subject to section 178 of the Fiscal Code.  
(3) Seizure and confiscation may be contested using the appellate remedies admissible in 
respect of seizure and confiscation in regulatory fining proceedings in accordance with the  
Act on Regulatory Offences. The person making the request shall be heard in appeal 
proceedings. An immediate appeal may be filed from a local court (Amtsgericht) decision. 
The higher regional court shall decide on the immediate appeal.  
Section 149  
Compens ation in case of unjustified seizure  
Where the seizure proves to have been unjustified as from the outset and the person making 
the request has upheld the request in accordance with section 146 (1) in respect to the 
seized goods or did not without delay ma ke a declaration (section 147 (2) sentence 2), he 
shall be obliged to compensate the person entitled to exercise the control for the damage 
caused by the seizure.  
Section 150  
Proceedings in accordance with Regulation (EU) No 608/2013  
For the proceedings in  accordance with Regulation (EU) No 608/2013, section 148 (1) and 
(2) as well as section 149 shall apply accordingly, unless the Regulation contains any 
provisions which preclude this.  
Section 151  
Proceedings in accordance with German law with regard to in dications of 
geographical origin  
(1) Goods which have been unlawfully affixed with an indication of geographical origin 
protected in accordance with this Act or in accordance with legal provisions of the European 
Union, shall, unless Regulation (EU) No 608 /2013 applies, be subject to seizure on their 
import, export or transit for the purpose of eliminating the unlawful marking in so far as the 
infringement of rights is manifest. This shall apply to transactions with other Member States 
of the European Union  and with the Contracting Parties to the Agreement on the European 
Economic Area only to the extent that controls are carried out by the customs authorities.  
(2) The seizure shall be carried out by the customs authority. The customs authority shall 
also or der the measures necessary to eliminate the unlawful marking.  
(3) If the orders of the customs authority are not complied with, or if the elimination is 
impracticable, the customs authority shall order the confiscation of the goods.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 60 of 62 (4) Seizure and confisc ation may be contested using the appellate remedies admissible in 
respect of seizure and confiscation in regulatory fining proceedings in accordance with the 
Act on Regulatory Offences. An immediate appeal may be filed from a local court decision. 
The high er regional court shall decide on the immediate appeal.  
Part 10  
Transitional provisions  
Section 152  
Application of this Act  
Unless provided otherwise below, the provisions of this Act shall also apply to trade marks 
which were filed or registered prior to 1 January 1995 or which were acquired through use in 
trade or by being well known, and to commercial designations which were protected prior to 
1 January 1995 in accordance with the provisions applicable until then.  
Section 153  
Restrictions for the asserti on of infringement claims  
(1) If the proprietor of a trade mark registered prior to 1 January 1995 or acquired through 
use or by being well known, or of a commercial designation in accordance with the 
provisions applicable until then, did not have any righ ts because of infringement against the 
use of the trade mark, of the commercial designation or of an identical sign, the rights from 
the trade mark or from the commercial designation in accordance with this Act may not be 
asserted against the further use o f this trade mark, this commercial designation or this sign.  
(2) Section 21 shall apply to rights of the proprietor of a trade mark registered prior to 1 
January 1995 or acquired through use or by being well known or of a commercial 
designation with the pr oviso that the five -year time limit provided for in section 21 (1) and (2) 
shall commence to run on 1 January 1995.  
Section 154  
Rights in rem, levy of execution, bankruptcy proceedings  
(1) If, prior to 1 January 1995, a right in rem was established in the right conferred by the 
application for or registration of a trade mark, or if the right given rise to by the application or 
registration has been the subject -matter of measures of levy of execution, these rights or 
measures may be entered in the Register i n accordance with section 29 (2).  
(2) Subsection (1) shall apply accordingly if the right given rise to through the application for 
or registration of a trade mark has been covered by bankruptcy proceedings.  
Section 155  
Licences  
Section 30 shall apply to l icences granted prior to 1 January 1995 under the right given rise 
to by the application for or registration of a trade mark, or by its use or by virtue of it being 
well known, with the proviso that these licences shall only benefit from the effect of sect ion 
30 (5) in so far as they are transfers of rights which took effect on 1 January 1995 or later or 
licences granted to third parties on 1 January 1995 or later.  
Section 156  
Cancellation of a registered trade mark because of absolute grounds for refusal  
If proceedings were initiated ex officio prior to 1 January 1995 to cancel the registration of a 
trade mark because of the existence of absolute grounds for refusal in accordance with 
section 10 (2) no. 2 of the former Trade Mark Act, or if prior to this po int in time a request for 
cancellation was lodged in accordance with this provision, the registration shall only be 
cancelled if the trade mark is eligible for protection neither in accordance with the provisions 
previously applicable, nor in accordance wi th the provisions of this Act. This shall also apply 
if proceedings in accordance with section 54 are initiated after 1 January 1995 to cancel the 
registration of a trade mark which was registered prior to 1 January 1995.  Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 61 of 62 Section 157  
Cancellation of a regi stered trade mark because of the existence of earlier rights  
(1) If an action to cancel the registration of a trade mark was lodged prior to 1 January 1995 
on the basis of an earlier trade mark applied for in accordance with section 11 (1) no. 1 of 
the for mer Trade Mark Act or on the basis of another earlier right, the registration shall only 
be cancelled if the action is to be granted both in accordance with the provisions applicable 
previously, and in accordance with the provisions of this Act, unless pro vided otherwise in 
subsection (2). This shall also apply if after 1 January 1995 an action was filed, in 
accordance with section 55, for the cancellation of the registration of a trade mark or, after 1 
May 2020 in accordance with Section 53, an application  for revocation and a declaration of 
invalidity was filed for a trade mark which was registered prior to 1 January 1995.  
(2) Section 51 (2) sentences 1 and 2, shall not apply in cases falling under subsection (1) 
sentence 1. Section 51 (2) sentences 1 and 2, shall apply in cases falling under subsection  
(1) sentence 2, with the proviso that the time limit of five years starts to run as per 1 January 
1995.  
Section 158  
Transitional provisions  
(1) Article 229 paragraph 6 of the Introductory Act to the German C ivil Code 
(Einführungsgesetz zum Bürgerlichen Gesetzbuche) shall apply accordingly, with the proviso 
that section 20 in the version in force until 1 January 2002 shall be treated as equivalent to 
the provisions of the German Civil Code on limitation in the  version in force until 1 January 
2002.  
(2) If the application was filed prior to 1 October 2009, section 42 (1) and (2) in the version 
valid up to 1 October 2009 shall be applicable to the opposition filed against the registration.  
(3) If the application was filed between 1 October 2009 and 14 January 2019, section 42 (1) 
and (2) in the version valid up to 14 January 2019 shall be applicable to the opposition filed 
against the registration.  
(4) If the opposition was filed before 14 January 2019, section 42  (3) and (4) shall not apply.  
(5) If, in proceedings relating to an opposition filed before 14 January 2019, the use of the 
trade mark on which the opposition is based is disputed, or if such use is disputed in such 
opposition proceedings, sections 26 and 43 (1) in the version valid up to that date shall 
continue to be applicable.  
(6) If the request for cancellation of a registered trade mark because of revocation under 
Section 49 was filed before 14 January 2019 or the action for cancellation because of 
revocation or earlier rights under section 51 was brought before that date, section 49 (1), 
section 51 (4) no. 1, section 55 (3) and section 26 in their version valid up to that date shall 
continue to be applicable.  
(7) Section 8 (2) nos. 9 to 12 shall not a pply to trade marks which have been applied for at 
the German Patent and Trade Mark Office before 14 January 2019.  
(8) Section 50 (2) sentence 1 shall apply only to applications pursuant to section 50 (1) that 
were filed after 14 January 2019. If the appli cation under section 50 (1) was filed before 14 
January 2019, section 50 (2) in its previous version shall be applicable.  
(9) Sections 64 and 66 in the version valid until 1 October 2009 shall apply to special 
motions ( Erinnerung ) and appeals which were lo dged prior to 1 October 2009. The date of 
the lodging of the appeal shall be relevant for the applicability of the listed provisions to 
multilateral proceedings in which one party has lodged a special motion ( Erinnerung ) and 
another party has lodged an app eal.  
(10) Section 102 (4) shall not apply to collective marks registered before 14 January 2019.  
Section 159  
Duration of protection and renewal  
(1) The provisions of this Act concerning the duration of protection and its renewal (section 
47) shall be appl icable to trade marks registered before 14 January 2019, with the proviso Service provided by the Federal Ministry of Justi ce 
and the Federal Office of Justice ‒ www.gesetze -im-internet.de  
Page 62 of 62 that section 47 (1) in the version valid up to that date shall continue to be applicable to the 
calculation of the period after which the duration of protection ends.  
(2) For registe red trade marks whose duration of protection under section 47 (1) ends 12 
months after 31 January 2019, at the latest, sections 3, 5 and 7 of the Patent Costs Act of 13 
December 2001 (Federal Law Gazette [BGBl.] I, p. 3656), as last amended by Article 13 o f 
the Act of 4 April 2016 (Federal Law Gazette [BGBl.] I, p. 558), shall continue to be 
applicable in the version valid up to that date.  
Sections 160 to 163  
(repealed)  
Section 164  
(repealed)