WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO IPINI 1 IDEUIII 1 
8 November 1996 
(96-4740) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original: English! 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
Germany 
The present document reproduces 1 the Law on the Extension of Industrial Property Rights 
(Extension Law), as notified by Germany under Article 63.2 of the Agreement (see document 
IP/NIlIDEU/lIRev.I). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES 
A LA PROPRIETE INTELLECTUELLE NOTIFIEES 
AU TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
Allemagne 
Le present document contient le texte1 de la Loi portant extension des droits de propriete 
industrielle (Loi d'extension), notifiee par I' Allemagne au titre de l'article 63:2 de l' Accord (voir le 
document IP/N/I/DEU/I/Rev.I). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL pARRAFO 2 DEL ARTicULO 63 DEL ACUERDO 
Alemania 
En el presente documento se reproducel la Ley de Ampliacion de los Derechos de Propiedad 
Industrial (Ley de Ampliacion), notificada por Alemania en virtud del parrafo 2 del articulo 63 del 
Acuerdo (vease el documento IP/N/I/DEU/I/Rev.I). 
lEnglish only/anglais seulement/ingles solamente. IJ?/~/l/I>~lJ/I/l 
J?age 2 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
(This text replaces the one previously published under the same code number.) 
GERMANY 
La'w on the Extension of Industrial Property Rights 
(Extension La\v-ErstrG) of April 23, 1992* . 
(as last amended by the Law of August 30, 1994) 
TABLE OF CONTENTS** 
PART 1: EXTENSION 
Chapter 1: Extension to the Territory 
Designated in Article 3 of the Unification Treaty 
Sections 
Extension of Industrial Property Rights and of Applications for 
Industrial Property Rights .............................. 1 
Cancellation of Registered Trademarks ................... 2 
Opposition to Registered Trademarks .................... 3 
Chapter 2: Extension of Industrial Property Rights Existing 
in the Territory Designated in Article 3 of the 
Unification Treaty to the Remaining Federal Territory 
Subchapter 1: General Provisions 
Extension of Industrial Property Rights and Applications for 
Industrial Property Rights .............................. 4 
Applicable Law ....................................... 5 
Subchapter 2: Special Provisions on Patents 
Effect of Granted Patents .............................. . 
Economic Patents .................................... . 
Patents Not Available in German ....................... . 
Rights of Use in Exclusive Patents ...................... . 
Patent Applications ................................... . 
Searching ........................................... . 
Examination of Granted Patents ........................ . 
Opposition Proceedings in Special Cases ................ . 
Transfer of Correction Proceedings ..................... . 
Derivation .......................................... . 
'" German title: Gesetz Uber die Erstreckung von gewerbli­
chen Schutzrechten (Erstreckungsgesetz-ErstrG) vom 23. 
April 1992. 
Entry into force (of the Law as last amended): January 1 t 
1996. 
Source: Communication from the German authorities. 
Note: Translation by the International Bureau of WIPO. 
*'" Added by WIPO. 6-6A 
7 
8 
9 
10 
11 
12 
13 
14 
15 INDUSTRIAL PROPERTY 
LAWS AND TREATIES INDUSTRIAL PROPERTY IP/NI1 IDEU/I/l 
Page 3 
AND COPYRIGHT -JUNE 1996 INDUSTRIAL PROPERTY 
LAWS AND TREATIES 
Subchapter 3: Special Provisions on Inventors' 
Certificates and Industrial DesiKn Patents 
Im'entors' Certificates and Industrial Design Patents ....... 16 
Entitlement to Remuneration. . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 
Utilization Rights in Inventors' Certificates ............... 18 
Applications for Industrial Design Patents ................ 19 
Subchapter 4: Special Provisions 011 Marks 
Cancellation of Registered Marks Under Section 10(2) of the 
Trademark Law ....................................... 20 
Cancellation of Registered Marks Under Section 11 of the 
Trademark Law ....................................... 21 
Examination of Applications for Marks. . . . . . . . . . . . . . . . . . . 22 
Publication of Applications for Marks; Opposition ......... 23 
Tenn of Protection .................................... 24 
Transfer of Marks; Trademark Associations ............... 25 
Chapter 3: Concurrent Rights; Rights of Prior 
Use and Continued Use 
Subchapter J: Inventions. Designs and Models 
Collision of Rights .................................... 26 
Rights of Prior Use .................................... 27 
Rights of Continued Use ............................... 28 
Collision with Rights of Use Under Section 23 of the Patent 
Law................................................. 29 
Subchapter 2: Trademarks and Other Distinctive Signs 
Trademarks .......................................... 30 
Other Rights in Distinctive Signs ........................ 31 
Right of Continued Use ................................ 32 
PART 2: CONVERSION OF INDICATIONS OF 
SOURCE TO COLLECTIVE MARKS 
Conversion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33 
Request for Conversion ................................ 34 
Application of the Trademark Law ....................... 35 
Collision of Converted Indications of Source and Trademarks 36 
Eligibility for Protection of Converted Indications of Source 37 
Right of Continued Use ................................ 38 
PART 3: CONCILIATION PROCEDURE 
Conciliation Board .................................... 39 
Composition of the Conciliation Board ................... 40 
Honorary Office; Supervision ........................... 41 
Proceedings Before the Conciliation Board. . . . . . . . . . . . . . . . 42 
Conciliation Proposal; Settlement. . . . . . . . . . . . . . . . . . . . . . . . 43 
Interruption of Prescription ............................. 44 
Costs of Conciliation Proceedings ....................... 45 
Compensation of Members of the Conciliation Board ....... 46 
PART 4: AMENDMENT OF LAWS 
Amendment of the Trademark Law. . . . . . . . . . . . . . . . . . . . . . . 47 
Amendment of the Law on the Fees of the Patent Office and of 
the Patent Court ...................................... 48 IP/N/lIDEU/IIl 
Page 4 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
PART 5: TRANSITIONAL AND FINAL PROVISIONS 
Employee Inventions .................................. 49 
Transfer of Mediation Proceedings. . . . . . . . . . . . . . . . . . . . . . . 50 
Transfer of Appeal and Revocation Proceedings . . . . . . . . . . 51 
Time Limits ... '" ........ '" ... .... ... . ... .. . . ... . ... 52 
Fees ................................................ 53 
Application of the Law on Unfair Competition and of Other 
Statutory Provisions ................................... 54 
Entry Into Force ...................................... 55 
PART 1 
EXTENSION 
Chapter 1 
Extension to the Territory Designated 
in Article 3 of the Unification Treaty 
Extension of Industrial Property Rights 
and of Applications for Industrial 
Property Rights 
1.-(1) The industrial property rights (patents, utility 
models, semiconductor rights, industrial designs and 
type faces, trademarks and service marks) and the appli­
cations for such rights already existing on May 1, 1992, 
in the Federal Republic of Germany, with the exception 
of the territory designated in Article 3 of the Unification 
Treaty, shall extend to the territory designated in Arti­
cle 3 of the Unification Treaty and shall maintain their 
priority. 
(2) The same shall apply to applications filed and 
rights that have been registered or granted on the basis of 
international agreements with effect for the Federal 
Republic of Germany, with the exception of the territory 
designated in Article 3 of the Unification Treaty. 
Cancellation of Registered Trademarks 
2.-(1) A third party may also request cancellation 
under Section 11 (1), item 1, of the Trademark Law of a 
trademark extended under Section 1 that has been regis­
tered on the basis of an application filed during the peri­
od from July 1 to October 2, 1990, inclusive, if the mark 
has been registered in his name on the basis of an appli­
cation with earlier priority filed with the former Patent 
Office of the German Democratic Republic for the same 
or similar goods or services and has been extended under 
Section 4. Such registration shall have the same status as an internationally registered mark under the Madrid 
Agreement concerning the International Registration of 
Marks that has been extended under Section 4. 
(2) Subsection (1) shall apply mutatis mutandis to re­
quests for withdrawal of protection under Section 10 of 
the Ordinance on the International Registration of Trade­
marks from an internationally registered mark extended 
under Section 1. 
Opposition to Registered Trademarks 
3.-(1) Opposition under Section 5(4) or Section 6a(3) 
of the Trademark Law against the registration of a mark 
filed with the German Patent Office between July 1 and 
October 2, 1990, inclusive, that has been extended under 
Section 1, may be lodged by any person who has filed an 
application with the former Patent Office of the German 
Democratic Republic with earlier priority, for the same 
or similar goods or services and which is the same as the 
mark applied for (Section 31 of the Trademark Law), that 
has been extended under Section 4. Such application 
shall have the same status as an internationally regis­
tered mark under the Madrid Agreement Concerning 
the International Registration of Marks that has been 
extended under Section 4. 
(2) Where the German Patent Office has published a 
mark as referred to in subsection (1) in accordance with 
Section 5(2) of the Trademark Law and if the time limit 
for opposition under Section 5(4) or Section 6a(3) of the 
Trademark Law has not expired on May 1, 1992, opposi­
tion may be lodged on the basis of an earlier mark as re­
ferred to in subsection (1) within three months of that 
date. 
(3) Subsections (1) and (2) shall apply mutatis mutan­
dis to opposition under Section 2 of the Ordinance on the 
International Registration of Trademarks lodged against 
an internationally registered mark extended under Sec­
tion 1. INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
Chapter 2 
Extension of Industrial Property Rights Existing 
in the Territory Designated in Article 3 of the 
Unification Treaty to the Remaining Federal 
Territory 
SUBCHAPTER 1 
GENERAL PROVISIO;-.JS 
Extension of Indllstrial Property Rights and 
Applications for Industrial Property Rights 
4.-( 1) The industrial property rights (exclusive pat­
ents and economic patents. inventors' cenificates and 
patents for industrial designs, marks) that were in exist­
ence on May 1, 1992, in the territory designated in Arti­
cle 3 of the Unification Treaty and applications for such 
industrial property rights shall be extended to the re­
maining Federal territory and shall maintain their prio­
rity. 
(2) The same shall apply to applications filed and 
rights registered or granted on the basis of international 
agreements with effect for the territory designated in 
Article 3 of the Unification Treaty. 
(3) Sections 33 to 38 shall apply to indications of 
source registered or applied for with effect for the territo­
ry designated in Article 3 of the Unification Treaty. 
Applicable Law 
5. Notwithstanding the provisions below, the indus­
trial property rights and the applications for industrial 
propeny rights extended under Section 4 shall be gov­
erned by the statutory provisions hitherto applicable to 
them (Annex I, Chapter Ill, Field E, Part lI, item I, Arti­
cle 3(1) of the Unification Treaty of August 31, 1990, 
Bundesgesetzblatt (BGBl.) 1990 lI. pp. 885, 961) only 
where they concern the qualifying requirements for pro­
tection and the term of protection. In all other cases they 
shall be governed by the provisions of Federal law trans­
ferred to them under the Unification Treaty. 
SUBCHAPTER 2 
SPECIAL PROVISIONS ON PATENTS 
Effect of Granted Patents 
6. The grant of a patent under the statutory provisions 
of the German Democratic Republic shall have the same 
status as the publication of the grant of a patent under 
Section 58(1) of the Patent Law. 
6A. The term of patents extended under Section 4 that 
have not expired on December 31, 1995, shall be 
20 years commencing on the day after the date of filing 
of the application. IP/N/lIDEU/IIl 
Page 5 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
Economic Patents 
7.-( 1) Economic patents extended under Section 4 
shall be deemed patents for which a declaration of will­
ingness to grant lkenses under Section 23( 1). first sen­
tence. of the Patent La\v has been given. This shall also 
apply to economic patents that have been recognized as 
having effect in the territory designated in Article 3 of 
the Unification Treaty on the basis of the Agreement of 
December 18. 1976, on the reciprocal recognition of 
inventors' certificates and other titles of protection for 
inventions (Geset;bfatt der Deutschen Demokratischen 
Repllbfik (GBl.) lI, No. 15. p. 327). 
(2) The owner of a patent that has been examined as to 
compliance with all requirements for protection may 
declare in writing at any time to the German Patent Office 
that the declaration of willingness to license under sub­
section (1) shall be deemed \vithdrawn. Notification of 
such declaration shall be published in the Patent Gazette. 
The amount by which the annual fees due since May 1, 
1992. have been reduced shall be paid within one month 
after publication of the notification. Section 17(3), second 
and third sentences, of the Patent Law shall apply mutatis 
mutandis with the proviso that the one-month time limit 
referred to in the third sentence shall replace the due date. 
(3) Anyone who, prior to publication of the notifica­
tion of a declaration under subsection (2), second sen­
tence. has informed the owner of the patent of his 
intention to use the invention and has begun such use or 
has made the necessary preparation for use, shall remain 
entitled to continue the use in the way stated by him in 
the communication. 
Patents Not A rai/able in German 
8.-(1) Where the patent extended under Section 4 has 
not been published in German, the owner of the patent 
may assert the rights under the patent only as from the 
day on which a German translation of the patent specifi­
cation filed by him has been published at his request by 
the German Patent Office. The request shall be subject to 
payment of a fee in accordance with the schedule of fees. 
If the fee is not paid, the request shall be deemed not to 
have been made. 
(2) A notification of publication of the translation 
shall be published in the Patent Gazette and noted in the 
Patent Register. 
(3) If the translation of the patent specification con­
tains errors, the owner of the patent may request publica­
tion of a corrected translation to be filed by him. 
Subsection (1), second and third sentences, and subsec­
tion (2) shall apply mlltQcis nlmandis. 
(4) The wording of the patent specification shall con­
stitute the binding version. If the translation of the patent 
specification contains errors, anyone who has in good IP 1Nl lIDEU/l/l 
Page 6 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
faith begun to use the invention or has made serious and 
effective preparations for using the invention shall still 
be entitled to use the invention after publication of the 
corrected translation for the needs of his own business in 
his own plant or workshops or the plant or workshops of 
others free of cost throughout the whole Federal territory 
if such use would not c~nstitute an infringement of the 
patent in the faulty translation contained in the patent 
specification. 
Rights of Use in Exclusive Patents 
9.-(1) The right afforded by Section 3(4), first sen­
tence, of the Law amending the Patent Law and the Law 
on Distinctive Signs for Goods of the German Demo­
cratic Republic, of June 29, 1990 (GBl. I, No. 40, 
p. 571), to continue to use an invention protected by an 
economic patent that has been converted to an exclusive 
patent, shall be maintained and shall be extended to the 
remaining Federal territory. The owner of the patent 
shall be entitled to appropriate remuneration. 
Patent Applications 
10.-( 1) Where a patent application extended under 
Section 4 has not been subjected to an examination cor­
responding to the examination for obvious compliance 
under Section 42 of the Patent Law, such examination for 
obvious compliance shall be carried out. 
(2) Where the application is not available in German, 
the German Patent Office shall require the applicant to 
file a German version of the application within three 
months. If the German version is not filed within the time 
limit, the application shall be deemed to have been with­
drawn. 
(3) If grant of a patent has not yet been decided in the 
case of a patent application extended under Section 4, 
free inspection of files shall be afforded under Sec­
tion 31 (2), item 2, and the application published as an 
unexamined patent application. 
(4) If a request for examination has been duly filed 
with respect to an application extended under Section 4, 
the request shall be further processed. If examination has 
already begun ex officio, it shall only be continued if the 
applicant files a request for examination under Sec­
tion 44(1) to (3) of the Patent Law. 
Searching 
11. At the request of the owner of the patent or of 
another person, the Gennan Patent Office shall deter­
mine with respect to a patent extended under Section 4 
the publicly available documents to be taken into consid-INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
eration for assessing the patentability of the invention. A 
fee shall be paid together with the request in accordance 
with the schedule of fees. If the fee is not paid, the re­
quest shall be deemed not to have been filed. Sec­
tion 43(3) to (6) and (7), first sentence. of the Patent La\v 
shall apply m III at is mutandis. 
Examination of Granted Patents 
12.-( I) A patent extended under Section 4 that has 
not been examined for compliance with all conditions of 
protection shall be examined, on request. by the Examin­
ing Section of the German Patent Office. The request 
may be filed by the owner of the patent or by any other 
person. Section 44( 1), (3) and (5). first sentence, and 
Section 45 of the Patent Law shall apply mlltatis mutan­
dis; Section 44(4), first and second sentences, of the 
Patent Law shall apply mlllatis mutandis where a request 
under Section 11 has been filed. 
(2) A request for examination already duly filed with 
respect to a patent extended under Section 4 shall be fur­
ther processed by the Examining Section. An examina­
tion that has been begun ex officio shall be continued. 
(3) Examination under subsections (1) and (2) shall 
result in maintenance or revocation of the patent. Sec­
tion 58(1). first and second sentences, of the Patent La \1/ 
shall apply mutatis mutandis. Opposition to maintenance 
may be lodged under Section 59 of the Patent Law. 
(4) Section 81 (2) of the Parent Law shall not apply to 
patents wirhin the meaning of subsection (1). 
(5) Section 130 of the Patent Law shall apply mutatis 
mutandis to examination proceedings under subsec­
tions (1) and (2). 
Opposition Proceedings in Special Cases 
13. Where the German Patent Office confirms or 
grants a patent extended under Section 4 in accordance 
with Section 18( 1) or (2) of the Patent Law of the 
German Democratic Republic. opposition may be lodged 
with the German Patent Office up to and including 
July 31, 1992. Sections 59 to 62 of the Patent Law shall 
apply. 
Transfer of Correction Proceedings 
14. Correction proceedings under Section 19 of the 
Patent La\v of the German Democratic Republic still 
pending before the German Patent Office on May 1, 
1992, shall be pursued. in the status in which they are, as 
limitation proceedings under Section 64 of the Patent 
Law. INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
Derivation 
15.-(1) The declaration under Section 5(l), first sen­
tence, of the Utility Model Law may also be filed with 
respect to patents or patent applications exte:1ded under 
Section 4. This shall not apply to patents that have been 
granted or confirmed. after examination of compliance 
with all conditions of protection. by the former Patent 
Office of the German Democratic Republic. 
(2) For those patents referred to in subsection (I). the 
declaration may be filed up to expiry of two months after 
the end of the month in which any examination proceed­
ings or any opposition proceedings have been complet­
ed, but at most up to expiry of the tenth year after the 
filing date of the patent. 
(3) Rights under Section 9. or based on Section 7( I) 
and (3). to use the invention on payment of appropriate 
remuneration and rights of continued utilization under 
Section 28 shall also apply with respect to a utility model 
derived under subsection (I). 
SUBCHAPTER 3 
SPECIAL PROVISIO~S ON INVENTORS' CERTIFICATES 
AND INDUSTRIAL DESIGN PATENTS 
Inventors' Certificates and Industrial 
Design Patents 
16.-(1) Inventors' certificates and industrial design 
patents extended under Section 4 shall be deemed de­
signs within the meaning of the Designs Law. Section 5, 
first sentence. shall remain unaffected. 
(2) For inventors' certificates extended under Sec­
tion 4, the originating enterprise within the meaning of 
Section 4 of the Ordinance on Industrial Designs of 
January 17. 1974 (GB 1. I, No. 15. p. 140), as amended by 
ordinance of December 9. 1988 (GBl. I, No. 28. p. 333). 
or its successor in title, shall be deemed the owner of the 
right. 
Entitlement to Remuneration 
17. Where the entitlement of a creator of a design or 
model to remuneration under the hitherto applicable pro­
visions has already arisen. the remuneration shall be paid 
in accordance with these provisions. 
Utilization Rights in Inventors' Certificates 
18. Any person who has lawfully used a design or 
model, in accordance with the hitherto applicable provi­
sions, protected by an inventor's certificate extended un­
der Section 4 or in respect of which an inventor's 
certificate has been sought, may continue to use such IP/N/l/DEU/Ifl 
Page 7 
INDUSTRIAL PROPERTY 
LA \VS AND TREATIES 
design or model within the whole Federal territory. The 
owner of the right may require appropriate remuneration 
from the person entitled to use it with respect to its con­
tinued utilization. 
Applications for Industrial Design Patents 
19.-( 1) Where an application for an industrial design 
patent extended under Section 4 has been published 
under Section 1 O( 1) of the Ordinance on Industrial De­
signs, this shall have the same status as the publication 
of the entry of an application in the Designs Register un­
der Section 8(2) of the Design Law. \Vhere the applica­
tion has been entered, but has not yet been published, 
publication shall be effected in accordance with Section 
8(2) of the Designs Law. 
(2) Where the application has not yet been entered, 
also in those cases where examination of the require­
ments has already been effected under Section 9 of the 
Ordinance on Industrial Designs, processing of the appli­
cation and its entry shall be effected in accordance with 
the provisions of the Designs Law; Section 10(3), second 
and third sentences, of the Designs Law shall not apply. 
(3) If publication of an application has been deferred 
under Section 10(2) of the Ordinance on Industrial De­
signs and if the deferral period has not expired on May 1, 
1992, publication shall be repeated in accordance with 
Section 8b(3) of the Designs Law, unless the owner of 
the design or the model has requested cancellation of the 
entry of the design or model, on expiry of the deferral 
period, but 18 months after October 3,1990. at the latest. 
The German Patent Office shall notify the registered 
owner that the publication is to be repeated if no request 
for cancellation of the entry of the design or model is 
filed within one month of service of the notification. 
(4) Any unfinished examination of the material re­
quirements for protection under Section 11 of the Ordi­
nance on Industrial Designs shall be terminated. The fee 
paid for the request for examination of the material re­
quirements shall be refunded. 
(5) Opposition under Section 10(3) of the Ordinance 
on Industrial Designs that has not yet been completed 
shall not be processed further by the German Patent Of­
fice. 
SUBCHAPTER 4 
SPECIAL PROVISIONS ON MARKS 
Cancellation of Registered Marks Under 
Section 10(2) of the Trademark Law 
20.-( 1) Cancellation of a mark extended under Sec­
tion 4 shall only be effected, either ex officio or on re­
quest under Section 10(2), item 2. of the Trademark Law, 
if the mark is not eligible for protection both under the IP IN I lIDEU/II 1 
'Page 8 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
hitherto applicable provisions and the provisions of the 
Trademark Law. 
(2) Subsection (1) shall apply mutatis mutandis to re­
quests for withdrawal of protection of a mark extended 
under Section 4 and that ha~ been internationally regis­
tered in accordance with Section 10 of the Ordinance on 
the International Registration of Trademarks. 
Cancellatiol! of Registered Marks Under 
Section 11 of the Trademark Law 
21.-( I) Cancellation of a mark extended under Sec­
tion 4 and that has been entered on the basis of an appli­
cation filed during the period from July 1 to October 2, 
1990, inclusive, may also be requested by a third pany 
under Section 11 Cl), item 1, of the Trademark Law if the 
mark has been entered in his name in the Trademark 
Register on the basis of an application with earlier prior­
ity for the same or similar goods and has been extended 
under Section 1. Such entry shall have the same status as 
an internationally registered mark under the Madrid 
Agreement Concerning the International Registration of 
Marks that has been extended under Section 1. 
(2) Subsection (1) shall be applied mutatis mutandis 
to requests for withdrawal of protection for an interna­
tionally registered mark extended under Section 4 in ac­
cordance with Section 10 of the Ordinance on the 
International Registration of Trademarks. 
Examination of Applications for Marks 
22.-( 1) Trademark applications extended under Sec­
tion 4 shall be subject to the provisions of the Trademark 
Law unless otherwise stipulated below. 
(2) Entry may not be refused on the grounds that the 
sign applied for is a form of mark that may not be regis­
tered under the Trademark Law. 
(3) Subsections (l) and (2) shall apply mutatis mutan­
dis to internationally registered marks under the Madrid 
Agreement Concerning the International Registration of 
Marks that have been extended under Section 4. 
Publication of Applications for Marks; 
Opposition 
23.-( 1) Trademark applications extended under Sec­
tion 4 shall be published in accordance with Section 5(2) 
or Section 6a(3) of the Trademark Law, even where ex­
amination has already been effected under the hitherto 
applicable provisions. 
(2) Opposition may be lodged against entry of the ap­
plication for marks referred to in subsection (1) in accor­
dance with Section 5(4), first sentence, item 1, of the 
Trademark Law only by such persons who INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
1. have filed with the former Patent Office of the 
German Democratic Republic for the same or sim­
ilar goods or services a mark with earlier priority, 
that has been extended under Section 4, that is the 
same as the mark applied for (Section 31 of the 
Trademark Law) or 
2. in the event of the published sign having been filed 
with the former Patent Office of the German Dem­
ocratic Republic in the period between July 1 and 
October 2, 1990, inclusive, have filed with the 
German Patent Office for the same or similar 
goods a mark with earlier priority, that has been 
extended under Section I, that is the same as the 
mark applied for (Section 31 of the Trademark 
Law). 
Internationally registered marks under the Madrid 
Agreement Concerning the International Registration of 
Marks that have been extended under Section 1 or Sec­
tion 4 shall have the same status as the earlier applica­
tions referred to in items 1 and 2. 
(3) Subsections (I) and (2) shall apply mutatis mlltan­
dis to opposition under Section 2 of the Ordinance on the 
International Registration of Trademarks where it is 
lodged against an internationally registered mark extend­
ed under Section 4. 
Term of Protection 
24. Section 9( 1) of the Trademark Law shall apply for 
calculating the term of protection for marks extended 
under Section 4. 
Transfer of M arks .. Trademark Associations 
25.-( I) The transfer of rights in a trademark or trade­
mark application extended under Section 4 shall be ef­
fective, notwithstanding Section 17( 1), second sentence, 
of the Law on Distinctive Signs for Goods of Novem­
ber 30, 1984 (GBl. I, No. 33, p. 397), as amended by 
Section 2 of the Law of June 29, 1990 (GBl. I, 
No. 40, p. 571), without a corresponding entry in the 
Register. 
(2) The cancellation of a collective mark extended 
under Section 1 or of a collective mark extended under 
Section 4 or the refusal of entry of such a mark may not 
be based on the fact that the association for which the 
mark was entered or filed does not have legal capability 
if such association was entered on May 1, 1992, in the 
Register of Associations under Section 7 of the Law on 
Distinctive Signs for Goods and if it or the person to 
whom the right in the application or entry of the sign has 
been transferred by the association proves to the German 
Patent Office by April 30, 1993, at the latest, that he sat­
isfies the requirements for filing an application for a col­
lective mark under Section 17(1) or (2) and Section 18, 
first sentence, of the Law on Distinctive Signs for INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
Goods; Section 20 of the Trademark Law shall not apply 
in such circumstances. 
Chapter 3 
Concurrent Rights; Rights of Prior 
Use and Continued Use 
SUBCHAPTER 1 
INVENTIONS, DESIGNS AND MODELS 
Collision of Rights 
26.-( I) \Vhere patents, patent applications or utility 
models extended under this Law to the territory designat­
ed in Article 3 of the Unification Treaty or to the remain­
ing Federal territory are concurrent in their scope of 
protection and therefore collide as a result of extension, 
the owners of such titles or applications may not assert 
rights deriving from those titles or applications, irrespec­
tive of their priority, either against each other or against 
persons authorized by the owner of the other title or the 
other application to use them. , 
(2) However, the subject matter of the title or of the 
application may not be used or may only be used with 
restrictions in the territory to which the title or the appli­
cation has been extended if unlimited use would lead to 
particular disadvantage for the owner of the other title or 
the other application or for persons he has authorized to 
use the subject matter of his title or his application and 
would be unreasonable when taking into account all the 
circumstances of the case and when weighing up the jus­
tified interests of those concerned. 
(3) Subsections (l) and (2) shall apply mutatis mutan­
dis where identical designs, inventors' certificates or in­
dustrial design patents or applications for such rights 
collide as a result of extension. 
Rights of Prior Use 
27.-(1) If the effect of a patent or utility model ex­
tended under Section I or Section 4 is restricted by a 
right of prior use (Section 12 of the Patent Law, Sec­
tion 13(3) of the Utility Model Law, Section 13(1) of the 
Patent Law of the German Democratic Republic), such 
right of prior use shall apply in the whole Federal terri­
tory with those limitations deriving from Section 12 of 
the Patent Law. 
(2) Subsection (1) shall apply mutatis mutandis if the 
requirements for recognition of a right of prior use are 
satisfied in that territory in which the title did not hither­
to apply. IP IN/IIDEU /1/1 
Page 9 
I~DUSTRIAL PROPERTY 
LA WS AND TREATIES 
Rights of Continued Use 
28.-(1) The effect of a patent or utility model ex­
tended under Section 1 or Section 4 shall not apply to 
any person who had lawfully bc!gun to use the inventio:1 
in that territory in which the title did not previously 
apply after the day that is operative for the priority of the 
application and prior to July 1. 1990. Such person shall 
be authorized to exploit the invention in the whole Feder­
al territory for the needs of his own business in his own 
plant or workshops or the plant or workshops of others, 
on condition that the use does not cause particular preju­
dice to the owner of the title or the persons he has autho­
rized to use the subject macter of his title and which 
would be unreasonable when taking into account all the 
circumstances of the case and when weighing up the jus­
tified interests of those concerned. 
(2) In the case of a product manufactured abroad, the 
user shall only have a right of continued use under sub­
section (1) if use in Germany has led to a property situa­
tion that warrants protection and whose non-recognition 
\vould represent an unreasonable hardship for the user, 
taking into account all the circumstances of the case. 
(3) Subsections (1) and (2) shall apply mutatis mutan­
dis to utility models, inventors' certificates and indus­
trial design patents and semiconductor rights extended 
under Section 1 or Section 4. 
Collision with Rights of Use Under 
Section 23 of [he Patent Law 
29. \Vhere patents or patent applications for which a 
licensing declaration under Section 23 of the Patent Law 
has been made. or is deemed to have been made under 
Section 7, have a scope of protection identical with pat­
ents, patent applications or utility models and collide as 
a result of extension under this Law. the owners of the 
last-mentioned patents. applications or utility models 
may assert the rights in such titles of protection or such 
applications irrespective of the priority against the per­
son entitled to use the invention under Section 23(3), 
fourth sentence, of the Patent Law. Section 28 shall re­
main unaffected. 
SUBCHAPTER 2 
TRADEMARKS AND OTHER DISTINCTIVE SIGNS 
Trademarks 
30.-(1) \Vhere a trademark extended under Section 1 
to the territory designated in Article 3 of the Unification 
Treaty collides as a result of extension with an identical 
mark that has been extended under Section 4 to the re­
maining Federal territory, either mark may only be used 
in the territory to which it has been extended with the 
consent of the owner of the other mark. lP/N/l/DEU/Ifl 
"Page 10 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
(2) The mark may be used without the consent of the 
owner of the other mark in the territory to which it has 
been extended 
1. for advertising in public announcements or in 
communications intended for a large number of 
persons where the dissemination of such public 
announcements or communications cannot reason­
ably be limited to the territory in which the mark 
previously applied, 
2. if the owner of the mark can convincingly show 
that he is entitled. under the provisions of the Law 
on Property, to the return of the other mark or of 
the undertaking to which the other mark belongs, 
3. if exclusion from use of the mark in that territory 
proves unreasonable taking into account all the 
circumstances of the case and weighing up the jus­
tified interests of those concerned and of the gen­
eral public. 
(3) In the cases referred to in subsection (2), items 1 
and 3, the owner of the mark may require appropriate 
compensation from the person who uses the other mark 
where he suffers prejudice beyond an acceptable degree 
due to the use. 
(4) Where the claim to return in the case of subsec­
tion (2), item 2, proves unfounded, the owner of the 
trademark shall be obliged to make good the damage suf­
fered by the owner of the identical mark by reason of the 
fact that the mark has been used without his consent in 
the territory to which it has been extended. 
Other Rights in Distinctive Signs 
31. Where trademarks extended under this Law to the 
territory designated in Article 3 of the Unification Treaty 
or to the remaining Federal territory collide with a name, 
a company name, a special designation of an undertaking 
or other right in a distinctive sign that has been acquired 
by use, Section 30 shall apply mutatis mutandis. 
Right of Continued Use 
32. The effect of a registered mark or an application 
for a mark extended under Section 4 to the remaining 
Federal territory, which would be excluded from regis­
tration under Section 1 or Section 4(1) or (2), item 1, of 
the Trademark Law, shall not be assertable against a per­
son who had already lawfully used before July I, 1990, 
an identical mark for the same or similar goods or ser­
vices in the remaining Federal territory. Such person 
shall be entitled to use the mark in the whole Federal ter­
ritory insofar as use does not cause particular prejudice 
to the owner of the mark or to the persons he has autho­
rized to use the mark. which would be unreasonable 
when taking into account all the circumstances of the 
case and when weighing up the justified interests of 
those concerned and of the general public. PART 2 INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
CONVERSION OF INDICATIONS OF 
SOURCE TO COLLECTIVE MARKS 
Conversion 
33.-( 1) The indications of source entered in the Reg­
ister of Indications of Source and the indications of 
source for which entry in that Register has been applied 
for shall be converted. on request, to collective marks 
(Sections 17 to 23 of the Trademark Law) in accordance 
with the provisions below. 
(2) Indications of source converted to collective 
marks shall enjoy in the remaining Federal territory the 
same priority as in the territory designated in Article 3 of 
the Unification Treaty. 
RequeST for Conversion 
34.-( 1) A request for conversion may only be filed by 
the associations with legal personality or public law 
legal persons referred to in Section 17 of the Trademark 
Law. 
(2) A request for conversion must be filed by the 
close of April 13. 1993. The request shall not be subject 
to fees. There shall be no reinstatement of rights in the 
event of failure to comply with the time limit. 
(3) If no request is made within the time limit stated 
in subsection (2), the right deriving from entry in the 
Register of Indications of Source or the right deriving 
from the application for an indication of source shall ex­
pire. Expiry shall be noted in the Register or in the appli­
cation file. 
(4) The expiry of rights under subsection (3) shall not 
prejudice the entitlement to assert claims with respect to 
the indications of source concerned under general rules 
of law. 
Application of the Trademark Law 
35. A request for conversion shall be dealt with. 
where not otherwise provided below, as an application 
for a collective mark under Sections 17 to 23 of the 
Trademark Law. 
Collision of Converted Indications 
of Source and Trademarks 
36. Sections 2 and 3, 20 to 24 and 30 to 32 shall apply 
mutatis mutandis to requests for conversion of indica­
tions of source to collective marks and to converted indi­
cations of source registered as collective marks. INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE /996 
Eligibility for Protection of Converted 
Indications of Source 
37. \Vhere the other requirements for registration of a 
collective mark are satisfied. the conversion to a collec­
tive mark of an indication of source that has been regis­
tered or applied for may not be refused on the grounds 
that it does not constitute an indication of source unless 
the designation has lost its original meaning as a geo­
graphical indication and the trade circles concerned 
throughout the whole Federal territory understand it ex­
clusively as the name of goods or the designation of a 
type or variety of product. 
Right of Continued Use 
38.-( 1) Where an indication of source that has been 
converted to a collective mark collides in the remaining 
Federal territory with an identical designation that was 
lawfully used there prior to July 1, 1990. as a generic 
designation. the designation may continue to be used as a 
designation for identifying goods or packaging or in an­
nouncements. price lists. business letters. recommenda­
tions. invoices and th~ like for two years after the 
registration of the collective mark. Goods or packaging 
marked in such way or announcements, price lists, busi­
ness letters. recommendations. invoices or the like still 
in stock on expiry of that period may continue to be sold 
or used up until expiry of a further two years. 
(2) \Vhere an indication of source that has been con­
verted to a collective mark collides in the remaining Fed­
eral territory with an identical designation that had 
lawfully been used there prior to July 1, 1990. by an un­
dertaking that has continued the tradition. with regard to 
the use of that designation. of a commercial undertaking 
originally located in the territory designated in Article 3 
of the Unification Treaty, subsection (1) shall apply mu­
tatis mutandis with the proviso that the time limit for 
continued use under the first sentence shall be 10 years. 
PART 3 
CONCILIATION PROCEDURE 
Conciliation Board 
39.-(1) In civil law disputes arising from the collision 
of industrial property rights or rights of use extended 
under this Law. any of the parties may at any time appeal 
to the Conciliation Board. 
(2) The Conciliation Board shall have the task of ne­
gotiating an amicable settlement between the parties in 
disputes of the type referred to in subsection (I). 
(3) The Conciliation Board shall be established at the 
German Patent Office. It may also meet outside its head­
quarters. IP/NI1 IDEU/I/l 
Page 11 
I~DUSTRIAL PROPERTY 
LA WS AND TREATIES 
Composition of the Conciliation Board 
40.-( 1) The Conciliation Board shall comprise a 
Chairman, or his deputy, and two assessors. 
(2) The Chairman c: .. d his deputy must possess the 
qualifications required for judicial office under the Ger­
man Law on Judges and have experience in the field of 
industrial property. They shall be appointed by the Fed­
eral Minister of Justice at the beginning of each calendar 
year for the duration of that year. 
(3) The assessors shall be appointed by the Chairman 
for each individual dispute from a list of assessors to be 
drawn up by the President of the German Patent Office 
each year for that calendar year. Appointment shall be 
with the consent of the parties. Where the parties make a 
mutually agreed proposal, the Chairman shall accept that 
proposal, as a rule, even if the proposed persons are not 
included in the list. 
(4) Sections 41 to 43 and Section 44(2) to (4) of the 
Code of Civil Procedure shall apply mlltaris mutandis to 
the exclusion and refusal of members of the Conciliation 
Board. The petition for refusal shall be heard by the 
Federal Patent Court. 
Honorary Office; SlIpervision 
41.-( 1) The members of the Conciliation Board shall 
carry out their activities in an honorary capacity. The 
Chairman and his deputy may also be appointed on a 
full-time basis. 
(2) Prior to their first official duties, the Chairman 
and his deputy shall be bound by the Federal Minister of 
Justice, and the assessors shall be bound by the Chair­
man. to conscientious and impartial exercise of their of­
fice and to secrecy with regard to the facts that become 
known to them in their official capacity. 
(3) Official supervision of the Conciliation Board 
shall lie with the Chairman and official supervision of 
the Chairman with the Federal Minister of Justice. 
Proceedings Before the Conciliation Board 
42.-( 1) Appeals to the Conciliation Board shall be 
lodged by means of a written petition. The petition shall 
contain a brief description of the facts together with the 
name and address of the other pany. 
(2) Sections 1035 and 1036 of the Code of Civil Pro­
cedure shall apply mutatis mutandis to proceedings be­
fore the Conciliation Board. Section 1034(1) of the Code 
of Civil Procedure shall apply muratis mutandis with the 
proviso that patent attorneys, holders of certificates of 
representation and, in the framework of Section 156 of 
the Code of Patent Attorneys. patent assessors may not 
be refused by the Conciliation Board. IP/N/lIDEU/I/1 
Page 12 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
(3) In all other cases, the Conciliation Board shall de­
termine its procedure itself. It may require the personal 
appearance of the parties. 
Conciliation Proposal; Settlement 
43.-( I) The Conciliation Board shall take its deci­
sions on a majority vote. Section 196(2) of the Judiciary 
Law shall apply. 
(2) The Conciliation Board may submit the written 
conciliation proposal to the parties. The conciliation pro­
posal may only be published with the consent of the par­
ties. 
(3) A settlement reached before the Conciliation 
Board shall be enforceable if it is recorded in a separate 
written document signed by the members of the Concili­
ation Board who participated in the negotiations and by 
the parties, bearing the date on which it was reached. 
Section 797a of the Code of Civil Procedure shall apply 
mutatis mutandis. 
Interruption of Prescription 
44. An appeal to the Conciliation Board shall 
interrupt prescription in the same way as the lodging 
of an appeal. Interruption shall continue until the 
proceedings before the Conciliation Board are termi­
nated. If no settlement is reached, the Conciliation Board 
shall determine the time at which the proceedings are 
ended. The Chairman shall inform the parties thereof. 
Where appeal to the Conciliation Board is withdrawn, 
interruption of prescription shall be deemed not to have 
occurred. 
Costs of Conciliation Proceedings 
45.-{ I) A fee of DM 300 shall be paid together with 
the request for appeal to the Conciliation Board. If the 
fee is not paid, the request shall be deemed not to have 
been submitted. 
(2) The Ordinance on Administrative Costs Before 
the German Patent Office shall apply mutatis mutandis 
to payment of the fee in accordance with subsection (1) 
and the determination of costs. 
(3) The Conciliation Board shall endeavor to obtain 
amicable agreement of the parties on the liability for the 
costs incurred by the proceedings. This shall also apply 
where no agreement has been reached in the matter itself. 
Where no agreement is reached as to the sharing of costs, 
the Conciliation Board shall decide on the sharing of the 
costs incurred in accordance with subsection (2) at its 
discretion; in all other cases, each party shall itself bear 
the costs it has incurred. INDUSTRIAL PROPERTY 
LAWS AND TREATIES 
(4) An appeal shall lie to the Federal Patent Court 
from decisions taken under subsection (2) and subsec­
tion (3), third sentence. The provisions of the Patent Law 
with regard to appeals procedure shall apply mutatis mu­
tandis, with the exception of Sectior.:: 76 to 78. 
Compensation of Members of the 
Conciliation Board 
46. The members of the Conciliation Board acting in 
an honorary capacity shall receive compensation in ac­
cordance with Sections 2 to 5 and 9 to 11 of the Law on 
Compensation for Honorary Judges; the condition under 
Annex I, Chapter Ill. Field A, Section Ill. item 24, of the 
Unification Treaty of August 31. 1990 (BGB!. 1990, Il, 
pp. 885,936) shall not apply. The compensation shall be 
determined by the President of the German Patent Office. 
Section 12 of the Law of Compensation for Honorary 
Judges shall apply mutatis mutandis. The Federal Patent 
Court shall be competent for the judicial determination. 
47 ..... , PART 4 
AMENDMENT OF LAWS 
Amendment of the Trademark Law 
Amendment of the Law on the Fees of the Patent Office 
and of the Patent Court 
48 ..... , 
PART 5 
TRANSITIONAL AND FINAL PROVISIONS 
Employee Inventions 
49. The provisions of the Law on Employee Inven­
tions shall apply to inventions made prior to October 3. 
1990, in the territory designated in Article 3 of the Unifi­
cation Treaty with regard to the generation and due date 
of claims to remuneration in the case of unlimited use of 
a service invention, where the claim to remuneration has 
not arisen by May 1, 1992. as also the provisions on arbi­
tration proceedings and on court proceedings. In all other 
cases, the provisions hitherto applicable shall remain ap­
plicable to them (Annex I, Chapter Ill, Field E, Sec­
tion n, item 1, Article 11 of the Unification Treaty of 
August 31, 1990, BGBl. 1990 n, pp. 885, 962). 
1 Not reproduced here (Editor's note). INDUSTRIAL PROPERTY 
AND COPYRIGHT -JUNE 1996 
Transfer of Mediation Proceedings 
50. Proceedings still pending before the mediation of­
fice for remuneration disputes of the German Patent Of­
fice on May I, 1992, shall be transferred, in their cu·:rent 
status. to the arbitration board set up at the German 
Patent Office under the Law on Employee Inventions. 
Trallsfer of Appeal 
and Revocation Proceedings 
51.-( 1) Proceedings still pending before an appeal in­
stance or a revocation instance of the German Patent Of­
fice on May 1, 1992, shall be transferred, in their current 
status, to the Federal Patent Court. 
(2) Proceedings still pending before a cancellation in­
stance for trademarks of the German Patent Office on 
May I, 1992, shall be pursued by the Trademark Divi­
sion of the German Patent Office. 
Time Limits , 
52. \Vhere the -subject matter of proceedings is a right 
that has been extended under Section 4, or an application 
for a right extended under Section 4, the course of any 
procedural time limit that has begun before May 1, 1992, IP/N/l/DEV/I/1 
Page 13 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
shall be determined by the hitherto applicable provi­
sions. 
Fees 
53.-( 1) Fees for rights and applications for rights ex­
tended under Section 4 that became due before May 1, 
1992, shall be paid according to the hitherto applicable 
provisions. 
(2) \Vhere a fee that becomes due after May 1, 1992. 
has already been effectively paid prior to that date in ac­
cordance with the previous schedule of fees, the due fees 
shall be deemed to have been paid. 
Application of the Law Oil Unfair Competition 
and of Other Statutory Provisions 
54. Application of the Law on Unfair Competition 
and the general rules of law on the acquisition or exer­
cise of rights, particularly those on the abuse of rights, 
shall not be effected by the provisions of this Law. 
Entry Into Force 
55. This Law shall enter into force on the first day of 
the calendar month following its promulgation.