ORGANIZACIÓN MUNDIAL 
DEL COMERCIO 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio IP/N/1/DEU/T/2 
4 de noviembre de 1996 
(96-4630) 
Original: inglés 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
Alemania 
El 30 de octubre de 1996 la Secretaría recibió una notificación presentada por la delegación 
de Alemania en virtud del párrafo 2 del artículo 63 del Acuerdo, relativa a la Ley de 1996 por la que 
se modifica la Ley de Marcas de Fábrica o de Comercio1, que se adjunta. Mediante esta Ley se 
modifican la Ley de Marcas de Fábrica o de Comercio (documento IP/N/l/DEU/T/1), la Ley de Derecho 
de Autor y Derechos Conexos (documento IP/N/l/DEU/C/1) y tres leyes notificadas por Alemania 
bajo el epígrafe "Otras leyes y reglamentos" en virtud del párrafo 2 del artículo 63 del Acuerdo, a 
saber, la Ley Judicial, el Código de Procedimiento Penal y la Ley de Tasas de la Oficina de Patentes 
y el Tribunal de Patentes (véase el documento IP/N/l/DEU/1/Rev .1). 
1El texto de esta Ley se reproduce solamente en inglés. IPINIlIDEU IT 12 
Page 2 
Law of 1996 Amending the Trade Mark Law 
The Bundestag has adopted the following Law: 
Article 1 
Amendment of the Trade Mark Law 
The Trade Mark Law of October 25, 1994 (BGBl. I p. 3082, 1995 I 
p. 156) shall be amended as follows: 
1. Section 27(4) shall read as follows: 
"(4) Where the transfer of rights concerns only some of 
the goods or services for which the trade mark is 
registered, a fee as prescribed in the schedule of fees 
shall be paid with the request for recordal of the 
trpnsfer. If the fee is not paid, the request shall be 
F deemed not to have been filed. In other respects, the 
provisions concerning the division of the registration 
shall apply mutatis mutandis with the exception of, Section 
46 (2) and (3), sentences l' to 3.11 
2. Section 29(3) shall read as follows: 
"(3) Where the right conferred by the registration of a 
trade mark is involved in insolvency proceedings, an entry 
to this effect shall be made in the Register on request of 
the administrator in insolvency proceedings or the 
insolvency court. In case of self-administration (Section 
270 of the Order Concerning Insolvency Proceedings), the 
administrator in self-administration proceedings shall 
take' the place of the administrator in insolvency 
proceedings. 11 
* German title: Markenrechtsanderungsgesetz 1996 
Entry into force: July 25, 1996 
Source: Bundesgesetzblatt, No. 36 of July. 24, 1996 
Note: English translation by the German Patent Office, 
communicated by the German authorities IP/N/IIDEU/T/2 
Page 3 
3. In Section 65(1) No.7 there shall be substituted a comma 
for "andll after lIinspection of the filesll
• The words 
11 trade marks 11 shall be followed by 11 and the procedure 
concerning the conversion of Community trade marksll. 
4. There shall be added to the heading of Part 5 a semicolon 
followed by "Community Trade-Marks". 
5. There shall be inserted after Section 125 the following 
new chapter: 
IIChapter 3 
Community Trade Marks 
~il~ng of ~pplications for Community Trade Marks 
with the Patent Office 
Sec. 125a.-If applications for Community trade marks are filed 
with the Patent Office under Article 25(1) (b) of the Council 
Regulation (EC) No. 40/94 of 20 December 1993 on the Community 
trade mark (OJ EC No. L 11, p.1), the Patent Office shall mark 
the application with the date of its receipt and transmit it 
immediately and without examination to the Office for 
Harmonization in the Internal Market (Trade Marks and Designs) . 
Application of the Provisions of this Law 
Sec. 125b.- The provisions of this Law shall apply to trade 
marks filed or registered under the Council Regulation on the 
Community trade mark in the following cases: 
1. In view of the application of Section 9 (relative 
grounds for refusal), earlier filed or registered 
Community trade marks shall have equal status as earlier 
trade marks filed or registered under this Law subject, IP IN/l/DEU/T 12 
Page 4 
however, to the proviso that a reputation in the Community 
under Article 9(1) (c), sentence 2, of the Council 
Regulation on the Community trade mark shall be 
substituted for a reputation in the Federal Republic of 
Germany under section 9(1), No.3. 
2. In addition to the rights under Articles 9 to 11 of the 
Council Regulation on the Community trade mark, the 
proprietor of a registered Cpmmunity trade mark shall have 
the same rights to compensation for damages (Section 14(6) 
and (7», destruction (Section 18) and information 
(Section 19) as the proprietor of a trade mark registered 
under this Law. 
3. If rights resulting from a registered Community trade 
mark are asserted in respect of the use of a later trade 
mark registered under this Law, Section 21(1) (forfeiture) 
shall apply mutatis mutandis. 
4. If an opposition against the registration of a trade 
mark (Section 42) is based on an earlier registered 
Community trade mark, Section 43(1) (prima facie evidence 
of use) shall apply mutatis mutandis subject to the 
proviso that the use of the earlier Community trade mark 
under Article 15 of the Council Regulation on the 
Co~~unity trade mark shall be substituted for the use of 
the earlier trade mark under Section 26. 
5. If a request for cancellation of the registration of a 
trade mark (Section 51(1» is based on an earlier 
Community trade mark, the following shall apply mutatis 
mutandis: 
(a) Section 51(2), first sentence (forfeiture); 
(b) Section 55(3) (proof of use) subject to the 
proviso that use of the Community trade mark under 
Article 15 of the Council Regulation. on the IP/N/1/DEU/T/2 
Page 5 
Community trade mark shall be substituted for use 
of an earlier trade mark under Section 26. 
6. Requests for seizure on import or export may be filed 
by the proprietors of registered Community trade marks in 
the same way as by the proprietors of trade marks 
registered under this Law. Sections 146 to 149 shall apply 
mutatis mutandis. 
Later Invalidation of a Trade Mark 
Sec. 125c.-(1) Where, in respect of a filed or registered 
Community trade mark, the seniority of a trade mark recorded in 
the Register of the Patent Office has been claimed under 
Article 34 or 35 of the Council Regulation on the Community 
trade mark and where the trade mark recorded in the Register of 
the Patent Office has been cancelled due to non-renewal of the 
.~ 
period/~f protection under Section 47(6) or surrender under 
Section 48(1) I the invalidity of the said trade mark on grounds 
of revocation or nullity may be established later upon request. 
(2) Invalidity shall be established on the same conditions 
as cancellation on grounds of revocation or nullity. However, 
the invalidity of a trade mark on grounds of revocation under 
Section 49(1) may only be established if the conditions for 
cancellation under the said provision were already fulfilled at 
the date of cancellation of the trade mark due to non-renewal 
of the period of.protection or surrender. 
(3) The invalidation procedure shall be governed ·by the 
provisions applicable to the procedure for cancellation o.f a 
registered trade mark subject to the proviso that the 
establishment of invalidity of a trade mark shall be 
substituted for the cancellation of its registration. IP/N/IIDEU/T/2 
Page 6 
Conversion of Community Trade Marks 
Sec. 1250.-(1) If a request for conversion of a filed or 
registered Community trade mark has been transmitted to the 
Patent Office under Article 109(3) of the Council Regulation on 
the Community trade mark, the applicant shall pay a fee as 
specified in the schedule of fees within a period of two months 
from the receipt of the request for conversion by the Patent 
Office. Where conversion is requested in respect of goods or 
services coming under more than three classes of the 
Classification of goods and services, a class fee as specified 
in the schedule of fees shall be payable for each further 
class. If the fee is not paid in time, the request for 
conversion shall be deemed not to have been filed. 
(2) The Patent Office shall examine if the request for 
conversfon is admissible under Article 108(2) of the Council 
~ Regulation on the Community trade mark. If the request for 
conversion is inadmissible, it shall be refused. 
(3) Where the request for conversion concerns a trade mark 
not yet registered as a Community trade mark, the request for 
conversion shall be treated as an application ror the recordal 
of a trade mark in the Register of the Patent Office subject to 
the proviso that the date of filing of the Co~uunity trade mark 
within the meaning of Article 27 of the Council Regulation on 
the Community trade mark or the date of a priority claimed in 
respect of a Community trade mark shall be substituted for the 
date of filing within the meaning of Section 33(1). If the 
seniority of a trade mark recorded in the Register of the 
Patent Office is claimed under Article 34 of the Council 
Regulation on the Community t"rade mark, the said seniority 
shall be substituted for the relevant date under sentence 1. 
(4) Where the request for conversion concerns a trade mark 
already registered as ~ Community trade mark, the Patent Office 
shall directly record the trade mark in the Register under IP/N/1/DEU/T/2 
Page 7 
Section 41 without further examination while maintaining its 
original seniority. opposition to the registration shall not be 
admitted. 
(5) In other respects, the provisions of this Law concerning 
the application for trade marks shall apply to requests for 
conversion. 
Community Trade Mark Courts; Community Trade Mark 
Litigation 
Sec. 125e.-(1) For all actions for which the Community trade 
mark courts have jurisdiction within the meaning of 
Article 91 (1) of the Council Regulation on the Community trade 
mark (Community Trade Mark Litigation), the District Courts 
(Landgerichte) shall have exclusive jurisdiction as Community 
trade mark courts of first instance without regard to the value l in dispute. 
(2) Community trade mark court of second instance shall be 
the Higher Regional Court (Oberlandesgericht) in the district 
of which the Community trade mark court of first instance is 
located. 
(3) The governments of the Lander shall have the power to 
allot by legal ordinance Community trade mark litigations for 
the areas of several Community trade mark courts to one such 
court. The government~ of the Lander may transfer 'those powers 
by legal ordinance to the Ministries of Justice of the Lander. 
(4) The Lander may transfer by agreement, in whole or in 
part, the functions incumbent upon the Community trade mark 
courts of one Land to the competent Community trade mark court 
of another Land. 
(5) Section 140 (3) to (5) shall apply mutatis muta~dis to 
proceedings before the Community trade mark courts. IPINII/DEU IT 12 
Page 8 
Information of the Commission 
Sec. 125f. The Federal Ministry of Justice shall notify the 
Commission of the European Communities of the Community trade 
mark courts of first and second instance as well as of any 
change in the number, names or territorial jurisdiction of the 
Community trade mark courts of first and second instance. 
Territorial Jurisdiction of the Community Trade Mark Courts 
Sec. 125g. Where German Community trade mark courts have 
international jurisdiction under Article 93 of the Council 
Regulation on the Community trade mark, such provisions 
concerning territorial jurisdiction shall apply mutatis 
mutandip as would be applicable to trade mark applications 
filed *ith the Patent Office or trade marks recorded in the 
Register of the Patent Office. Where jurisdiction has not been 
established accordingly, the court having territorial 
jurisdiction shall be the court where the plaintiff has his 
general venue. 
Insolvency Proceedings 
Sec. 125h.-(1) Where it is known to the insolvency court 
that a filed or registered Community trade mark is among the 
insolvency assets, it shall directly request of the Office for 
Harmonization in the Internal Market (Trade Marks and Designs) 
the recordal in the Community Trade Mark Register or, in case 
of an application, in the files of the application of 
1. the opening of the proceedings and, insofar as it is 
not contained therein, the order of a limitation of 
the right of disposal; IP/N/lIDEU/T/2 
Page 9 
2. the release or realization of the Co~uunity trade mark 
or of the Community trade mark application; 
3. the final stay of proceedings and 
4. the final cancellation of the proceedings in case of 
control of the debtor, however, only after the 
conclusion of control, and the limitation of the right 
of disposal. 
(2) The recordal in the Community Trade Mark Register or in 
the files of the application may also be requested by the 
administrator in insolvency proceedings. In case of self­
administration (Section 270 of the Order Concerning Insolvency 
Proceedings), the administrator in self-administration 
proceedings shall take the place of the administrator in 
insolvency proceedings. 11 
6. Section 143 shall be amended as follows: 
(a) There shall be inserted a new subsection (la): 
11 (la) Any person who infringes the rights of the 
proprietor of a trade mark protected under the legal 
provisions of the European Community shall be punished 
in the same way insofar as a legal ordinance under 
subsection (7) refers to this penal provision in 
connection with a specific offense.1I 
(b) In subsection (4) I J/ in subsections (1) and (la) 11 shall 
be substituted for Hin subsection (1)11. 
(c) There shall be added the following subsection (7): 
11 (7) The Federal Ministry of· Justice shall .. have power 
to determine by legal ordinance and without the 
consent of th~ Federal Council the offenses punishable 
as criminal offenses under subsection (la) insofar as IP/N/1/DEU/T/2 
Page 10 
this is necessary in view of implementing the 
protection of trade marks in legal provisions of the 
European Conununity." 
7. Section 144 (1) shall be amended as follows: 
(a) In No. 1 "also in conjunction, respectively, with 
subsection (4) or a legal ordinance under Section 137 
(1)" shall be substituted for lIalso in conjunction 
with subsection (4)". 
(b) In No. 2, "or a legal ordinance under Section 137 (1)11 
shall be inserted after the indication IIsubsection 
(4) " • 
8. In Section 146 subsection (1), sentence 1, "Council 
! . Regulation (EEC) No. 3295/94 of December 22, 1994, Laying 
Down Measures to Prohibit the Release for Free 
Circulation, Export, Re-export or Entry for a Suspensive 
Procedure of Counterfeit and. Pirated Goods (OJ EC No. L 
341, p.8)" shall be substituted for IICouncil Regulation 
(EEC) No. 3842/86 of December 1, 1986, Laying Down 
Measures to Prohibit the Release for Free Circulation of 
Counterfeit Goods (OJ EC No. L 357, p. 1)11. 
9. In the heading of Section lSD, the indication "Regulation 
(EEC) No. 3295/94" shall be s~bstituted for the indication 
"Regulation (EEC) No. 3842/86". IP/N/lIDEU/T/2 
Page 11 
10. There shall be added the following Section 165: 
Transitional Provision in View 
of the Revision of Insolvency Law 
\lSec. 165. Until January 11 1999, Section 125h shall 
apply subject to the proviso that bankruptcy proceedings 
shall be substituted for insolvency proceedings, 
bankruptcy court· for insolvency court, bankruptcy assets 
for insolvency assets and administrator in bankruptcy 
proceedings for administrator in insolvency proceedings." 
Article 2 
Amendment of the Judiciary Law 
In Section 95 (1) No. 4 (c) of the version of the Judiciary Law 
•. ~ notified on 9 May 1975 (Federal Law Gazette [BGBl.] Part I 
p. 1077), which was lastly amended by Article 2 of the Act 
dated 16 June 1995 (Federal Law Gazette Part I p. 818), the 
words "of trade marks and other signs, as well as designs and 
models 11 shall be substituted for the words lIof trade names, 
designs and models 11 • 
Article 3 
Amendment of the Code of Criminal Procedure 
In Section 374 (1) No. 8 of the Code of Criminal Procedure as 
published on April 7, 1987 (BGBI. I, p.l074, 1319) I last 
amended by Article 9 (2) of the Law of August 21, 1995 
(BGBl .. I, p. 1050) the indication "and (la)" shall be inserted 
after "section 143 (1)". IP/N/l/DEU IT 12 
Page 12 
Article 4 
Amendment of the Law Concerning the Fees 
of the Patent Office and the Patent court 
The annex to section 1 (Schedule of Fees) of the Law Concerning 
the Fees of the Patent Office and the Patent Court of 
August 18, 1976 (BGBl. I, p.2188) last amended by Article 20 of 
the Law of October 25, 1994 (BGBl. I, p.3082) shall be amended 
as follows: 
1. In Nos. 131 700 and 133 400, "or transfer in part" 
shall be inserted after IIdivision", respectively. 
2. The words "or a Community trade mark I1 shall be added 
to the heading preceding No. 135 100. 
3. In Nos. 135 100 to 135 300, the indication IISec. 125d 
(1)" shall be inserted after the indication "Sec. 125 
(2)", respectively. 
Article 5 
Amen~~ent of the Law Dealing with 
Copyright and Related Rights 
Section 111a of the Law Dealing with Copyright and Related 
Rights of September 9, 1965 (BGBl. I, p.1273) last amended by 
the Law of June 23, 1995 (BGBl. I, p.842) shall be amended as 
follows: 
1. In sUbse"ction (1), sentence 1, "insofar as the Council 
Regulation (EEC) No. 3295/94 of December 22, 1994, 
Laying Down Measures to Prohibit the Release for Free 
Circulation, Export, Re-Export or Entry for a 
Suspensive Procedure of Counterfeit and Pirated Goods 
(OJ EC No. L 341, p.8) is not applicable in its 
applicable ve"rsion" shall be inserted after lithe 
copies 11 • IP/N/IIDEU/T/2 
Page 13 
2. There shall be added the following new sUbsection (8): 
"(8) In proceedings under the Council Regulation (EEC) No. 
3295/94 subsections 1 to 7 shall apply mutatis mutandis 
unless otherwise provided by the Council Regulation." 
Article 6 
Entry into Force 
(1) Article 1 No. 2 of this Law shall enter into force on 
January 1, 1999. 
(2) In other respects this Law shall enter into force on the 
qay following its promulgation.