IP/N/1/DEU/2  
IP/N/1/DEU/T/3  
 
24 August 2023  
(23-5685)  Page: 1/6 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original: English  
 
 
NOTIFICATION OF LAWS AND REGULATIONS  
UNDER ARTICLE 63.2 OF THE TRIPS AGREEMENT  
GERMANY : ACT ON THE PROTECTION OF TRADE MARKS AND OTHER SIGNS  
(TRADE MARK ACT)  
Notifying Member  GERMANY  
 
Details of the notified legal text  
 
Title Act on the Protection of Trade Marks and other Signs (Trade Mark Act)  
Subject matter  Trademarks  
Nature of 
notification  [X] Main dedicated intellectual property law or regulation  
[  ] Other law or regulation  
Link to legal text* https://ip -documents.info/2023/IP/DEU/23_11735_00_e.pdf  
Notification status  [  ] First notification  
[  ] Amendment or revision to notified legal text  
[X] Replacement or consolidation of notified legal text(s)  
Previous 
notification(s) 
referred to  IP/N/1/DEU/T/2 ;  
(Agreement concerning the attached Law of 1996 Amendin g the Trade Mark 
Law) 
 
IP/N/1/DEU/T/1 ;  
(Protection of Trademarks and Other Signs (Trademark Law) of 25 October 
1994)  
 
IP/N/1/DEU/1  
(Order Concerning the Implementation of the Trademark Law of 30 
November  1994)  
 
Brief description of the notified legal text  
 
The Trademark Law Modernization Act  (Markenrechtsmodernisierungsgesetz) introduced significant 
changes to German trademark law. The law came into force  on January 14, 2019.  
Overview of the most important changes:  
 
- Determinability/new types of trademark s 
Whereas trademark s in the register previously had to be capable of being represented graphically, 
now it will suffice if they can be clearly and precisely determined. This change in representation aims 
to meet the market needs for modern trademark  types and also takes into  account the technical 
possibilities of representing a trademark  in electronic registers. For example, sound marks, 
multimedia marks, holograms and other types of trademark s in suitable electronic formats may also 
be registered as trademark s, provided ther e are no grounds for refusal.  
 IP/N/1/DEU/2 • IP/N/1/DEU/T/3  
 
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  - The national certification mark  
The certification mark introduced a new trademark  category into German trademark  law. The main 
feature of the certification mark is that, unlike the individual trademark , it does not focus on the 
function of the trademark  as an indication of origin but on the guarantee function.  
A certification mark must be described as such when the trademark  application is filed. It must be 
capable of distinguishing goods or services which are certified by the proprietor of the mark in 
respect of material, mode of manufacture, quality, accuracy or other characteristics of goods or 
performance of serv ices, from goods and services which are not certified accordingly. The certifying 
character of the mark must result from the representation of the sign. The trademark  proprietor 
must provide information – in particular on the guaranteed characteristics of the goods, the 
conditions of use and the testing and monitoring measures – in the mandatory regulations governing 
use of the trademark . 
The certification mark will enable neutral certification companies to obtain trademark  protection in 
Germany for quality  seals or test labels on the basis of which an international extension of protection 
will also be possible.  
 
- A new name: cancellation proceedings renamed revocation/invalidity proceedings  
"Cancellation proceedings " was renamed "revocation proceedings" or  "invalidity proceedings". It is 
possible to claim relative grounds for refusal (earlier rights) in official invalidity proceedings in 
addition to absolute grounds for refusal, as currently possible. Furthermore, the current formal 
preliminary procedure wi th regard to revocation declarations was converted into revocation 
proceedings before the office.  
 
- Important: new absolute grounds for refusal  
Geographical indications and designations of origin, in particular for foodstuffs, wines and spirits 
protected under national or European legislation or conventions, have now been explicitly introduced 
into the Trade Mark Act as absolute grounds for refusal. In addition, protected traditional terms for 
wine as well as traditional specialities guaranteed with regard  to foodstuffs will also have to be 
considered as absolute grounds for refusal during the application procedure or invalidity proceedings. 
Trademark s containing such indications, directly or indirectly, may be registered only for goods 
expressly conforming  to the specification. In addition, variety denominations enjoying protection in 
Germany or the EU, under national or international legislation, may also conflict with the registration 
of an identical trademark  or a trademark  which represents the essential  elements of the variety 
denomination.  
 
- Registrability of licences/register entry about willingness to license or sell/transfer  
Licences are entered in the register upon request. The entry includes information on the licensee, 
the type of licence and res trictions, if any. The registration, amendment and cancellation of a licence 
in the register will be subject to a fee. It is now also possible to record licen ces for trademark s for 
which protection was extended to Germany in the international register. The  holder of an exclusive 
licence himself/herself may also bring an action before the ordinary courts for trademark  
infringement if the proprietor of the trademark  himself/herself does not bring an action within a 
reasonable period of time after being formal ly requested to do so. In addition, upon request, 
trademark  applicants and proprietors may have an entry included in the register about a non -binding 
declaration of their willingness to license or sell/transfer their trademark . The entry is free of charge 
and this willingness may be withdrawn at any time.  
 
- Changes regarding term of protection and renewals  
The German Patent and Trade Mark Office (DPMA) has brought the calculation of the duration of 
protection, pursuant to Section 47(1) of the Trade Mark Act (Markengesetz), into line with the 
practice of the European Union Intellectual Property Office (EUIPO).  
The ten -year duration of protection of trademark s registered on or after 14 January 2019 starts on 
the day following the filing of the tradema rk application and, as a rule, ends on the expiry of the day 
which corresponds in designation or number to the filing date (e.g. application of 17 January 2019 
– end of protection on 17 January 2029). For the duration of protection of a national trademark  and 
a European Union trademark , a uniform method of calculation applies to this extent.  
For trademark s registered before 14 January 2019, the duration of protection ends, as before, at 
the end of the month (Sec. 159(1) Trade Mark Act in conjunction with S ec. 47(1) Trade Mark Act, 
old version). The DPMA will inform the trademark  proprietors eight months in advance of the expiry 
of the duration of protection of their trademark . 
 IP/N/1/DEU/2 • IP/N/1/DEU/T/3  
 
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  Since the entry into force of the Trade Mark Law Mode rnizat ion Act 
(Markenrechtsmodernisierungsgesetz), the date of expiry of the duration of protection and the due 
date of payment of the renewal fee have differed. The request for renewal must be filed within a six -
month period before the expiry of the duration of  protection or within an additional period of six 
months after the end of the duration of protection. Accordingly, the renewal fees and, if applicable, 
the class fees for the following term of protection are due six months before the expiry of the duration  
of protection. If the renewal fee and class fees, if any, are only paid after expiry of the duration of 
protection, surcharges must be paid in addition to the renewal fee within the six -month additional 
period. The old version of the Patent Costs Act (Pat entkostengesetz) is applicable for registered 
trademark s whose duration of protection expires twelve months after 31 January 2019, at the latest.  
 
- Abolished: reclassification no longer takes place  
Reclassification was abolished. If the division into clas ses of goods and services is altered after the 
filing date, the classification will not be adjusted upon renewal of the trademark , neither at the 
request of the proprietor nor ex officio . 
 
- Many changes in the opposition proceedings  
The system applied to opposition proceedings changed . Whereas in the past, filing an opposition was 
only possible on the basis of an opposing sign, the holder of several earlier rights is now able to 
assert them by lodging a single opposition. As before, it is possible to decid e jointly on several 
oppositions. At the same time, the opposition options will be expanded . For example, protected 
geographical indications and protected designations of origin will constitute new, additional grounds 
for opposition.  
The opposition fee was  brought into line with the new system and the increased effort involved. As 
before, this amount covers one opposing sign. For each additionally asserted opposing sign, a further 
fee is payable.  
In order to facilitate negotiations between the parties to th e proceedings, a period of at least two 
months will be granted at their joint request to reach an amicable settlement ("cooling -off"). This 
period may be extended by a joint request.  
The second objection of non -use with the moving period of use pursuant to  Section 43(1), second 
sentence , of the Trade Mark Act is repealed. For these cases, however, cancellation proceedings due 
to revocation (new: "revocation proceedings") are still available. Proof of use is required instead of 
making a plausible case, but t his can also be provided by means of an affirmation in lieu of an oath. 
This has so far also been the main means of making a plausible case. The five -year period for which 
proof of use of the opposing trademark  must be furnished begins five years before the filing date or 
the priority date of the challenged trademark , instead of the five years before the date of publication 
of the registration of the challenged trademark , as currently applicable. Thus the period  of use that 
must be proved corresponds to the rule in European Union trademark  law. 
The grace period for use will commence on the date when no further opposition can be filed against 
the registration of a trademark . This is either the day after expiry of the opposition period or the 
date on which the decision which concluded the opposition proceedings becomes final or the 
withdrawal of the (last) opposition. So far, the grace period for use began upon publication of the 
registration or – if an opposition w as filed against the registration – at the date when the opposition 
proceedings were concluded. This means that the calculation of the grace period for use of the 
opposing trademark  is in line with European Union trademark  law. The beginning and the end of  the 
grace period for use has to be recorded in the Trade Mark Register.  
These changes will also apply to oppositions within the framework of the procedure for the extension 
of protection of international registrations of marks to the territory of the Fede ral Republic of 
Germany.  
- Invalidity of a trademark  due to absolute grounds for refusal (section 50 of the Trade Mark Act ) 
The invalidity proceedings conducted due to absolute grounds for refusal will remain substantially 
unchanged by the amendments applicable as from May 2020 . 
Upon request, the registration of a trademark  is declared invalid and cancelled by the German Patent 
and Trade Mark Office due to absolute grounds for refusal if the trademark  has been registered 
contrary to section 3, section 7 or section 8 of the Trade Mark Act ; that means if it was not eligible 
for trademark  protection, if the applicant was not capable of being the proprietor of a trademark  or 
if there were absolute grounds for refusal and such ground for refusal c ontinues to exist at the time 
the decision on invalidity is made. Further grounds for invalidity concerning collective marks are 
specified in sections 106, 103 of the Trade Mark Act; further grounds for invalidity concerning 
certification marks are specifi ed in sections 106h, 106e of the Trade Mark Act.  
 IP/N/1/DEU/2 • IP/N/1/DEU/T/3  
 
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  The application for a declaration of invalidity due to absolute grounds for refusal can be filed by any 
natural or legal person as well as any group or body set up for the purpose of representing the 
interests of manufacturers, producers, suppliers of services, traders or consumers that can be a 
party to the proceedings (section 53 (2) of the Trade Mark Act).  
The application for a declaration of invalidity must be filed in writing. In addition, section 53 (1)  of 
the Trade Mark Act now provides that the facts and evidence in support of the statement of grounds 
must be indicated. For this reason, the application form concerning the invalidity proceedings due 
to absolute grounds for refusa l (W 7442) has been changed accordingly. Please use the latest form!  
A fee of 400 euros must be paid within three months from filing the application. If the registration 
of the trademark  has been applied for on or after 14 January 2019, the grounds for ref usal under 
section 8 (2) nos. 9 to 12 of the Trade Mark Act (geographical indications and designations of origin, 
traditional terms for wine, traditional specialities, plant variety denominations) added by the Trade 
Mark Law Moderni zation Act can also be r eferred to.  
The adversarial proceedings are conducted only if the proprietor of the registered mark objects to 
the declaration of invalidity and cancellation within two months of the receipt of the application for 
a declaration of invalidity (section 53 (5 ) of the Trade Mark Act). Otherwise, the trademark  is 
declared invalid and cancelled from the Register.  
If the application for a declaration of invalidity due to absolute grounds for refusal is granted, the 
effects of the trademark  are deemed not to have t aken place, as from the outset, to the extent that 
the trademark  has been declared invalid (section 52 (2) of the Trade Mark Act).  
The provisions set out above apply accordingly to the part of international registrations of marks 
that extends to Germany, s ection 115 of the Trade Mark Act.  
 
- Invalidity of a trademark  due to conflicting earlier rights (section 51 of the Trade Mark Act)  
Starting from 1 May 2020, it is also possible to have the option to file an application for a declaration 
of invalidity and cancellation of a registered mark – or for invalidation of the part of an international 
registration that extends to Germany – due to any conflicting earlier right within the meaning of 
sections 9 to 13 of the Trade Mark Act. These proceedings could so far  be conducted only before the 
ordinary courts.  
The application for a declaration of invalidity because of earlier rights can be filed by the holder of 
the rights stipulated in sections 9 to 13 of the Trade Mark Act and by persons entitled to invoke 
rights resulting from a protected geographical indication or a protected designation of origin 
(section  53 (3) of the Trade Mark Act).  
Such application can also be based on several earlier rights of the same holder (section 51 (1) of 
the Trade Mark Act). Section 51 (2) to (4) of the Trade Mark Act contains special provisions that 
exclude the declaration of invalidity because of conflicting earlier rights in certain cases (e.g. in case 
of acquiescence of the later trademark  or non -use of the earlier trademark ). 
The application for a declaration of invalidity must be filed in writing and the facts and evidence in 
support of the statement of grounds must be indicated (section 53 (1) sentences 1 and 2 of the 
Trade Mark Act).  
A fee must be paid within three months from  filing the application. If the application for a declaration 
of invalidity is based on more than one earlier right, an additional fee must be paid with respect to 
each additional right. The adversarial proceedings are conducted only if the proprietor of t he 
registered mark objects to the declaration of invalidity and cancellation within two months of the 
receipt of the application for a declaration of invalidity (section 53 (5) of the Trade Mark Act). 
Otherwise, the trademark  is declared invalid and cancel led. 
If the application for a declaration of invalidity because of conflicting earlier rights is granted, the 
effects of the trademark  are deemed not to have taken place, as from the outset, to the extent that 
the trademark  has been declared invalid (secti on 52 (2) of the Trade Mark Act).  
The provisions set out above apply accordingly to the part of international registrations of marks 
that extends to Germany, section 115 of the Trade Mark Act.  
 
- Revocation of a trademark  (section 49 of the Trade Mark Act)  
In the case of an application filed as from 1 May 2020, the revocation proceedings can be conducted 
fully at the German Patent and Trade Mark Office. The person filing the application has so far been 
required to pursue h is application before the ordinary courts if the trademark  proprietor has objected 
to the application for revocation and cancellation of his trademark . 
Upon request, the registration of a trademark  is revoked and cancelled if it has not been used within 
a period of five years, if it is of such a nature now, unlike at the time of its registration, as to deceive 
the public or if the proprietor ceases to meet the requirements of section 7 of the Trade Mark Act.  IP/N/1/DEU/2 • IP/N/1/DEU/T/3  
 
- 5 - 
 
  Further grounds for revocation concerning collective marks are specified in section 105 of the Trade 
Mark Act; further grounds for revocation concerning certification marks are specified in section 106g 
of the Trade Mark Act. Revocation proceedi ngs concerning collective or certification marks can be 
conducted only at the German Patent and Trade Mark Office.  
The application for revocation can be filed by any natural or legal person and by any group or body 
set up for the purpose of representing th e interests of manufacturers, producers, suppliers of 
services, traders or consumers that can be a party to the proceedings (section 53 (2) of the Trade 
Mark Act).  
The application for revocation must be filed in writing. In addition, section 53 (1) of the Trade Mark 
Act now provides that the facts and evidence in support of the statement of grounds must be 
indicated.  
A fee must be paid within three months from filing the application. If the proprietor of the registered 
mark objects to the application for r evocation in due time, within two months of the receipt thereof, 
the adversarial proceedings will, from now on, be conducted at the German Patent and Trade Mark 
Office provided that the person filing the request pays a fee for pursuing the application furt her. 
If the proprietor of the registered mark does not object to the revocation and cancellation of his 
trademark , this trademark  will – as before – be revoked and cancelled (section 53 (5) of the Trade 
Mark Act).  
If the application for revocation is grant ed, the effects of the trademark  are deemed not to have 
taken place, as from the date of the application – or, on request and where appropriate, even earlier 
– to the extent that the trademark  has been revoked (section 52 (1) of the Trade Mark Act).  
The pr ovisions set out above apply accordingly to the part of international registrations of marks 
that extends to Germany, section 115 of the Trade Mark Act.  
 
- Links between proceedings before the German Patent and Trade Mark Office and an action before 
the or dinary courts  
Both the revocation of a trademark  (other than a collective or certification mark) and its invalidity 
due to conflicting earlier rights can also be asserted by way of action before the ordinary courts 
(section 55 (1) sentence 1 of the Trade M ark Act).  
An action is inadmissible if a request concerning the same matter disputed between the parties has 
been made to the German Patent and Trade Mark Office (section 55 (1) sentence 2 no. 2  of the 
Trade Mark Act); conversely, an application for a declaration of  invalidity due to conflicting earlier 
rights or for revocation with the German Patent and Trade Mark Office is inadmissible if an action 
concerning the same matter in dispute is pending in the ordinary courts between the parties 
(section  53 (1) sentence 5  of the Trade Mark Act).  
For this reason, an entry is made in the Register of the German Patent and Trade Mark Office if, as 
from 1 May 2020, an application for revocation or for a declaration of invalidity of a registered mark 
has been filed with the Germ an Patent and Trade Mark Office or a relevant action has been brought 
to an ordinary court (section 25 no. 24 of the Trade Mark Ordinance).  
 
- Additional changes in the revocation and invalidity proceedings  
Option to intervene in proceedings, section 54 of  the Trade Mark Act . 
A person against whom proceedings are pending for trademark  infringement or who has been 
requested to stop an alleged infringement of a trademark  can intervene in revocation or invalidity 
proceedings against the same trademark  within t he time -limit specified in section 54 (1) sentence 2 
of the Trade Mark Act since 1 May 2020, provided that a final and non -appealable decision has not 
yet been made.  
Such intervention in the proceedings, just as an application for revocation or for pursuin g the 
application further and an application for a declaration of invalidity, is subject to a fee and can be 
made even at the appeal stage.  
Hearings, section 60 (2) sentence 4 of the Trade Mark Act:  
 
Since 14 January 2019, hearings are held in revocation and invalidity proceedings if they are 
requested by a party to the proceedings or deemed expedient by the German Patent and Trade Mark 
Office.  
 
Security, section 53 (1) sentence 3 of the Trade Mark Act in conjunction with section 81 (6) of the 
Patent Act . 
 IP/N/1/DEU/2 • IP/N/1/DEU/T/3  
 
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  Since 1 May 2020, persons filing an application for revocation or for a declaration of invalidity that 
do not have their habitual residence in a member State of the European Union or in a Contracting 
State to the Agreement on the European Economic Area mus t, at the request of the trademark  
proprietor, provide security for the costs of the proceedings, with the amount of security to be 
determined by the German Patent and Trade Mark Office.  
 
Language(s) of 
notified legal text English  
Entry into force  1 May 2022;  
Initial date of entry into force 1/1/1995  
 
Other date   Adoption: 10 August 2021  
 
Notification details  
 
Submission date 
of notification  14 August 2023  
Other information  Last amended by Article 5 of the Act of 10 August 2021, Federal Law Gazette 
(Bundesgesetzblatt) Part I p. 3490  
 
Agency or 
authority 
responsible  Federal Ministry of Justice - III B 5  
Mohrenstr. 37  
10117 Berlin  
Germany  
 
Email:  IIIB5@bmj.bund.de  
 
 
 
* Links are provided to texts of laws and regulations notified under the TRIPS Agreement in the form 
supplied by the Member concerned; the WTO Secretariat does not endorse or revise their content.