FAQ

YOUR IP - OUR EXPERTISE

INTRODUCTION

Intellectual property is becoming increasingly important in an economy which concentrates precisely in Germany more and more upon innovation. Each year in Germany around 50,000 national design applications, 60,000 national patent applications and around 70,000 national trademark applications are filed.

Anyone dealing with new developments and innovations will know how costly it is to bring new products to the market. It is extremely annoying when others steal your idea and thus undermine your possible competitive advantages as the developer. Nevertheless it must not be forgotten that in Germany the principle of freedom to imitate applies fundamentally, quite irrespectively of whether the utilisation of another’s ideas is morally justifiable or not. For this reason there are for example patents, which give the developer a temporary right of exclusion in order to balance development costs arising through this competitive advantage.

Patents protect new technological inventions. They provide the patentee with a privilege, which is limited in geographical area and time, of exclusive enjoyment of the invention. The patentee thus obtains an exclusive right for exploitation of his invention. Unauthorised commercial use of the patent can be prohibited by him. Patents allow economic use to be drawn from the invention.

In return the patentee also has legal obligations. With his patent application he agrees to his invention being published. A patent is thus intended to serve for other inventors as a measure and basis for further developments in the respective field of technology.

Anyone who has acquired or wishes to acquire a good image for his product or service under certain circumstances through expensive marketing campaigns will be annoyed if third parties “water down” this image by either copying the products or at least marketing them under similar descriptions. For this reason there are trademarks, which provide the industrialist with protection against confusion.

Trademarks characterise products and services of a company. They can be indicative of the quality of a company and also, like patents, form part of its intellectual property.

The design of a product is also one of the decisive factors for its success on the market. This design can become an important asset of your company. The appropriate legal protection for your product design is the design patent. It protects the colour and form of a product.

This brochure is intended to describe in detail the necessary steps for the application, particularly for patents, trademarks and designs. It cannot and does not seek, however, to be a substitute for advice by specialists in this field in individual cases.

PATENTS

Who can apply for a patent?

An application for protection of an invention in the form of a patent can be made in Germany either at the German Patent and Trademark Office or at the European Patent Office. Inventors or their legal successors, thus for example the employing company of the inventor, are entitled to make applications. The request for grant of a patent can be made by a natural person or also by a legal person.

A foreign citizen or a foreign company can apply for or register a patent in Germany provided that an authorised inland representative with registered office in Germany is appointed for an application to the German Patent and Trademark Office or with registered office in one of the contracting states of the European Patent Convention in case of an application to the European Patent Office. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany or - in case of representation before the European Patent Office – an authorised representative before the European Patent Office (European Patent Attorney) or an attorney-at-law having domicile in the area of the contracting states. Said person represents the patent applicant before the patent offices and receives documents from the offices for him.

Also in case of applications filed within the framework of the so-called Patent Cooperation Treaty (PCT) an inland representative must be appointed upon introduction of the national phase before the German Patent and Trademark Office or the regional phase before the European Patent Office.


What is patentable?

Inventions which fulfil the requirements of novelty and inventive activity as well as being capable of industrial application are patentable.

An invention is deemed to be novel if prior to the date relevant for the priority of the patent application it has not yet been made accessible to the public in any way anywhere in the world. Inventions can be made accessible to the public for example through a written description or oral description such as lectures or through prior use such as exhibition at a trade fair.

An existing priority right for example from Brazil or the USA is recognised in Germany. In the field of intellectual property (patents, trademarks, etc.) it was agreed in the Paris Convention for Protection of Industrial Property that on the basis of a first application in a first country such as Brazil or the USA all member states of the Paris Convention shall recognise the priority of this first application within certain time periods (patents: 12 months) also for corresponding subsequent applications in their countries, provided that the content of the subsequent application is contained in the first application. The relevant date for assessing novelty is in this case the date of the first application in Brazil or the USA.

An invention is based upon inventive activity if it does not follow from the prior art in an obvious way to the person skilled in the art. The sense of such a condition for protection consists in keeping the field of technical exclusion rights which could arise from the available knowledge through routine activity free for the general public.

Only inventions which allow an industrial application such as a new product or industrial methods are patentable. Industrial applicability is required as the law seeks to protect industrial performance and promote industry. It suffices if the invention can somehow be applied for a practical utilisation. Such a vague possibility of industrial use is normally sufficient. It is not necessary for revenue to be achieved with the invention.

Patents are not granted, however, for inventions whose industrial exploitation would infringe public order or morality. In particular, methods for cloning human life, methods for changing the genetic identity of the germline of human life, the use of human embryos for industrial or commercial purposes or methods for changing the genetic identity of animals are not patentable.

Furthermore plant or animal species and essentially biological processes for growing plants or breeding animals are not patentable. However, all biological inventions, of which the subject matter is plants or animals, are patentable if the implementation of the invention is not technically limited to a certain plant or animal species. Also patentable are biological inventions which have a microbiological process or a product produced through such a process as their subject matter, provided that it is not a plant or animal species.

Furthermore methods for surgical or therapeutic treatment and diagnostic methods which are carried out on the human body are excluded from patentability. Such methods are not regarded as capable of industrial application. The freedom of treatment of the doctor is thus to be maintained. Products such as pharmaceutical products or medical devices which are intended for use in a process for surgical or therapeutic treatment are not excluded from patentability.

Finally, the following are also regarded as unpatentable: scientific theories and mathematical methods, aesthetic creations, plans, rules and methods for intellectual activities and computer programs in themselves. Computer programs and literary, architectonic, artistic and scientific works or aesthetic creations are protected by the law relating to the protection of computer programs or copyright law. However, computer programs are not generally excluded from patenting. Precedents distinguish between computer programs of a technical nature and non-technical computer programs. Patentable computer programs of a technical nature are for example those which perform certain technical method steps or control, regulate or monitor certain technical processes.


Where can patents be applied for?

Applicants seeking patent protection in Germany have a choice. Patents are granted by the German Patent and Trademark Office (DPMA) and by the European Patent Office (EPO).

The procedures before the German Patent and Trademark Office and before the European Patent Office are very similar to each other. In order to obtain a patent the entitled person must make an application for the invention at one of said patent offices. The patent application must contain the name of the applicant, a request for grant of a patent, one or more claims, a description of the invention, an abstract and possibly drawings, to which the claims or the description refer.

A patent application may only contain a single invention or a group of inventions which are linked to each other in such a way that they realise a single inventive idea.

A German patent application can be filed at the German Patent and Trademark Office in any desired language such as Portuguese or English. If, however, the patent application is not drafted in German the applicant must file a German translation within a period of three months after filing the application. The examination procedure takes place in German.

A European patent application can also be filed in any desired language at the European Patent Office. If, however, the patent application is not drafted in one of the official languages of the European Patent Office, German, English or French, the applicant must file a translation into one of the three official languages as selected by him within a period of two months after the application. The language of the patent application, if it has been filed in one of the three official languages, or the language of the translation, if it has been filed in a language other than one of the three official languages, is then the language of the procedure before the European Patent Office.

Along with the application at the German Patent and Trademark Office an application fee and possibly claim fees are to be paid if the application contains more than 10 claims. Along with the application at the European Patent Office an application fee and possibly claim fees if the application contains more than 10 claims are also to be paid. In addition, supplementary fees are to be paid for each page if the application has more than 35 pages. Designation fees and search fees are also then due at a later point in time.

In case of an application at the German Patent and Trademark Office a request for examination is further to be made within seven years after the application date. At the same time an examination fee must be paid. The request for examination is to be made in case of applications at the European Patent Office within six months after publication of the application, thus generally two years after the priority date (see above). An examination fee must also be paid at the European Patent Office.

A patent application can also be made within the scope of an international patent application. This international patent application must be filed in the country of origin. The applicant can choose whether to introduce, after expiry of the relevant period, the national phase before the German Patent and Trademark Office or the regional phase before the European Patent Office. If the applicant wishes to introduce the national phase before the German Patent and Trademark Office the corresponding request must be filed together with a German translation of the application within 30 months after the priority date at the German Patent and Trademark Office. If the applicant decides to introduce the regional phase before the European Patent Office the corresponding request together with a German, English or French translation (insofar as the international application was not already formulated in one of these languages) must be filed within 31 months after the priority date at the European Patent Office.


How is the patent application examined?

The procedure before the German Patent and Trademark Office is divided into two stages. After receipt at the German Patent and Trademark Office the patent application is examined by the pre-examination division for formal defects. The Patent Office raises objections to the defects ascertained and asks the applicant to eliminate the defects or provide comments within a certain time period. If the defects are not eliminated within the time period the application is rejected. If no defects are ascertained, defects to which an objection is raised are eliminated or doubts raised are cast aside, the formal examination is complete and the patent application is checked for patentability insofar as a corresponding request has been made (see above). The Examining Division determines the relevant prior art, raises an objection to any defects ascertained such as lack of novelty or lack of inventive activity and asks the applicant to comment within a certain time period. The examination procedure ends with the grant of the patent or with the rejection of the application.

The grant of the patent is published. The legal effects of the patent enter into force when the patent is published.

The applicant can file an appeal against negative decisions of the German Patent and Trademark Office. The Federal Patent Court has competence for examining appeals.

The procedure before the European Patent Office is divided into three stages. After receipt at the European Patent Office the patent application is checked for formal defects by the Examining Division responsible for formal defects. The Patent Office raises objections to the defects ascertained and asks the applicant to eliminate the defects or comment within a certain time period. If the defects are not eliminated within the time period the application is automatically regarded as withdrawn. If no defects are ascertained, defects to which an objection is raised are eliminated or doubts raised are cast aside, the formal examination is complete. In the second stage the European Patent Office formulates a search report relating to documents which can be considered for the assessment of novelty and inventive activity. The search report is published together with a first opinion of the Search Division on patentability. The patent application is checked for patentability in the third stage provided that a corresponding request has been made (see above). The Examining Division determines the relevant prior art, raises objections to any defects determined such as lack of novelty or lack of inventive activity and asks the applicant to comment within a certain time period. The examination procedure ends – as is the case of the procedure before the German Patent and Trademark Office – with the grant of the patent or the rejection of the application. Before grant of the patent the Examining Division informs the applicant of the version in which it intends to grant the European patent and asks him to declare his agreement with the version notified within a period of three months, as well as paying the grant costs and printing costs and possibly further claim fees. The Examining Division also asks the applicant to file translations of the claims into the two official languages of the European Patent Office which are not the language of the procedure within said period. If all preconditions are fulfilled the European patent is granted.

The grant of the patent is published. The legal effects of the patent do not yet automatically enter into force, however, with the publication. In some contracting states of the European Patent Convention the patents granted by the European Patent Office must still be validated beforehand. For this purpose some contracting states require the translation of the whole of the granted patent, others only the translation of the granted claims into the language of the country insofar as an English version of the granted patent is available. Other countries such as Germany, England and France completely renounce the need for a translation.

The applicant can file an appeal against negative decisions of the European Patent Office. The Boards of Appeal of the European Patent Office have competence for examining appeals.


How long is a patent valid?

In Germany a patent is valid for twenty years, calculated from the application date. And indeed irrespectively of whether the patent was granted by the German Patent and Trademark Office or by the European Patent Office. However, fees must be paid annually in advance from the third year onwards for the patent to maintain its validity. The fees are also due when the patent has not yet been granted.


Can the patent period be extended?

In Germany and in other countries of the European Union it is possible with supplementary protection certificates to extend the period of patents relating to drugs or pesticides approved by the German authorities by a maximum of five years. In case of a paediatric indication the patent period can even be extended by up to five and a half years.

A corresponding request is necessary for this purpose which must be filed at the German Patent and Trademark Office and indeed irrespectively of whether the patent was granted by the German Patent and Trademark Office or by the European Patent Office. The request must be made within a period of six months after grant of the authorisation or grant of the patent – according to which period is later.

A foreign citizen or a foreign company can apply for or register a supplementary protection certificate in Germany provided that an authorised inland representative with registered office in Germany is appointed. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany.


Can third parties invalidate an existing patent?

Any person can file an opposition against a patent granted by the German Patent and Trademark Office within a period of three months after publication of the patent text and against a patent granted by the European Patent Office within a period of nine months after publication of the patent text, whereby foreign citizens or foreign companies must also appoint an inland representative. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany or – in case of representation before the European Patent Office – an authorised representative before the European Patent Office (European Patent Attorney) or an attorney-at-law with domicile in the area of the contracting states.

The opposition is to be filed in writing and to be substantiated. A fee for the examination of the opposition is also to be paid within this period. The opposition can only be based upon the grounds that the subject matter of the claims is not patentable, e.g. is not of a technical nature, is not capable of industrial application, is not novel or not based upon inventive activity, that the invention is not disclosed so clearly and unambiguously that a person skilled in the art can carry it out and that the subject matter of the patent cannot be derived from the originally filed documents, i.e. has been inadmissibly broadened. In case of an opposition against a patent granted by the German Patent and Trademark Office further possible grounds for opposition can be that the opponent has been unlawfully deprived of the essential content of the patent without his authorisation.

The Opposition Division examines the opposition. Besides the patentee the opponents are also involved in the proceedings. An oral hearing may take place.

A decision is made on the opposition by way of revocation of the patent, rejection of the opposition or maintaining of the patent in an amended scope.

The parties can file an appeal against the decisions of the Opposition Division. The Federal Patent Court has competence for examining appeals against decisions of the Opposition Divisions of the German Patent and Trademark Office and the Boards of Appeal of the European Patent Office have competence for examining appeals against decisions of the Opposition Divisions of the European Patent Office.

If the opposition period has expired or the opposition proceedings have ended a nullity action can still be brought against the granted patent at the Federal Patent Court, whereby foreign citizens or foreign companies must also appoint an inland representative. The nullity action is also to be filed in writing and substantiated. A possible nullity action can – in the same way as an opposition against a patent granted by the German Patent and Trademark Office – only be based on the grounds that the subject matter of the claims is not patentable, e.g. is not of a technical nature, is not capable of industrial application, is not novel or not based upon inventive activity, that the invention is not disclosed so clearly and unambiguously that a person skilled in the art can carry it out, that the subject matter of the patent cannot be derived from the originally filed documents, i.e. has been inadmissibly broadened, and that the nullity applicant has been unlawfully deprived of the essential content of the patent without his authorisation.

The patentee is advised of the nullity action. If he does not object within two months the patent is declared to be null and void. If he does object the nullity proceedings are brought before the Federal Patent Court. Besides the patentee (the nullity defendant) the nullity applicant also participates in the proceedings. An oral hearing may take place. A judgment is pronounced on the nullity action. The Federal Patent Court can revoke the patent, reject the nullity action or maintain the patent in an amended scope. The parties can file an appeal against the judgments of the Federal Patent Court. The Federal Court of Justice decides on the appeal.

The losing party in nullity proceedings bears the costs of the lawsuit.

A foreign citizen or a foreign company must be represented in the opposition proceedings or in the nullity proceedings by an authorised inland representative. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany or – in case of representation before the European Patent Office – an authorised representative before the European Patent Office (European Patent Attorney) or an attorney-at-law.


Which rights does a patent confer?

A patent confers upon the patentee the right to prohibit a third party from producing without the agreement of the patentee a product which is the subject matter of the patent or offering said product, bringing it onto the market, using it or either introducing it or possessing it for said purposes. The patent further confers upon the patentee the right to apply a method which is the subject matter of the patent or to offer the application of the method. The patentee is also granted the right to prohibit third parties from taking part in patent-infringing acts which are carried out by others.

Within the scope of these inadmissible utilisations the patentee also has, besides the right of cessation and elimination of the patent-infringing object, a right to compensation and to information concerning the scope of the infringing acts, the purchasers and suppliers and the proceeds from sale and profit made. The applicant already has a right to compensation with the publication of the patent application.

The previously described rights deriving from the patent do not extend, however, for example to acts carried out in the private sphere for non-commercial purposes, acts for trial purposes which relate to the subject matter of the invention or the direct individual preparation of drugs on the basis of medical prescription.

The rights against third parties granted to the patentee are not automatically realised. The entitled party must defend himself against the infringement of his rights. The German regional courts have competence for claims arising from the patent. In the Federal Republic of Germany there are specialised courts for patent disputes. The majority of patent lawsuits are thus decided by the regional courts in Dusseldorf, Mannheim, Munich and Hamburg. The parties must thereby be represented by an attorney-at-law who is also often assisted by a patent attorney.

The parties can file an appeal against the judgments of the regional court. The respectively competent higher regional court decides on the appeal.

The losing party also bears the costs of the lawsuit in patent litigation proceedings.


What is a utility model?

A utility model is often described as a “small patent”. The preconditions for protection of a utility model are similar to those for a patent. Inventions capable of industrial application which are novel and based upon inventive step can be protected in Germany by a utility model.

There are, however, differences from patents in the requirement for novelty. An invention is regarded as novel according to the meaning of the Utility Model Act if it is not yet known from the prior art at the relevant point in time. Unlike the Patent Act, however, only items which have been previously described in writing or already previously used in Germany are known. In contrast with patents, previous oral descriptions and prior uses abroad such as in Brazil or the USA are not regarded as prior art.

In addition publications made by the inventor or his legal successor up to 6 months before the application are not considered in the examination of novelty.

In contrast with patent law, methods cannot be protected by utility models in Germany.

The duration of protection of utility models initially amounts to three years and can be extended to a maximum of ten years – calculated from the application date.

As with patents, an application to the German Patent and Trademark Office is necessary, whereby a foreign citizen or a foreign company can apply for or register a utility model in Germany provided that an authorised inland representative with registered office in Germany is appointed. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany.

The German Patent and Trademark Office does not check within the scope of a utility model application the material registration preconditions such as novelty and inventive step but instead only the formal preconditions. The material examination of the utility model does not take place until infringement proceedings through the regional court or cancellation proceedings through the German Patent and Trademark Office.

A professionally filed utility model application is generally registered within three months.

A registered utility model can be cancelled again through cancellation proceedings. The cancellation proceedings can be initiated by anyone through a request for cancellation of the utility model at the German Patent and Trademark Office, whereby a foreign citizen or a foreign company must also appoint an inland representative.

The parties can file an appeal against the decisions of the German Patent and Trademark Office. The Federal Patent Court decides on the appeal.

The protective effect is the same as for patents. Utility model proceedings are brought – as with patents – before the German regional courts, whereby the parties must be represented by an attorney-at-law who is often also assisted by a patent attorney. In contrast with patent proceedings, however, the defendant can object that the utility model is not legally valid, thus lacking novelty or inventive step.

The parties can file an appeal against the judgments of the regional court. The respectively competent higher regional court decides on the appeal.

The losing party also bears the costs of the lawsuit in utility model proceedings.

TRADEMARKS

What is a trademark?

A trademark is used to identify goods or services of a company. Signs which are suitable for distinguishing goods or services of a company from those of other companies can be protected. They can be for example words, letters, numbers, illustrations or also colours or sounds.

Trademark protection arises through the registration of the trademark in the register of the German Patent and Trademark Office or in the register of the Office for Harmonisation in the Internal Market of the European Community (hereinafter: OHIM). The application is made to one of these offices before registration. Trademark protection can also arise through use in business circles insofar as the trademark has acquired a certain notoriety (recognition) within participating circles due to intensive use.

An application for trademark registration is the best possibility of defending and enforcing a trademark. The registration clearly documents the formation, the proprietor and the goods and services for which it is protected. In addition the application can be made before actual commencement of the use. It is only necessary for the use to have been made within a period of five years after registration of the trademark so that rights can continue to be derived from the trademark.


Who can apply for a trademark?

The request for registration of a trademark can be made by a natural person or a legal person.

A foreign citizen or a foreign company can apply for or register a trademark in Germany provided that an authorised inland representative with registered office in Germany is appointed in case of an application to the German Patent and Trademark Office or with registered office in a member state of the European Union in case of an application to the European Trademark Office. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany or – in case of representation before the European Trademark Office – an authorised representative before OHIM (European Trademark Attorney) or an attorney-at-law with domicile in the area of the European Union. Said person represents the trademark applicant before the trademark offices and receives documents from the offices for him.


Where can trademarks be applied for?

The applicant has a choice when seeking trademark protection in Germany. Trademarks are granted by the German Patent and Trademark Office and by OHIM.

The procedures before the German Patent and Trademark Office and before OHIM are very similar to each other. In order to register a trademark the applicant must apply for the trademark at one of the aforementioned trademark offices. The trademark application must contain the name of the applicant, a request for registration of the trademark, a reproduction of the trademark and a list of the goods and services for which the trademark is to be registered. In case of a direct application to the German Patent and Trademark Office the application must be formulated in German. In case of an application to OHIM the applicant has a choice of one of the 22 official languages of the European Community, including for example also Portuguese, in which the application is filed as a first language. In addition a second language must be indicated which differs from the first language and is one of the five working languages of OHIM, i.e. Spanish, German, English, French or Italian.

An application fee and possibly class fees if the application covers more than 3 classes of goods or services is / are to be paid with the application to the German Patent and Trademark Office or to OHIM.

A trademark application can also be made within the scope of an international registration according to the Madrid Agreement in case of a German trademark or the Protocol relating to the Madrid Agreement in case of a European trademark. The applicant can choose whether to apply for registration of the trademark at the German Patent and Trademark Office or at OHIM. This international trademark application must be filed in the country of origin, which for its part must be a contracting party of the Madrid Agreement or the Protocol relating to the Madrid Agreement. The United States of America are for example a contracting state of the Protocol to the Madrid Agreement. Brazil, however is not (yet) a contracting state of the Madrid Agreement or the Protocol relating to the Madrid Agreement. The possibility of making use of an international registration is not therefore available for applications from Brazil so long as Brazil is not yet a member of the Madrid Agreement or the Protocol relating to the Madrid Agreement.


What is checked in a trademark application?

The procedure before the German Patent and Trademark Office is divided into two stages. After receipt at the German Patent and Trademark Office the trademark application is checked for formal defects. The Patent Office raises an objection to the ascertained defects and asks the applicant to eliminate the defects or to comment within a certain time period. If the defects are not eliminated within the time period the application is rejected. If no defects are ascertained, defects to which an objection has been raised are eliminated or doubts raised are cast aside the formal examination is complete and the trademark application is checked for the existence of so-called “absolute obstacles to protection”. Absolute obstacles to protection are for example lack of distinctiveness, descriptive indications to be kept free for the general public, obvious risk of being misled or infringement against public morality or public order.

The trademark department or the trademark division may raise an objection to the existence of absolute obstacles to protection and ask the applicant to comment within a certain time period. The examination procedure ends with the registration of the trademark or with the rejection of the application.

The trademark registration is published. The legal effects of the trademark enter into force with the publication of the registration. The applicant can file an appeal against negative decisions of the German Patent and Trademark Office. The Federal Patent Court has competence for examining appeals.

After registration of the trademark, proprietors of earlier trademarks have the possibility of filing an opposition against the registration. An opposition can be filed in principle if it is feared that there is a risk of confusion with one’s own trademark which has been applied for or registered – also a Community trademark or IR trademark. The opposition must be filed in writing within a time period of three months after publication of the registration at the German Patent and Trademark Office, whereby foreign citizens or foreign companies must also appoint an inland representative. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany. A fee for examination of the opposition is also to be paid within this period.

The opposition procedure before the German Patent and Trademark Office ends with a decision, with which the opposed trademark is cancelled or partially cancelled or with which the opposition is rejected. The parties can file an appeal against decisions of the German Patent and Trademark Office. The Federal Patent Court has competence for examining the appeal.

The procedure before OHIM is also divided into two stages. OHIM also checks the application initially for the existence of formal defects and then so-called absolute obstacles to protection (see above). The trademark division raises an objection to the existence of any formal defects or absolute obstacles to protection and asks the applicant to comment within a certain time period. The examination procedure ends with the approval of the Community trademark or with the rejection of the application.

After approval of the Community trademark the application is published. However, the Community trademark is not yet registered with the publication of the application.

The applicant can file an appeal against negative decisions of OHIM. The Boards of Appeal of OHIM have competence for examining the appeal and an action can be filed by the applicant against the decisions of the Boards of Appeal at the Court of Justice of the European Union

After publication of the Community trademark application proprietors of earlier trademarks have the possibility – as in the procedure before the German Patent and Trademark Office – of filing an opposition against the application, whereby foreign citizens or foreign companies must also appoint an inland representative. An inland representative can be an authorised representative before OHIM (European Trademark Attorney) or an attorney-at-law with domicile in the area of the European Union.

The opposition must be filed in writing within a period of three months after publication of the application. A fee is also to be paid within this period for examination of the opposition.

The Opposition Division of OHIM works in the five languages of OHIM (Spanish, German, English, French and Italian). The opposition can only be filed in one of these languages. It must thereby be one of the two languages in which the applicant has applied for the Community trademark and which are indicated in the publication of the trademark application in the Community Trademark Bulletin. This language applies for the whole of the opposition procedure.

If the opposition is filed in a language of OHIM, namely Spanish, German, English, French or Italian, which does not coincide with those of the opposed application for a Community trademark, the opponent has one month in which to provide a translation in the corresponding language. This period begins with expiry of the opposition period.

After service of the opposition upon the trademark applicant a so-called “cooling-off” phase of two months begins, during which the parties have the possibility of dealing with the opposition amicably. If the parties arrive at an amicable agreement during the cooling-off phase, with which the opposition is ended, no decision is pronounced and each party must then bear its own costs.

After expiry of the cooling-off phase OHIM examines the opposition. The opposition procedure before OHIM ends with a decision with which the opposed trademark is cancelled or partially cancelled or with which the opposition is rejected. The parties can file an appeal against decisions of the Opposition Division of OHIM. The Boards of Appeal of OHIM have competence for examining appeals and the parties can file an action against the decisions of the Boards of Appeal at the Court of Justice of the European Union.

The losing party bears the costs of opposition proceedings. Besides the decision on the foundation of the claim, OHIM thus also makes a decision on costs.

If no opposition is filed against the Community trademark application or the opposition proceedings before OHIM have gone in favour of the trademark proprietor, the trademark is entered in the register. The registration of the trademark is published. The legal effects of the trademark enter into force with the publication of the registration.


How long is a trademark valid?

The duration of protection of a German and a European trademark is ten years from the application date. The duration of protection can then be extended respectively by further time periods of ten years. A fee is payable for the extension of the duration of protection of the trademark.

For a German trademark or a Community trademark to remain valid, however, it must be genuinely used for the goods and services for which it is registered. The obligation to use the trademark begins five years after the date of registration or – in case of German trademarks – after the conclusion of the opposition proceedings. The use of the trademark may additionally not be interrupted for a period of more than five years. If the trademark is not used within the relevant time periods it lapses; it is not automatically cancelled. If the use of a trademark due for cancellation is resumed the protection of the trademark is restored. However, intermediate rights of third parties having arisen in this period remain.


Can third parties initiate cancellation of a trademark?

A German trademark can be cancelled due to nullity or lapse.

A request for cancellation due to nullity on the basis of absolute obstacles to protection must be made in writing to the German Patent and Trademark Office within ten years after registration of the trademark, whereby foreign citizens or foreign companies must appoint an inland representative. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany.

The trademark proprietor is informed of the request for cancellation. If he does not object within two months the trademark is cancelled. If he does object the cancellation proceedings are brought before the German Patent and Trademark Office. In case of success of the cancellation proceedings the trademark is removed from the register.

The parties can file an appeal against decisions of the German Patent and Trademark Office. The Federal Patent Court has competence for examining appeals.

Proprietors of earlier trademarks can also file a cancellation action due to the existence of earlier rights. The cancellation proceedings are brought before the regional courts. The parties must thereby be represented by an attorney-at-law who is sometimes assisted by a patent attorney.

The parties can file an appeal against the judgments of the regional court. The respectively competent higher regional court decides on the appeal. The losing party bears the costs of the lawsuit.

Third parties can also initiate cancellation of the registration of a trademark due to lapse if the trademark has not been used after registration within a period of five years (see above). They can either file an action for cancellation due to lapse before the ordinary courts or initially file a request for cancellation with the German Patent and Trademark Office. The trademark proprietor is informed of the request for cancellation. If he does not object within two months the trademark is cancelled. If he objects the applicant can pursue the cancellation with an action before the regional courts. The parties must thereby be represented by an attorney-at-law who is occasionally assisted by a patent attorney.

A Community trademark can also be cancelled due to nullity or lapse. A request for cancellation is only admissible once the Community trademark has been registered.

A request for a declaration of nullity can be made by third parties and be based upon absolute obstacles to protection (see above) or be substantiated in that the registered Community trademark can be confused with an earlier trademark right of the applicant. Foreign citizens or foreign companies must appoint an inland representative for this. An inland representative can be an authorised representative before OHIM (European Trademark Attorney) or an attorney-at-law having domicile in the area of the European Union.

A request for lapse can be made by third parties if the Community trademark has not been genuinely used in the European Union over a period of five years after registration or five consecutive years and there are no justified reasons for the lack of use, if the Community trademark has become the usual designation of a product or service for which it is registered in business circles due to the conduct or inactivity of its proprietor of if the trademark is likely to mislead the public due to its use by the proprietor. Foreign citizens or foreign companies must appoint an inland representative for this. An inland representative can be an authorised representative before OHIM (European Trademark Attorney) or an attorney-at-law having domicile in the area of the European Union.

If a request for nullity or lapse is made at OHIM the latter checks the reasons set out. The cancellation proceedings before OHIM end with a decision, with which the opposed trademark is cancelled or partially cancelled or with which the request for cancellation is rejected. The parties can file an appeal against decisions of the Opposition Division of OHIM. The Boards of Appeal of OHIM have competence for examining the appeal and the parties can file an action against the decisions of the Boards of Appeal at the Court of Justice of the European Union.

The losing party bears the costs of the lawsuit.

The courts of the member states of the European Union can also declare a Community trademark to have lapsed or to be null and void if this is applied for within the scope of a counter- claim in infringement proceedings based upon a Community trademark.


Which rights does a trademark confer?

With the registration of the trademark the proprietor acquires the sole right to use the trademark for the protected goods and / or services. The trademark proprietor can bring claims for cessation, information and compensation, among others, against those infringing his trademark right.

The rights granted to the trademark proprietor against third parties are not automatically realised. The entitled party must defend himself against infringement of his rights. The German regional courts have competence for claims arising from trade marks in Germany. There are specialised courts for trademark disputes in the Federal Republic of Germany. Many trademark disputes are thus decided by the regional courts in Hamburg, Cologne, Mannheim, Berlin, Nurnberg and Braunschweig. The parties must thereby be represented by an attorney-at-law who is often assisted by a patent attorney.

The parties can file an appeal against the judgments of the regional court. The respectively competent higher regional court decides on the appeal.

The losing party also bears the costs of the lawsuit in trademark proceedings.

In order to combat product piracy it is possible to make a border seizure request to the German customs authorities. In case of a Community trademark a request valid throughout Europe is to be made.

The customs authorities can keep suspicious goods for ten working days. The applicant is informed of the seizure and can inspect the withheld goods. The applicant must either initiate legal measures against the owner or supplier within the ten working days (see above) or apply for a simplified destruction procedure so that the counterfeits introduced can generally be destroyed without legal measures.

DESIGNS

What is a design?

Designs protect the design of three-dimensional models – for example furniture, cars or toys and two-dimensional models – such as materials, wallpaper, logos, graphics or icons.


Who can apply for a design?

A design can be applied for to protect a design in Germany either at the German Patent and Trademark office or at the Office for Harmonisation in the Internal Market of the European Community (hereinafter: OHIM). Creators of designs or their legal successors, thus for example the employing company of the designer, are entitled to make applications. The request for grant of a design can be made by a natural or by a legal person.

A foreign citizen or a foreign company can apply for or register a design in Germany provided that an authorised inland representative with registered office in Germany is appointed for applications to the German Patent and Trademark Office or with registered office in the European Union in case of applications to OHIM. An inland representative can be a patent attorney or attorney-at-law admitted to practise in Germany or – in case of representation before OHIM – an authorised representative before OHIM (European Design Attorney) or an attorney-at-law having domicile in the area of the European Union. The latter represents the applicant before the respective offices and receives documents for him from them.


What can be registered as a design?

Designs and models which exhibit novelty and individual character can be registered.

“Novel” means that prior to the relevant priority date no identical design or a design differentiating only in insignificant features had been published, displayed or brought onto the market. The creator of the design or his legal successor is given a period of grace of 12 months after the first publication.

An existing priority right for example from Brazil or the USA is recognised in Germany. In the field of industrial property rights (patents, trademarks, designs, etc.) it was agreed in the Paris Convention for the Protection of Industrial Property that on the basis of a first application in a first country such as Brazil or the USA all member states of the Paris Convention shall recognise within certain time periods (designs: 6 months) the priority of this first application also for corresponding subsequent applications in their countries, insofar as the content of the subsequent application is contained in the first application. The relevant date for assessment of novelty is in this case the date of the first application in Brazil or the USA.

A design has individual character if it differs from previously known designs. In the individual comparison the overall impression evoked by the two designs in the informed user is relevant.

The following are precluded from protection as designs: visual features of products which are exclusively conditioned by their technical function, visual forms which must compulsorily be reproduced in their form and their dimensions so that a function can be fulfilled with another product, designs which infringe public order or morality and designs which constitute an abusive use of state sovereignty symbols or other symbols of public interest.


What is checked in the design application?

The Design Division at the German Patent and Trademark Office checks whether the application is free from formal errors. It also checks whether the design applied for can even be protected as a design. If these preconditions are fulfilled the Design Division enters the design in the register.

The Design Division does not check, however, whether the design applied for actually has the necessary novelty and individual character. These preconditions are examined in case of dispute by the regional courts.

OHIM also checks merely whether it is actually an application for a design and that the latter does not offend public order or morality. If these preconditions are fulfilled the Community design is entered in the register.

The registration both of the German design and also the Community design is published. However, an application can be made for the publication to be deferred for a period of up to 30 months. This can be useful if the applicant initially wishes to wait to see whether the product is accepted by the market of if the design is to be temporarily kept secret for other reasons.


How long is a design valid?

The duration of protection of a design is five years, in case of deferred disclosure of image 30 months. The duration of protection can be extended up to the maximum duration of twenty five years.


Can third parties cancel a registered design?

In case of a successful action before the regional court a design registered in Germany is cancelled by the German Patent and Trademark Office. The action can be based on the design lacking novelty or individual character, whereby the parties must be represented by an attorney-at-law who is often also assisted by a patent attorney.

The parties can file an appeal against the judgments of the regional court. The respectively competent higher regional court decides on the appeal.

The losing party bears the costs of the lawsuit.

Any natural or legal person can make a request for a declaration of nullity of a Community design before OHIM, whereby a foreign citizen or a foreign company must appoint an inland representative. An inland representative can be an authorised representative before OHIM (European Design Attorney) or an attorney-at-law having domicile in the area of the European Union. The applicant must pay a nullity fee.

The procedure has two parties, namely the proprietor and the applicant. The Nullity Division of OHIM checks the request and reaches a decision in the matter insofar as it regards the submissions and the evidence as admissible and sufficient.

The decision of the Nullity Division can be challenged with an appeal before the Boards of Appeal of OHIM.

The parties can file an action with the Court of Justice of the European Union against the decisions of the Boards of Appeal.

The losing party bears the costs of the lawsuit.

Community designs are also cancelled by OHIM in case of a successful action before a Community design court. In Germany these are certain regional courts.

The action can be based on the design lacking novelty or individual character, whereby the parties must be represented by an attorney-at-law who is often also assisted by a patent attorney.

The parties can file an appeal against the judgments of the regional court. The respectively competent higher regional court decides on the appeal.

The losing party bears the costs of the lawsuit.


Which rights does a design confer?

The registered design provides the proprietor with the sole right to use the design. In particular third parties are prohibited, without the agreement of the proprietor, from producing the design, offering it, bringing in onto the market, importing it, exporting it or using it. The protection extends to all designs which evoke the same overall impression in the informed user.

The previously described rights arising from the design do not extend, however, for example to acts carried out in the private sphere for non-commercial purposes, acts for trial purposes or reproduction for the purpose of teaching.

The rights granted to the design proprietor against third parties are not realised automatically. The entitled party must defend himself against the infringement of his rights. The German regional courts have competence for actions arising from designs. There are specialised courts for design disputes in the Federal Republic of Germany. Most design disputes are thus decided by the regional courts in Hamburg. The parties must thereby be represented by an attorney-at-law who is often also assisted by a patent attorney.

The parties can file an appeal against the judgments of the regional court. The respectively competent higher regional court decides on the appeal.

The losing party also bears the costs of the lawsuit in design proceedings.

In order to combat product piracy it is possible to make a border seizure request at the German customs authorities. In case of a Community design a request valid throughout Europe is to be made.

The customs authorities can keep suspicious goods for ten working days. The applicant is informed of the seizure and can inspect the withheld goods. The applicant must either initiate legal measures against the owner or supplier within the ten working days (see above) or apply for a simplified destruction procedure, so that the counterfeits introduced can generally be destroyed without legal measures.


What is copyright?

Copyright protects the right of the creator to his literature, academic and artistic works. Works which can be protected by copyright can be language works (e.g. film scripts, speeches, advertising texts), music works, dance works, graphic art, photographic works, film works, etc. Furthermore computer programs and databases for example are covered in the Copyright Act under special legal protection.

A precondition for copyright protection is the presence of a personal intellectual creation. The necessary degree of the so-called “threshold of originality” can be difficult to determine in the individual case and is based in particular upon the nature of the works and all previously known forms. The requirement of personal intellectual creation is intended to exclude simple everyday products but does not require any artistic merit.

The protection of the works begins with creation thereof and ends 70 years after the death of the creator. Copyright cannot be transferred according to German law. The creator can, however, grant the right to others to use it – possibly also exclusively.

Copyright firstly provides the creator with creators’ moral rights (publication right, right of recognition of authorship, prohibition of any deformation of the works). Furthermore he has the exclusive right to exploit his work in physical form (e.g. reproduction right) and non-physical form (e.g. in the Internet: right to make accessible to the public).

In case of infringement of copyright the creator can have, inter alia, rights to cessation, compensation, information or destruction.

Insofar as the German regional courts have competence for actions arising from copyright, the parties must be represented by an attorney-at-law.

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