GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
within a period of two years of the date of registration. In case of relative grounds for refusal, the registration may not be cancelled where the owner of the earlier trade mark (or other right) has tolerated the use of the younger trade mark for the goods or services for which it is protected for a period of five consecutive years whilst being aware of such use. Since copyrights generally cannot be registered, they cannot be revoked or cancelled. 5.2 Legal Grounds for Filing an Opposition or Cancellation An opposition to a trade mark registration must be filed on the grounds of a risk of confusion with a prior right, by the owner of such prior right. Colliding rights may be a prior trade mark, trade mark application, commercial designation or indication of origin or other geographical indication. A trade mark can be subject to cancellation if it con - travenes the general prerequisites for the protection of a trade mark as stipulated by the TMA or was reg - istered in contravention of absolute or relative grounds for refusal in the first place. In contrast to absolute grounds for refusal (see 4.10 Refusal of Registration ), relative grounds for refusal result from the relation of the respective trade mark to earlier pending third-par - ty trade mark registrations and/or earlier registered or unregistered third-party trade marks or other earlier rights. Relative grounds for refusal apply – eg, to trade marks that are identical or similar to a pending or registered trade mark with an earlier priority, and the identity or similarity of the goods or services covered by the respective trade marks cause a likelihood of confu - sion for the general public, including the likelihood of
Several grounds for cancellation are available to any person, irrespective of whether or not that person has any legal or commercial interest whatsoever in the cancellation of the respective trade mark. This applies with regard to cancellation for abandonment or lapse and cancellation because of absolute grounds for refusal. Any cancellation proceedings which are based on earlier third-party rights can only be initiated by the owner of the respective right, or persons that have been authorised by the owner to initiate cancellation proceedings (eg, a licensee). Furthermore, cancellations because of absolute grounds for refusal may be executed ex officio; how - ever, this is subject to strict limitations (see 5.1 Time- frames for Filing an Opposition or Cancellation ). 5.4 Opposition or Revocation/Cancellation Procedure Although not mandatory, it is common practice to substantiate an opposition in detail. The applicant usually reacts with a counter-statement. The opposition procedure is a summary proceeding and there is usually no oral hearing. By request of both parties to an opposition proceed - ing, the DPMA may grant the parties a “cooling-off period” of at least two months. In this time, the parties may seek an amicable solution for the case. If they fail, the proceedings will continue. Whether a cancellation action is heard before the DPMA or the civil courts depends on the claimed ground for cancellation. In the case of cancellation for lapse, the claimant may either file a request for cancellation with the DPMA or directly file a claim for cancellation of the trade mark with the competent civil court. If the owner of the respective trade mark objects within two months after the DPMA’s notice of the cancellation request, the claimant must file a claim for cancellation with the civil courts if the cancellation shall be pursued further.
association with the earlier trade mark. 5.3 Ability to File an Opposition or Revocation/Cancellation
The owner of a prior right may file an opposition (see 5.2 Legal Grounds for Filing an Opposition or Can- cellation ). The same applies to licensees. A represen - tation by an attorney is not mandatory. The opposition fee amounts to EUR250 and must be paid within the deadline for filing the opposition.
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