GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
If the claimant demands a cancellation for registration in spite of an absolute ground of refusal, it is manda - tory to file that complaint with the DPMA. The DPMA’s decision may be appealed to the German Federal Pat - ent Court. The DPMA is also competent for any cancellation for lapse or based on earlier rights of the claimant. To avoid the simultaneous involvement of the DPMA and a court regarding the same trade mark, there is no possibility to make an application before the DPMA and the court at the same time or generally if the ques - tion of cancellation or revocation of the trade mark has been decided before. Partial cancellation is possible if the reason for can - cellation only applies to a part of the goods and/or services for which a particular trade mark is protected. 5.5 Legal Remedies Against the Decision of the Trade Mark Office The decision rendered by the DPMA on the opposi - tion may be challenged by the losing party by filing a request for reconsideration ( Erinnerung ) or an appeal ( Beschwerde ) to the German Federal Patent Court within one month of the contested decision being served upon the respective party. The decision process of the DPMA is rather slow; thus, appeal proceedings may easily go on for 12 months or more until a decision is rendered. If an appeal decision of the Federal Patent Court is appealed to the German Federal Court of Justice ( Bundesgerichtshof or BGH), the duration of the proceedings is considerably longer, being at least a further 24 months. 5.6 Amendment in Revocation/Cancellation Proceedings Amendment of a trade mark is not possible in cancel - lation proceedings. However, the owner may restrict the scope of products and services applied for at any time during cancellation cases. 5.7 Combining Revocation/Cancellation and Infringement Insofar as the civil courts are competent for decisions regarding the cancellation of a trade mark, the ground for cancellation may generally be introduced into an
infringement case before the respective civil court. If the DPMA and German Federal Patent Court have jurisdiction over the cancellation action, the infringe - ment trial may be stayed by the respective civil court until the cancellation decision has been reached. 5.8 Measures to Address Fraud There is no special procedure to revoke or cancel marks that were filed fraudulently; however, the gen - eral rules apply. See 5.2 Legal Grounds for Filing an Opposition or Cancellation .
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
Trade marks may be freely assigned from one owner to another by means of a contractual agreement with - out formal requirements. The (pending) application for the registration of a trade mark as such may also be freely transferred. A copyright is non-assignable under German copyright law. Nonetheless, the author can grant licences regarding the exploitation rights linked with a copyright. 6.2 Licensing Requirements or Restrictions There are no formal requirements for licence agree - ments on trade marks and copyrights; however, it is strongly recommended to conclude a licence agree - ment in writing for the purpose of preservation of evidence. Any copyright or trade mark may be the subject of a licence agreement. The scope (eg, exclu - sive, non-exclusive, all or part of the services and/or products for which the trade mark is protected, limited in time or perpetual, transferable or sub-licensable) of the respective licence and further licensing conditions may be freely negotiated between the parties. 6.3 Registration or Recording of an Assignment or Licence The parties of a trade mark assignment are under no obligation to give notice of the change of ownership to the DPMA. However, it is recommended that the new owner have the register changed appropriately as the TMA contains a refutable presumption that the registered owner of a trade mark is the actual owner of the trade mark (Section 28 paragraph 1 TMA).
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