GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
A cooling-off period to reach an amicable reso - lution of at least two months is granted at the request of both parties (Section 42 paragraph 4 TMA). German trade mark law stipulates several time limitations for remedies regarding the different grounds for cancellation. For example, a cancel - lation ex officio is only possible with regard to absolute grounds for refusal if the cancellation proceedings are initiated within a period of two years of the date of registration. In case of rela - tive 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 consecu - tive years whilst being aware of such use. Since copyrights generally cannot be registered, 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 indi - cation. A trade mark can be subject to cancellation if it contravenes the general prerequisites for the protection of a trade mark as stipulated by the TMA or was registered 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 ), rela - tive grounds for refusal result from the relation of the respective trade mark to earlier pending third-party trade mark registrations and/or ear - they cannot be revoked or cancelled. 5.2 Legal Grounds for Filing an Opposition or Cancellation
lier 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 confusion for the general public, including the likelihood of 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 Cancellation ). The same applies to licensees. A representation by an attorney is not manda - tory. The opposition fee amounts to EUR250 and must be paid within the deadline for filing the opposition. 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 cancella - tion 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 ini- tiate cancellation proceedings (eg, a licensee). Furthermore, cancellations because of absolute grounds for refusal may be executed ex officio; however, this is subject to strict limitations (see 5.1 Timeframes for Filing an Opposition or Cancellation ).
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