GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
5.4 Opposition or Revocation/ Cancellation Procedure
same time or generally if the question of cancel - lation or revocation of the trade mark has been decided before. Partial cancellation is possible if the reason for cancellation 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 opposition may be challenged by the losing party by filing a request for reconsideration ( Erin- nerung ) or an appeal ( Beschwerde ) to the Ger - man 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 Jus - tice ( 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 cancellation 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 deci - sions 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
Although not mandatory, it is common practice to substantiate an opposition in detail. The appli - cant usually reacts with a counter-statement. The opposition procedure is a summary pro - ceeding and there is usually no oral hearing. By request of both parties to an opposition proceeding, the DPMA may grant the parties a “cooling-off period” of at least two months. In this time, the parties may seek an amicable solu - tion 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. If the claimant demands a cancellation for regis - tration in spite of an absolute ground of refusal, it is mandatory to file that complaint with the DPMA. The DPMA’s decision may be appealed to the German Federal Patent Court. The DPMA is also competent for any cancella - tion 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
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