GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
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 recom - mended 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). A licence can be registered by request of the trade mark owner or the licensee and with con - sent of the other party. The same applies to the licence’s lapse and any alteration. However, it is worth noting that this is only declaratory and has no legal effect. A copyright licence can neither be registered nor recorded. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Claims under trade mark law and copyright law are, as a general rule, time-barred after three years. This period begins at the end of the year in which the claim arose and the owner of the trade mark or copyright became aware or should have become aware without gross negligence of the circumstances giving rise to the claim and of the person who infringed the trade mark. The claim does not automatically lapse at the end of that period; on the contrary, the defendant has to invoke the limitation period.
Federal Patent Court have jurisdiction over the cancellation action, the infringement 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 can - cel marks that were filed fraudulently; however, the general 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 without formal requirements. The (pending) application for the registration of a trade mark as such may also be freely trans - ferred. A copyright is non-assignable under Ger - man 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 agreements on trade marks and copyrights; however, it is strongly recommended to con - clude a licence agreement in writing for the pur - pose of preservation of evidence. Any copyright or trade mark may be the subject of a licence agreement. The scope (eg, exclusive, non-exclu - sive, 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.
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