GERMANY Trends and Developments Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
SZA Schilling, Zutt & Anschütz Otto-Beck-Strasse 11 D-68165 Mannheim Germany
Tel: +49 621 4257 247 Fax: +49 621 4257 286 Email: thomas.naegele@sza.de Web: www.sza.de
Trade Mark Trends No more registrations of Russian trade marks, patents and designs in Germany According to a notice issued by the German Pat - ent and Trade Mark Office (DPMA) on 19 July 2024, the DPMA will no longer accept applica - tions for registration of new trade marks or pat - ents from Russia. This applies in particular to applications from Russian nationals and other natural and legal persons resident or established in Russia. This applies not only to applications for new patents or trade marks, but also to appli - cations for designs, utility models, protected appellations of origin and geographical indica - tions. The measure is based on Regulation (EU) 2024/1745 of 24 June 2024, which is part of the 14th package of sanctions against the Russian Federation. Trade Mark Legislative Developments VW Bulli On 2 May 2024, the German Federal Court of Justice ( Bundesgerichtshof or BGH) ruled on the question of when the use of a trade mark as an indication of origin is to be regarded as a use preserving trade mark rights. The facts of the case The plaintiff is a German car manufacturer, that distributes its products worldwide under the brands “Volkswagen” and “VW”. It is the owner
of the German three-dimensional trade mark of the sketched VW Bus T1 (also called “VW Bulli”) that is registered for vehicles including motor vehicles and their parts as well as model cars and toy cars. The defendant manufactures and sells high- priced model cars and was a licensee of the plaintiff until the end of 2012. One of those model cars corresponds to the plaintiff’s trade mark referred to above. The defendant initially distributed the VW Bulli model cars with the notice “Officially licensed by Volkswagen”. After the licence agreement between the plaintiff and the defendant had been terminated, the defend- ant continued the distribution of the models in question with the aforementioned note. The plaintiff therefore brought an action against the defendant and requested, inter alia, a cease- and-desist order, arguing that the distribution without a licence agreement infringed the plain - tiff’s trade mark rights. The relevant provisions of the German Trade Mark Act (Markengesetz or MarkenG) Section 25 – exclusion of right for non-use: • (1) Where the assertion of rights from a registered trade mark or the upholding of the registration depends on the trade mark having been used, it must have been seri -
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