Relative barriers to refusal

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Relative obstacles to protection are overriding trademark rights and other rights of third parties that prevent a sign from being entered as a trademark in the trademark register of the German Patent and Trademark Office (DPMA) or the legal validity of an already registered trademark. In contrast, there are absolute obstacles to protection .

Legal basis

Deletion of a registered trademark

Older rights according to § 9 Trademark Law (MarkenG)

  1. According to Section 9 (1) No. 1 MarkenG, the registration of a subordinate mark can be deleted "if it is identical to a pending or registered mark with an older seniority and the goods or services for which it was registered with the goods or Services for which the earlier trademark has been applied for or registered ". That is the least problematic collision factual anticipation of an older trademark, because this both its appearance the related goods or services of the later mark terms and in terms identical must be. This is what is known as the identity protection of the earlier-priority brand.
  2. The registration of a subordinate trademark can also be deleted in accordance with Section 9 (1) No. 2 MarkenG, "if because of its identity or similarity to a registered or applied for a trademark with an older seniority and the identity or similarity of the goods or services covered by the two trademarks there is a risk of confusion for the public, including the risk of the brands being associated with one another ". This case of collision goes beyond the reason for cancellation according to number 1, namely to the extent that it is not only limited to identity with the younger mark with regard to the applied or registered trademark with older seniority in its appearance and with regard to its associated list of goods or services, but also their area of ​​similarity with regard to appearance and list of goods or services is also recorded, whereby the risk of confusion is taken into account. So this is about the so-called protection against confusion of the earlier-priority brand. In this case of a collision, it is necessary to carefully check whether there is a risk of confusion for the public involved , whereby the risk that the two opposing marks are mentally associated with one another is sufficient.
  3. According to Section 9 (1) No. 3 MarkenG, a reason for cancellation for a brand with a lower priority can then exist "if it is identical to or similar to a registered or applied for an older brand and has been registered for goods or services that are not those are similar to those for which the trade mark has been filed with earlier priority or registered, if it is at the mark with earlier priority to a well-known domestic brand and the use of the registered trade mark, the distinctive character or the repute of the well-known mark without due cause in unfairly exploit or impair ". With this standard, the brand with earlier priority is thus granted protection of awareness. The prerequisite for this, as the wording of the law makes clear, is an unfair and unjustified trademark exploitation or impairment of a priority, well-known trademark outside its product similarity area.

The restriction of Section 9 (2) of the Trademark Act

Section 9 (1) of the MarkenG speaks of "a registered or applied for a trademark" with regard to the earlier trademark . The trademark with the older priority does not necessarily have to be entered in the trademark register. Rather, it already forms a reason for deletion for the brand with the younger priority when it is still in the application stage. However, Section 9 (2) of the Trademark Act makes it clear - restrictively - that " applications for trademarks ... only constitute an obstacle to registration within the meaning of Section 1" if they are (later) registered as a trademark.

The reason for deletion of § 11 MarkenG

According to § 11 MarkenG "the registration of a trademark can be deleted ... if the trademark has been registered for his agent or representative without the consent of the trademark owner ". The type of relationship between the trademark owner and his agent or representative will usually be a contractual relationship. There must be an identity between the (younger-priority) brand registered for the agent or representative of the trademark owner and the trademark owner's (older) trademark, although the requirements for identity must not be too strict in order not to circumvent the protective regulations against illegal agent trademarks afford to.

It is true that the use of the trademark registered by the trademark owner by his agents or representatives will regularly be in the interests of the relationship between the parties. However, this does not automatically include the authorization to register . Rather, the law explicitly requires the consent of the trademark owner for this, as can be seen from Section 11 MarkenG. Otherwise the (identical) brand of the agent or representative is susceptible to deletion.

The reason for deletion of § 12 MarkenG

According to § 12 MarkenG, "the registration of a trademark ... can be deleted if another day that is decisive for the seniority of the registered trademark has rights to a trademark within the meaning of § 4 No. 2 or to a business name within the meaning of § 5 and this entitles him to prohibit the use of the registered trademark in the entire territory of the Federal Republic of Germany ".

The earlier "rights to a trademark within the meaning of Section 4 No. 2" MarkenG are trademarks that are not created through entry in the trademark register , but through traffic validity within the relevant public due to use.

Priority rights to a commercial designation within the meaning of § 5 MarkenG are equal to these overriding rights, whereby these are rights to company logos within the meaning of § 5 Abs. 2 MarkenG or to work titles within the meaning of § 5 Abs. 3 MarkenG older rights must entitle the right holder to prohibit the use of the registered trademark with the lower priority in the entire territory of the Federal Republic of Germany.

The reason for deletion of § 13 MarkenG

Finally, in accordance with Section 13 (1) of the Trademark Act, "the registration of a trademark can be deleted if another right not specified in Sections 9 to 12 has been acquired by another date prior to the seniority of the registered trademark and this entitles him to to prohibit the use of the registered trademark in the entire territory of the Federal Republic of Germany ". According to the (not conclusively regulated) catalog of rights of Section 13, Paragraph 2 of the Trademark Act, the "other rights" in the sense of the aforementioned provision include in particular:

  1. Naming rights ( § 12 BGB),
  2. the right to your own image ( § 22 KunstUrhG),
  3. Copyrights ( § 11 UrhG),
  4. Variety denominations (§§ 7, 14 SortenschG),
  5. geographical indications of origin ( § 126 MarkenG) and
  6. other commercial property rights (e.g. according to § 38 DesignG, § 11 GebrMG and § 9 PatG).

The obstacle to registration of § 10 MarkenG

According to § 10 Abs. 1 MarkenG "is excluded from registration ... a trademark if it is identical or similar to a trademark with an older seniority that is notoriously known in Germany within the meaning of Article 6 bis of the Paris Union Convention " (PVÜ) " and the other requirements of Section 9 (1) No. 1, 2 or 3 are met ". In contrast to the cases of Sections 9 and 11 to 13 of the Trademark Act, this is not about the deletion of a trademark with a younger priority already registered in the trademark register, but about preventing it from being registered in the first place. The exclusion from registration depends on the following conditions:

Notoriety of the earlier mark

The brand with the younger priority must be identical or similar to a well-known brand with an older seniority, whereby the notoriety of the brand with the older priority must be given in Germany . Furthermore, the notoriety must meet the requirements of Art. 6 bis of the PVÜ. This is the case if "in the opinion of the competent authority of the country of registration or use" (in this case the German Patent and Trademark Office (DPMA)) "it is notoriously established there that" the earlier trademark "is already one of the privileges "The PVÜ" belongs to the person authorized and "is used" for the same or similar products "or services".

Requirements of Section 9 Paragraph 1 No. 1, 2 or 3 MarkenG

The second essential condition for the relative obstacle to protection of § 10 Abs. 1 MarkenG is the fulfillment of the (further) requirements of § 9 Abs. 1 Nr. 1, 2 or 3 MarkenG. Please refer to the detailed explanations above under Section 1.1.1.

Restriction

According to § 10 Abs. 2 MarkenG, "Paragraph 1 ... does not apply if the applicant" of the trademark with the younger priority has been authorized by "the owner of the well-known trademark to register". The purpose of this provision is to protect the owner of the well-known trademark. This is because the applicant for the trademark with the younger priority is obliged to prove to the DPMA that he is authorized to register a trademark that is identical or similar to the well-known trademark. If the trademark with the younger priority has already been registered, the subsequent consent of the owner of the well-known trademark can be obtained, Section 51 (2) sentence 3 Trademark Act.

enforcement

In order to enforce the respective relative obstacle to protection in the event of a specific collision, in all cases of §§ 9 to 13 MarkenG - with one exception (see below, Section 2.3) - the owner of the earlier priority labeling rights or the other priority rights is necessary or possible . The measures available for this purpose are, on the one hand, the objection pursuant to Section 42 MarkenG and, on the other hand, the cancellation action pursuant to Section 55 in conjunction with (in conjunction with) Section 51 MarkenG.

Contradiction

Pursuant to Section 42 (1) MarkenG, "within a period of three months after the date of publication of the registration of the" younger priority "trademark according to Section 41 ... the owner of a trademark with an older seniority can object to the registration of the" (younger priority) trademark Objection can be raised at the DPMA. According to Paragraph 2 of the aforementioned provision, the reason for the objection can only be the susceptibility of the brand with the younger priority to deletion, namely

  1. "because of a pending or registered trademark with an older seniority according to § 9" MarkenG,
  2. "because of a well-known brand with an older seniority according to § 10 in connection with § 9" MarkenG,
  3. "because of their registration for an agent or representative of the trademark owner according to § 11" MarkenG or
  4. "because of an unregistered trademark with an older seniority according to § 4 No. 2" MarkenG "or a business name with an older seniority according to § 5 in conjunction with § 12" MarkenG.

The grounds for objection listed above represent a final catalog.

The only person entitled to object is the owner of a trademark with an earlier priority that is registered in the DPMA's trademark register or has been applied for for registration.

Action for cancellation

According to § 51 Abs. 1 MarkenG "the registration of a trademark ... will be deleted on action for nullity if it is opposed to a right within the meaning of §§ 9 to 13" MarkenG "with an older seniority".

Legal standing

In order to bring a lawsuit against the owner of the brand with the younger priority (Section 55 (1) of the Trademark Act), the owner (s) of the (s) listed in Sections 55 (2) No. 9 to 13 MarkenG.

Exclusion of deletion

Paragraphs 2 to 4 of Section 51 MarkenG contain facts which, if present, exclude the deletion of the brand with the younger priority. This is the case,

  1. if - in the event of a collision with a registered or acquired through use ( § 4 No. 2 MarkenG) or well-known (§ 4 No. 3 MarkenG) trademark or with an earlier right to a commercial name ( § 5 MarkenG) or to a Variety denomination (§ 13 Abs. 2 Nr. 4 MarkenG) - the owner of the relevant overriding right or trademark right "the use of the trademark with a more recent seniority for the goods or services for which it is registered during a period of five consecutive years in Has tolerated knowledge of this use, unless the registration of the trademark with a more recent seniority was made in bad faith ", Section 51 (2) sentences 1 and 2 MarkenG. Bad faith on the part of the applicant for the mark with the younger priority is given if the application has been made in an immoral or illegal manner .
  2. "if the owner of one of the rights mentioned in §§ 9 to 13" MarkenG "with an older seniority has consented to the registration of the trademark before the application for cancellation", § 51 para. 2 sentence 3 MarkenG,
  3. if - in the event of a collision with "a well-known brand or a well-known business name with an older seniority" - "the brand or the business name is not yet within the meaning of Section 9 Para. 1 No. 3, § 14 Paragraph 2 No. 3 or § 15 Paragraph 3 was known ", § 51 Paragraph 3 MarkenG,
  4. if - in the event of a collision with a registered trademark of earlier priority - "the registration of the trademark with an older seniority on the day of the publication of the registration of the trademark with a later seniority" could have been deleted because of expiry according to § 49 MarkenG or because of absolute refusal according to § 50 MarkenG, Section 51 (4) MarkenG.

exception

The case of the well-known trademark within the meaning of Section 10 (1) MarkenG (see the above explanations, Section 1.2.1) is an exception insofar as its owner does not need to take action in order to manifest an identical or higher priority to prevent similar trademark law. Rather, this task is taken over by the DPMA, namely to the extent that it - already in the application process - refuses entry as a trademark in the trademark register from the outset. Because § 10 para. 1 MarkenG expressly states that in the case of conflict in question, the registration of the brand with the younger priority is "excluded". However, the above-mentioned provision requires that "the further requirements of Section 9 (1) No. 1, 2 or 3" (MarkenG) "are met" (see above, Section 1.2.2). Although the notoriety of a trademark is a relative obstacle to protection, the DPMA ex officio takes into account the notoriety of the earlier trademark as an obstacle to registration within the meaning of Section 37 (4) of the Trademark Act in this exceptional case . Of course, the DPMA can (and may) only take action in this way if the notoriety of the older trademark is officially known , Section 37 (4), 1st half-sentence of the Trademark Act.

Section 10 (2) of the Trademark Act makes it clear, however, that the DPMA cannot refuse registration "if the applicant" (of the younger trademark) "has been authorized to register by the owner of the well-known trademark".

See also

Individual evidence

  1. ↑ a b c Karl-Heinz Fezer , Markenrecht, 4th edition, Munich 2009, Rn 2 to § 9 MarkenG
  2. ↑ See § 675 BGB
  3. ↑ See e.g. B. § 84 HGB
  4. ↑ Fezer (individual references 1), marginal number 9 on § 11 MarkenG
  5. ↑ Fezer (individual ref. 1), Rn 11 to § 11 MarkenG
  6. ↑ Plant Variety Protection Act of December 11, 1985 (Federal Law Gazette I, p. 2170) in the version published on December 19, 1997 (Federal Law Gazette I, p. 3164), amended by Article 8 of the law of July 7, 2008 (BGBl. I, p. 1191)
  7. ↑ Fezer (individual ref. 1), marginal number 7 to § 10 MarkenG
  8. ↑ Fezer (individual ref. 1), marginal number 12 on § 42 MarkenG
  9. ↑ Dietrich Scheffler, (Possible) trademark law conflicts in lease contracts , especially in the hotel or catering sector , in: Journal "Mitteilungen der Deutschen Patentanwälte " (Mitt.) 2003, p. 378 ff (382)
  10. ↑ Fezer (individual ref. 1), Rn 3 to § 10 MarkenG

literature

  • Karl-Heinz Fezer, Trademark Law, 4th edition, Munich 2009
  • Adolf Baumbach , Wolfgang Hefermehl , Trademark Law, 12th edition, Munich 1985
  • Uwe Dreiss, Rainer Klaka, The new trademark law: creation and expiry, proceedings, collision and judicial enforcement, Bonn 1995