Declaration of privilege and obligation

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The declaration of priority and obligation is a contractual agreement between two trademark owners with the aim of averting or amicably settling a ( patent office ) opposition procedure or a (judicial) action for cancellation against the younger trademark or its owner.

Starting position

In the following, the case of collision, which occurs by far the most frequently in practice and which is also based on Section 9 (1) No. 1 or 2 MarkenG , is explained:

A trademark owner owns a more recent trademark which is identical or similar to a third-party trademark with an older seniority, whereby at least parts of the two opposing lists of goods and / or services are identical or similar. As a result, there could be a risk in the market that the two brands are confused or conceptually associated.

Remedies from the proprietor of the senior mark

Right to object

Pursuant to Section 42 (1) of the Trademark Act, the owner of the older trademark has the right to object to the registration of the younger trademark at the German Patent and Trademark Office (DPMA). The prerequisite for this is that the objection is raised within three months of the date of publication of the younger mark. According to § 42 Paragraph 2 No. 1 MarkenG, the objection must be based on the fact that the younger trademark can be deleted because of the older trademark according to § 9 Paragraph 1 or 2 MarkenG.

If the examination of the objection (by the DPMA) reveals that the more recent mark is to be deleted for all or for part of the goods or services for which it is registered, the registration will be deleted in whole or in part, Section 43 (2) Sentence 1 MarkenG.

Right of action

If the three month opposition period has expired, the holders of the senior earlier mark, pursuant to § 55 2 of that provision, para. 1 German Trade Mark in conjunction with para. 2 no. The right for the ordinary courts of against the proprietor of the later mark action for cancellation to raise younger brand. If the asserted older rights are justified in accordance with § 9 Paragraph 1 No. 1 or 2 MarkenG (see above), the younger trademark will be deleted (in whole or in part) due to the older rights due to invalidity, § 51 Paragraph 1 MarkenG.

(Essential) content of the declaration of privilege and obligation

Recognition of older rights and delimitation of the goods and / or services

The owner of the younger trademark expressly recognizes the older rights from the older trademark and undertakes to use the younger trademark only for certain goods or services (to be detailed in the agreement), but not for goods or services that are related to the Goods or services are identical or similar for which the older trademark is used. The owner of the earlier trademark assumes the obligation not to use his trademark for the goods or services permitted to the owner of the younger trademark.

The owner of the younger trademark also agrees contractually not to derive any rights against the owner of the older trademark from his trademark and / or its use and to tolerate new registrations or registrations of modifications of the older trademark, provided that they do not match the younger trademark.

Extension of the obligations to foreign and international trademark rights

The above-mentioned mutual obligations should not only include domestic, but also any existing and / or future foreign or international trademark rights.

Any mutual legal successors should also be included in the declaration of privilege and obligation.

Consent to the registration of the younger trademark and (if necessary) withdrawal of legal remedies

The essential contractual consideration of the owner of the older trademark is that he agrees to the registration of the younger trademark and withdraws any objection that may already have been raised. The withdrawal of an objection is possible and permissible at any stage of the objection procedure. If no objection has yet been raised, it is conceivable and permissible to waive it. However, it should be noted here that the waiver is binding for the declaring party as long as it is effective in terms of substantive law. The owner of the older trademark should therefore not expressly declare a "waiver", but rather only guarantee that he will refrain from raising an objection.

Withdrawal of the action for cancellation and settlement

In the case of an intended or already pending cancellation action, what was said above about the objection applies accordingly. The withdrawal of a cancellation action that has already been filed by the owner of the older trademark should, for procedural and cost reasons, take place within the framework of the declaration of privilege and obligation through an out-of-court or litigation settlement. The relevant provisions of the Code of Civil Procedure and the Court Fees Act must (also) be observed.

advantages

Due to the mutual delimitation of the catalogs of goods and services for which the respective brand is used, confusion between the two brands or conceptual connections between the two brands is avoided in the practical market. Already pending legal disputes are settled and possible future disputes are averted. As a result of the declaration of privilege and obligation, the two (former) counterparties often come closer to each other, which in turn can lead to further agreements and connections that are beneficial for both parties.

See also

Individual evidence

  1. ↑ a b K.-H. Fezer: trademark law. 4th edition. Munich 2009, ISBN 978-3-406-53530-7 , p. 1095.

literature

  • A. Baumbach, W. Hefermehl: Trademark law. 12th edition. Munich 1985, ISBN 3-406-30521-0 .
  • U. Dreiss, R. Klaka: The new trademark law: creation and expiry, proceedings, collision and judicial enforcement. Bonn 1995, ISBN 3-8240-0123-3 .