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PART 3 PROCEEDINGS IN TRADE MARK MATTERS

Chapter 1 Registration Procedure

32. Requirements of the Application

(1) An application for registration of a trade mark in the Register shall be filed at the Patent Office.

(2) The application shall contain

1. information identifying the applicant;
2. a representation of the trade mark; and
3. a list of the goods or services in respect of which the registration is requested.

(3) The application must comply with the other requirements laid down in the legal ordinance under Section 65(1), No. 2.

(4) A fee as prescribed by the schedule of fees shall be paid with the application. Where registration is requested for goods or services falling within more than three classes of the classification of goods and services, a class fee as prescribed by the schedule of fees shall be paid in addition for each additional class.

33. Date of Filing; Right to Registration; Publication of Application

(1) The date of filing of a trade mark shall be the date on which the documents containing the information specified in Section 32(2) are received at the Patent Office.

(2) A trade mark application which has been accorded a date of filing shall confer a right to registration. The request for registration shall be granted, unless the application requirements are not complied with or registration is prejudiced by absolute grounds for refusal.

(3) A trade mark application which has been accorded a date of filing shall be published together with information identifying the applicant.

34. Foreign Priority

(1) Claiming priority of a previous foreign application shall be governed by the provisions of the international agreements subject to the proviso that priority under the Paris Convention may also be claimed for services.

(2) Where the earlier foreign application has been filed in a State which is not bound by an international agreement on the recognition of priority, the applicant may claim a right of priority corresponding to that under the Paris Convention provided that, after publication by the Federal Ministry of Justice in the Federal Law Gazette, the other State grants a right of priority for a first filing with the Patent Office which is, according to its requirements and contents, comparable to that under the Paris Convention.

(3) Any person who claims priority, pursuant to subsection (1) or (2), shall, within a period of two months after the date of filing of the application, indicate the date and State of the earlier application. Where the applicant has provided these particulars, the Patent Office shall invite the applicant to indicate the file number of the earlier application and to file a copy of the said application within a period of two months after communication of the invitation. Particulars may be altered within those periods. Where particulars are not provided in due time, the priority claim for the application shall be forfeited.

35. Exhibition Priority

(1) If an applicant for the trade mark has displayed goods or services under the trade mark applied for,

l. at an official or officially recognized international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on November 22, 1928, or
2. at another exhibition in this country or abroad,

he may, if he files the application within a period of six months from the date of the first display of the goods or services under the trade mark applied for, claim a right of priority from that date within the meaning of Section 34.

(2) The exhibitions referred to in subsection (1), No. 1, are published by the Federal Ministry of Justice in the Federal Law Gazette.

(3) The exhibitions within the meaning of subsection (1), No. 2, are designated in each case by the Federal Ministry of Justice in a notification on the protection of exhibitions in the Federal Law Gazette.

(4) Any person who, pursuant to subsection (1), claims priority shall, within a period of two months after the date of filing, indicate the date of the first display of the trade mark and the exhibition. Where the applicant has provided these particulars, the Patent Office shall invite the applicant to file, within a period of two months after communication of the invitation, evidence of the display of the goods or services under the trade mark applied for. Where evidence is not provided in due time, the priority claim for the application shall be forfeited.

(5) The exhibition priority pursuant to subsection (1) does not extend the period of priority laid down in Section 34.

36. Examination of the Application Requirements

(1) The Patent Office shall examine whether

1. the trade mark application satisfies the requirements for according a date of filing in accordance with Section 33(1);
2. the application complies with the other application requirements;
3. the fees under Section 32(4) have been paid; and
4. whether the applicant may be the proprietor of a trade mark pursuant to Section 7.

(2) If the deficiencies established pursuant to subsection (1), No. 1, are not remedied within a period fixed by the Patent Office, the application shall be deemed not to have been filed. If the applicant complies with the Patent Office's request, the Patent Office shall accord as the date of filing of the application the date on which the deficiencies established are remedied.

(3) If the fees are not paid, the applicant shall be informed by the Patent Office that the application shall be deemed to have been withdrawn, unless the fees and a surcharge as prescribed in the schedule of fees are paid within a period of one month after the service of the notification. If, within this period, the application fee and the surcharge, but not the required class fees, are paid, sentence 1 shall not apply where the applicant indicates which classes of goods or services are to be covered by the amount of fees paid. Where there is no such indication, the leading class shall be taken into account first followed by the other classes in the sequence of the subdivision of classes.

(4) If other deficiencies are not remedied within a period fixed by the Patent Office, the Patent Office shall reject the application.

(5) Where, pursuant to Section 7, the applicant may not be the proprietor of a trade mark, the Patent Office shall reject the application.

37. Examination as to Absolute Grounds for Refusal

(1) Where, under Section 3, 8 or 10, a trade mark is not eligible for registration, the application shall be rejected.

(2) Where it is found in the examination that at the day of filing (Section 33(1)), the trade mark failed to comply with the requirements of Section 8(2), No. 1, 2 or 3, but that the ground for refusal has ceased to exist after the date of filing, the application shall not be rejected, where the applicant has accepted that, notwithstanding the original date of filing and a priority claimed pursuant to Section 34 or 35, the day on which the ground for refusal ceased to exist shall be considered the date of filing and be decisive for determining seniority within the meaning of Section 6(2).

(3) An application pursuant to Section 8(2), No. 4, shall only be refused where there is an obvious likelihood of deception.

(4) An application shall only be rejected pursuant to Section 10 where the notoriety of the earlier trade mark is known to the Patent Office and where the other prerequisites pursuant to Section 9(1), No. 1 or 2, are met.

(5) Subsections (1) to (4) shall apply mutatis mutandis where the trade mark is not eligible for registration in respect of only some of the goods or services for which it has been applied for.

38. Accelerated Examination

(1) The examination pursuant to Sections 36 and 37 shall be accelerated on request of the applicant.

(2) A fee according to the schedule of fees shall be paid with the request for accelerated examination. If the fee is not paid, the request shall be deemed not to have been made.

39. Withdrawal, Limitation and Correction of the Application

(1) The applicant may at any time withdraw the application or limit the list of goods and services contained therein.

(2) Upon request of the applicant, the content of the application may be amended by correcting errors of wording or of typing or other obvious mistakes.

40. Division of the Application

(1) The applicant may divide the application by declaring that, for the goods and services referred to in the declaration, the trade mark application should thenceforth be dealt with as a divisional application. The seniority of the original application shall continue to apply to each part of a divided application.

(2) The elements of the application required by Section 32 shall be filed for the divisional application. Furthermore, a fee as prescribed in the schedule of fees shall be paid for the division. If the elements of the application are not filed within three months of receipt of the declaration of division, or the fee has not been paid within this period, the divisional application shall be deemed to have been withdrawn. The declaration of division cannot be revoked.

41. Registration

Where an application meets the application requirements and is not rejected pursuant to Section 37, the trade mark shall be recorded in the Register. The registration shall be published.

42. Opposition

(1) Within a period of three months following the date of publication of the registration of the trade mark pursuant to Section 41, the proprietor of an earlier trade mark may give notice of opposition to registration of the trade mark.

(2) The opposition may only be based on the grounds that the trade mark may be canceled due to

1. an earlier filed or earlier registered trade mark pursuant to Section 9(1), No. 1 or 2;
2. an earlier well-known trade mark pursuant to Section 10 in conjunction with Section 9(1), No. 1 or 2; or
3. its registration for an agent or representative of the proprietor of the trade mark pursuant to Section 11.

(3) A fee as prescribed in the schedule of fees shall be paid within the time limit specified in subsection (1). If the fee is not paid, the opposition is deemed not to have been lodged.

43. Objection Due to Non-use; Decision on the Opposition

(1) If the proprietor of an earlier registered trade mark has given notice of opposition, he shall, if the other party contests the use of the trade mark, substantiate by prima facie evidence that, during the period of five years preceding the publication of the registration of the trade mark against which a notice of opposition has been given, the earlier registered trade mark has been put to use pursuant to Section 26, provided the earlier trade mark has at that date been registered for not less than five years. If the period of five years of non-use ends after the publication of the registration, the opponent shall, if the other party contests that use, substantiate by prima facie evidence that, during the period of five years preceding the decision on the opposition, the trade mark has been put to use pursuant to Section 26. In the decision, only those goods or services shall be considered of which use has been substantiated by prima facie evidence.

(2) If examination of the opposition reveals that the trade mark must be canceled in respect of some or all of the goods or services for which it is registered, the registration shall be canceled in full or in part. If the registration of the trade mark cannot be canceled, the opposition shall be rejected.

(3) If the registered trade mark has to be canceled because of one or several earlier trade marks, the proceedings with regard to further oppositions may be suspended until a decision on the registration of the trade mark has become final.

(4) In the case of cancellation pursuant to subsection (2), Section 52(2) and (3) shall apply mutatis mutandis.

44. Action for the Grant of Registration

(1) The proprietor of a trade mark may invoke against the opponent, by bringing an action, that he is entitled to claim registration pursuant to Section 43 despite cancellation of the registration.

(2) The action pursuant to subsection (1) shall be brought within six months after the decision effecting the cancellation of the registration has become final.

(3) Registration on the grounds of a decision in favor of the proprietor of the trade mark shall be recorded while preserving seniority of the registration.

Chapter 2 Correction; Division; Period of Protection and Renewal

45. Correction of the Register and Publications

(1) Registrations in the Register may be amended upon request or ex officio by correcting errors of wording or of typing or other obvious mistakes. Where the registration affected by the correction has been published, the corrected registration shall also be published.

(2) Subsection (1) shall apply mutatis mutandis to the correction of publications.

46. Division of the Registration

(1) The proprietor of a registered trade mark may divide the registration by declaring that, for the goods or services referred to in the declaration, the trade mark registration should thenceforth be maintained as a divisional registration. The seniority of the original registration shall continue to apply to each part of the divided registration.

(2) The division may only be declared after the expiry of the time limit for giving notice of opposition. The declaration shall only be admissible where an opposition to the registration of a trade mark, pending at the time of declaration, or an action for cancellation of the registration of the trade mark, pending at the time of declaration, would, after the division, only be directed against one of the parts of the original registration.

(3) The documents required for the divisional registration shall be filed. Furthermore, a fee as prescribed in the schedule of fees shall be paid for the division. If the documents are not filed within three months of receipt of the declaration of division, or the fee has not been paid within this period, the divisional registration shall be deemed to have been renounced. The declaration of division cannot be revoked.

47. Period of Protection and Renewal

(1) The period of protection of a registered trade mark shall begin on the date of filing the application (Section 33(1)) and shall end 10 years after the last day of the month containing the date of filing.

(2) The period of protection may be renewed for further periods of 10 years.

(3) The period of protection shall be renewed through payment of the renewal fee and, where renewal is requested for goods and services falling within more than three classes of the classification of goods and services, for each additional class, a class fee as prescribed by the schedule of fees. The fees shall become due on the last day of the period of protection. Payment may be made within a period of one year before the fees fall due. If the fees are not paid in due time, the proprietor of the registered trade mark shall be informed by the Patent Office that the registration shall be canceled, unless the fees and a surcharge as prescribed in the schedule of fees are paid within a period of six months after the expiry of the month in which the notification was served.

(4) Where the fees are paid only in respect of some of the goods or services for which the trade mark is registered, the period of protection shall be renewed for those goods or services only. If, within the period specified in subsection (3), sentence 4, the renewal fee and the surcharge, but not the required class fees, are paid, the period of protection shall, unless sentence 1 applies, be renewed only for those classes of the classification of goods and services which are covered by the payment of fees. Where there is a leading class, it shall be taken into account first. The other classes shall be taken into account according to the sequence of the classification.

(5) The renewal of the period of protection shall take effect as from the day following the date of expiry of the period of protection. The renewal shall be recorded in the Register and published.

(6) If the period of protection is not renewed, the registration of the trade mark shall be canceled with effect as from the date of expiry of the period of protection.

Chapter 3 Surrender, Revocation and Nullity; Cancellation Procedure

48. Surrender

(1) The registration of the trade mark shall be canceled in the Register at any time upon request of the proprietor in respect of some or all of the goods or services for which it is registered.

(2) The registration shall be canceled only with the agreement of the proprietor of a right to the trade mark entered in the Register.

49. Revocation

(1) The registration of a trade mark shall be canceled upon request on grounds of revocation if, within a continuous period of five years after the date of registration, the trade mark has not been put to use in accordance with Section 26. However, no person may claim that the proprietor's rights in a trade mark should be revoked where, during the interval between the expiry of the five-year period and the filing of the cancellation request, use of the trade mark in accordance with Section 26 has been started or resumed. The commencement or resumption of use within three months preceding the filing of the cancellation request, subsequent to the expiry of a continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor of the trade mark became aware that the cancellation request may be filed. If the cancellation request is filed with the Patent Office under Section 53(1), the request filed with the Patent Office shall be decisive for the calculation of the period of three months according to sentence 3, provided that action for cancellation under Section 55(1) is lodged within three months after service of the notification under Section 53(4).

(2) The registration of a trade mark shall also be canceled upon request on grounds of revocation

1. if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for the goods or services in respect of which it is registered;
2. if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the kind, nature or geographical origin of those goods or services; or
3. if the proprietor of the trade mark no longer satisfies the conditions laid down in Section 7.

(3) Where a ground for revocation of rights exists in respect of only some of the goods or services for which the trade mark is registered, the registration shall be canceled in respect of those goods or services only.

50. Nullity Due to Absolute Grounds for Refusal

(1) Registration of a trade mark shall be canceled on request on the grounds of nullity

1. where it has been registered in breach of Section 3;
2. where it has been registered in breach of Section 7;
3. where it has been registered in breach of Section 8; or
4. where the applicant was acting in bad faith when he filed the trade mark application.

(2) Where the trade mark has been registered in breach of Section 3, 7 or 8, the registration may be canceled only if the ground for refusal still exists at the time when the decision on the cancellation request is made. Moreover, where the trade mark has been registered in breach of Section 8(2), No. 1, 2 or 3, the registration may only be canceled if the cancellation request has been filed within a period of 10 years from the date of registration.

(3) The registration of a trade mark may be canceled ex officio where it has been registered in breach of Section 8(2), Nos. 4 to 9, and

1. the cancellation procedure is initiated within a period of two years from the date of registration;
2. the ground for refusal still exists at the date when the decision on the cancellation is made; and
3. the registration has obviously been recorded in breach of the stated provisions.

(4) Where the ground for nullity exists in respect of only some of the goods or services for which the trade mark is registered, the registration shall be canceled in respect of those goods and services only.

51. Nullity Due to Earlier Rights

(1) The registration of a trade mark shall be canceled by bringing an action on the grounds of nullity if it is prejudiced by a right having seniority within the meaning of Sections 9 to 13.

(2) The registration may not be canceled on the grounds of the registration of an earlier trade mark where the proprietor of the earlier trade mark has acquiesced, for a period of five successive years, in the use of the later trade mark for the goods or services for which it is registered, while being aware of such use, unless registration of the later trade mark was applied for in bad faith. The same shall apply to the proprietor of a right to a trade mark having seniority and acquired by use within the meaning of Section 4, No. 2, to a well-known trade mark within the meaning of Section 4, No. 3, to a commercial designation within the meaning of Section 5, or to a plant variety name within the meaning of Section 13(2), No. 4. Furthermore, registration of a trade mark may not be canceled if the proprietor of a right having seniority referred to in Sections 9 to 13 has consented to the registration of the trade mark prior to the filing of the cancellation request.

(3) The registration may not be canceled on the grounds of an earlier trade mark with a reputation or an earlier commercial designation with a reputation if the trade mark or commercial designation has not acquired a reputation within the meaning of Section 9(1), No. 3, Section 14(2), No. 3, or Section 15(3) on the date relevant for the seniority of the registration of the later trade mark.

(4) The registration may not be canceled on the grounds of the registration of an earlier trade mark where the registration of the earlier trade mark could have been canceled on the date of the publication of the registration of the later trade mark

1. because of revocation under Section 49; or,
2. because of absolute grounds for refusal under Section 50.

(5) Where a ground for nullity exists in respect of only some of the goods or services for which the trade mark is registered, the registration shall be canceled as regards those goods and services only.

52. Effects of Cancellation on Grounds of Revocation or Nullity

(1) Where the registration of a trade mark is canceled on grounds of revocation to any extent, the effects of that registration shall be deemed to have ceased to that extent as from the date of the bringing the action for cancellation. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties.

(2) Where the registration of a trade mark is canceled on grounds of nullity to any extent, the effects of that registration shall be deemed to have been void to that extent ab initio.

(3) Subject to the provisions relating either to compensation for damage willfully or negligently caused on the part of the proprietor of the trade mark, or to unjust enrichment, the cancellation of the registration of the trade mark shall not affect

1. any decision in infringement proceedings which has acquired the authority of a final decision and been enforced prior to the decision on the cancellation request;
2. any contract concluded prior to the decision on the cancellation request insofar as it has been fulfilled before that decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract, may be claimed on grounds of equity.

53. Cancellation by the Patent Office on Grounds of Revocation

(1) The cancellation request on grounds of revocation (Section 49) may be submitted to the Patent Office notwithstanding the right to assert the claim for cancellation by action pursuant to Section 55.

(2) The Patent Office shall notify the proprietor of the registered trade mark of such request and invite him to inform the Patent Office whether he objects to the cancellation.

(3) If the proprietor of the registered trade mark fails to object to the cancellation within two months after service of the notification, the registration shall be canceled.

(4) If the proprietor of the registered trade mark objects to the cancellation, the Patent Office shall notify accordingly the person filing the request and inform him that the cancellation request must be made by bringing an action pursuant to Section 55.

54. Cancellation Procedure Before the Patent Office on Absolute Grounds for Refusal

(1) The request for a cancellation because of absolute grounds for refusal (Section 50) shall be filed with the Patent Office. Any person may file such request.

(2) A fee as prescribed in the schedule of fees shall be paid at the same time. In the event of non-payment of the fee, the request shall be deemed not to have been filed.

(3) Where a cancellation request has been filed or a cancellation procedure has been initiated ex officio, the Patent Office shall notify the proprietor of the registered trade mark accordingly. If he fails to object to the cancellation within two months after service of the notification, the registration shall be canceled. If he objects to the cancellation, the cancellation procedure shall be carried out.

55. Cancellation Proceedings Before Regular Courts

(1) An action for a cancellation request on grounds of revocation (Section 49) or because of earlier rights (Section 51) shall be brought against the person registered as proprietor of the trade mark or his successor in title.

(2) The following persons may bring an action:

1. any person in such cases where a cancellation request has been filed on the grounds of revocation;
2. the proprietors of the rights stated in Sections 9 to 13 in such cases where a cancellation request has been filed on the grounds of rights having seniority;
3. the persons entitled to make claims under Section 13(2) of the Law Against Unfair Competition [Gesetz gegen den unlauteren Wettbewerb] in such cases where a cancellation request has been filed because of an indication of geographical origin having seniority (Section 13(2), No. 5).

(3) If the action for cancellation has been brought by the proprietor of an earlier registered trade mark, he shall, if the defendant has filed an objection, furnish proof that the earlier registered trade mark has been put to use pursuant to Section 26 during a period of five years preceding the bringing of the action, provided the earlier trade mark has at this date been registered for not less than five years. If the period of five years of non-use ends after the bringing of the action, the plaintiff shall, if the defendant has filed an objection, furnish proof that the trade mark has been put to use pursuant to Section 26 during the period of five years preceding the end of the oral proceedings. Where the earlier trade mark has been registered for a period of not less than five years at the date of publication of the registration of the later trade mark, the plaintiff shall also, if the defendant has filed an objection, furnish proof that, at that date, the registration of the earlier trade mark could not have been canceled under Section 49(1). In the decision, only those goods or services of which use has been proved shall be considered.

(4) Where before or after the bringing of the action the right based on the registration of the trade mark has been assigned or transferred to another person, the decision upon the merits is also effective and enforceable vis-a-vis the successor in title. With regard to the right of the successor in title to become a party to the proceedings, Sections 66 to 74 and 76 of the Code of Civil Procedure shall apply mutatis mutandis.

Chapter 4 General Provisions for Procedures Before the Patent Office

56. Competence

(1) Trade Mark Sections and Trade Mark Divisions shall be established in the Patent Office for implementing procedures in trade mark matters.

(2) The Trade Mark Sections shall be competent for examining trade mark applications and for taking decisions in registration procedures. The tasks of a Trade Mark Section shall be performed by a member of the Patent Office (examiner). The tasks may also be performed by an official of the higher intermediate grade of the civil service or by comparable employees. Officials of the higher intermediate grade of the civil service or comparable employees, however, shall not be authorized to order that evidence be given under oath, to administer an oath, or to put forward a request to the Patent Court under Section 95(2).

(3) The Trade Mark Divisions are competent for those matters which do not fall within the competence of the Trade Mark Sections. The tasks of a Trade Mark Division shall be performed by at least three members of the Patent Office. The Chairman of a Trade Mark Division may handle alone all matters falling within the competence of the Trade Mark Division, with the exception of decisions on the cancellation of trade marks pursuant to Section 54, or he may delegate these matters to a member of the Trade Mark Division.

57. Exclusion and Challenge

(1) For the exclusion and challenge of examiners and members of the Trade Mark Divisions as well as officials of the higher and lower intermediate grades of the civil service or employees entrusted with the handling of matters within the competence of the Trade Mark Sections or Trade Mark Divisions, Sections 41 to 44, Section 45(2), sentence 2, and Sections 47 to 49 of the Code of Civil Procedure relating to the exclusion and challenge of members of the court shall apply mutatis mutandis.

(2) The decision on a challenge plea [Ablehnungsgesuch], insofar as the plea requires a decision, shall be made by the Trade Mark Division.

58. Expert Opinions

(l) The Patent Office shall be required to give opinions at the request of the courts or of the State Attorney's offices on questions concerning trade marks applied for or registered trade marks if there are divergent opinions by a number of experts in the proceedings.

(2) In other respects, the Patent Office shall not have power to make decisions or give opinions outside its sphere of activity as provided by the law without the permission of the Federal Ministry of Justice.

59. Investigation of the Facts; Right to Be Heard

(1) The Patent Office shall investigate ex officio the facts of the case. It shall not be bound to the factual statements and the offers of proof of the parties.

(2) Where the decision of the Patent Office is to be based upon factors which have not been communicated to the applicant or proprietor of the trade mark or to another party to the proceedings, the said party shall be given an opportunity to express their views thereon within a given period of time.

60. Examination of Facts; Hearing; Minutes

(1) The Patent Office may at any time summon and hear the interested parties, may examine witnesses, experts and the parties concerned, whether under oath or not, and may institute other inquiries necessary for clarification of the matter.

(2) Until such time as the decision concluding the procedure is made, the applicant or proprietor of a trade mark or another party concerned shall be given a hearing on request where appropriate. If the Patent Office does not consider a hearing to be appropriate, it shall reject the request. The decision whereby a request is rejected shall not be subject to interlocutory appeal.

(3) Minutes of hearings and the examination of witnesses shall be taken, which shall reproduce the essentials of the proceedings and contain the legally material declarations of the parties concerned. Sections 160a, 162 and 163 of the Code of Civil Procedure shall apply mutatis mutandis. The parties shall receive a copy of the minutes.

61. Decisions; Information on the Right to Appeal

(1) The decisions of the Patent Office shall contain the grounds therefor, and shall be in writing and be communicated ex officio to all interested parties, even if they have been pronounced in accordance with sentence 2. If a hearing has taken place, pronouncement may also be given at the end of the hearing. Grounds need not be given if the applicant or the proprietor of the trade mark is the only party and his request has been allowed.

(2) The written execution shall be accompanied by a statement informing the parties concerned of the appeal which shall be permissible from the decision, of the authority where the appeal shall be filed, of the period for filing the said appeal, and the appeal fee, if any, to be paid. The period for filing the appeal shall begin to run only when the parties concerned have been so informed in writing. If they have not been informed, or incorrectly informed, the appeal may be filed only within one year from the time of the communication of the decision, except where the party concerned has been informed in writing that an appeal was not permissible; Section 91 shall apply mutatis mutandis. Sentences 1 to 4 shall apply mutatis mutandis to the legal remedy of objection under Section 64.

62. Inspection of Files; Inspection of the Register

(1) The Patent Office shall permit anyone so requesting to inspect the files of trade mark applications if legitimate interest has been substantiated by prima facie evidence.

(2) Subsequent to the registration of the trade mark, the files relating to such registered trade marks may be inspected on request.

(3) Anyone may freely inspect the Register.

63. Costs of the Proceedings

(1) When several persons are parties to the proceedings, the Patent Office may decide that the costs of the proceedings, including the expenses of the Patent Office and the costs incurred by the parties shall, to the extent that they were necessary for the appropriate defense of their claims and rights, be borne in whole or in part by one of the parties if and to the extent that this is equitable. Such determination may also be made if the objection, the trade mark application, the opposition or the cancellation request is wholly or partly withdrawn or if, either in whole or in part, the registration of the trade mark is canceled in the Register due to surrender or non-renewal of the term of protection. Insofar as no such determination concerning the costs is made, each party shall individually meet the costs he has incurred.

(2) The Patent Office may order that the fee for opposition or for the cancellation request be wholly or partly refunded, if and to the extent that this is equitable.

(3) The amount of the costs to be refunded shall be determined by the Patent Office upon request. The provisions of the Code of Civil Procedure relating to the procedure for the assessment of costs and the execution of the decisions regarding the assessment of costs shall apply mutatis mutandis. Instead of an objection, an appeal shall lie from the decision regarding the assessment of costs. Section 66 shall apply, provided that the appeal shall be filed within two weeks and no fee has to be paid for lodging the appeal. The executable copy shall be issued by the registrar of the Patent Court.

64. Objection [Erinnerung]

(1) Objection may be raised to the decisions of the Trade Mark Sections and Trade Mark Divisions issued by officials of the higher intermediate grade of the civil service or comparable employees. The objection shall have suspensive effect.

(2) The objection shall be filed with the Patent Office within one month after service of the decision.

(3) If the official or employee whose decision is contested considers the objection to be well founded, he shall rectify his decision. This shall not apply if the party raising the objection is opposed by another party to the proceedings.

(4) Decisions on the objection shall be made by a member of the Patent Office.

(5) After an appeal under Section 66(3) has been lodged, decisions on objections can no longer be made. If, in spite of this provision, a decision on an objection is made after an appeal has been lodged, it shall be irrelevant.

65. Power to Issue Legal Ordinances

(1) By legal ordinance and without the consent of the Council of the Länder [Bundesrat], the Federal Ministry of Justice shall have the power

1. to regulate the establishment and the business procedure of the Patent Office in trade mark matters;
2. to prescribe additional requirements for the application of trade marks;
3. to determine the classification of goods and services;
4. to make detailed provisions concerning the execution of examination, opposition and cancellation procedures;
5. to make provisions concerning the Register for registered trade marks and, where appropriate, separate provisions on the Register for collective marks;
6. to regulate the information on registered trade marks to be recorded in the Register and to determine the scope of information as well as the manner of publishing information;
7. to make provisions concerning other procedures before the Patent Office provided in this Law, in particular, the procedure concerning the division of applications and registrations, the procedure concerning the provision of information or certifications, the procedure concerning reinstatement, the procedure concerning the inspection of files, the procedure concerning the protection of international registrations of trade marks and the procedure concerning the conversion of Community trade marks;
8. to make provisions concerning the form of filing requests and submissions regarding trade mark matters, including the communication of requests and submissions via electronic data transmission;
9. to make provisions determining the required form of decisions, office actions or other notifications of the Patent Office relating to trade mark matters communicated to the parties concerned, including the communication via electronic data transmission, unless a specific form of communication is prescribed by law;
10. to make provisions determining the cases and the preconditions for taking into account submissions and documents relating to trade mark matters in other languages than German;
11. to entrust officials of the higher intermediate grade of the civil service or comparable employees with the handling of matters within the competence of the Trade Mark Divisions which by their nature present no particular legal difficulties, with the exception of decisions on the cancellation of trade marks (Section 48(1), Sections 53 and 54), the giving of opinions (Section 58(1)) and the decisions whereby the giving of an expert opinion is refused;
12. to entrust officials of the lower intermediate grade of the civil service or comparable employees with the handling of matters within the competence of the Trade Mark Sections or Trade Mark Divisions which by their nature present no particular legal difficulties, with the exception of decisions on applications, oppositions or other requests;
13. to prescribe the collection of administrative fees in order to cover the expenses of requests addressed to the Patent Office, insofar as provision therefor has not been made by law, in particular,
(a) to order that fees and expenses be collected for certifications, authentications, the inspection of files and the furnishing of information;
(b) to establish rules concerning those who owe fees, the due date of payments, the obligation to pay in advance, exemptions from payment, limitation and the regulations and procedures for determining the costs;
14. to regulate the particulars to be included in the publication under Section 33(3) and to determine the manner of publication of those particulars.

(2) The Federal Ministry of Justice may delegate such power to issue legal ordinances under subsection (1) by legal ordinance in whole or in part to the President of the Patent Office without the consent of the Council of the Länder.

Chapter 5 Proceedings Before the Patent Court

66. Appeal

(1) An appeal from the decisions of the Trade Mark Sections and Trade Mark Divisions shall lie to the Patent Court, insofar as an objection (Section 64(1)) has not been raised. The appeal may be filed by the parties to the proceedings before the Patent Office. It shall have a suspensive effect.

(2) The appeal shall be filed with the Patent Office within one month after service of the decision.

(3) Where the decision on the objection under Section 64 has not been made within six months from the date of filing, and where, after the expiry of this time limit, the person filing the objection has filed a request for decision, the appeal from a decision of the Trade Mark Section or Trade Mark Division is directly admissible, in derogation of subsection (1), sentence 1, if the decision on the objection is not made within a period of two months from the receipt of the request. If the person raising the objection is opposed by another party to the proceedings, sentence 1 shall be applicable provided that the period of six months after the objection was raised is replaced by a period of 10 months. If the other party has also raised an objection, the other party must give his consent to the appeal under sentence 2. The written declaration of consent shall be attached to the appeal. If the other party does not also lodge an appeal within one month after service of the appeal under subsection (4), sentence 2, his objection is deemed to have been withdrawn. The remaining periods of time under sentences 1 and 2 shall be interrupted if the proceedings are suspended or if, on request of a party to the proceedings, an extension of time has been granted. The remaining periods of time under sentences 1 and 2 shall recommence to run after the suspension of the proceedings has been terminated or the extension of time granted has expired. After a decision on the objection has been issued, an appeal under sentences 1 and 2 shall no longer be admissible.

(4) Copies of the appeal and of all written statements shall be attached for the other parties. The appeal and all written statements containing motions pertaining to the matter or the declaration of withdrawal of the appeal or of a motion shall be served ex officio upon the other parties. Other documents shall be communicated informally to the said parties, provided that ex-officio service has not been ordered.

(5) A fee as prescribed by the schedule of fees shall be paid for the appeal. If the fee for an appeal pursuant to subsection (1) is not paid within the period under subsection (2) or for an appeal pursuant to subsection (3) is not paid within the period of one month after receipt of the appeal, the appeal shall be deemed not to have been filed.

(6) If the authority whose decision is contested considers the appeal to be well founded, it shall rectify its decision. This shall not be applicable where the appellant is opposed by another party to the proceedings. The authority may order that the appeal fee be refunded. If the appeal is not rectified pursuant to sentence 1, it shall be remitted to the Patent Court before the expiration of one month, without comment as to its merits. In cases under sentence 2, the appeal shall be remitted to the Patent Court without delay.

67. Boards of Appeal; Public Oral Proceedings

(1) A Board of Appeal of the Patent Court shall decide on appeals within the meaning of Section 66, composed of three legally qualified members.

(2) Proceedings concerning appeals from decisions by the Trade Mark Sections and Trade Mark Divisions, including the pronouncement of the decisions, shall be public if the registration has been published.

(3) Sections 172 to 175 of the Judiciary Law [Gerichtsverfassungsgesetz] shall be applicable, mutatis mutandis, provided that

1. on the request of one of the parties, the public may also be excluded from the proceedings if publicity threatens to endanger the interests worthy of protection of the party making the request;
2. the public shall be excluded from the pronouncement of the decisions until the publication of the registration.

68. Intervention of the President of the Patent Office in Appeal Proceedings

(1) The President of the Patent Office may, if he considers it appropriate in order to safeguard the public interest, make written statements in appeal proceedings before the Patent Court, be present at hearings and make representations there. Written statements by the President of the Patent Office shall be communicated to the interested parties by the Patent Court.

(2) The Patent Court may, if it considers it appropriate on a legal question of basic importance, give the President of the Patent Office the opportunity to intervene in appeal proceedings. The President of the Patent Office shall become an interested party to the proceedings upon receipt of the notice of intervention.

69. Hearings

A hearing shall take place if

1. one of the parties so requests;
2. evidence is to be taken before the Patent Court (Section 74(1)); or
3. the Patent Court considers it appropriate.

70. Decision in Respect of Appeals

(1) A decision shall be given on the appeal.

(2) The decision dismissing the appeal as inadmissible may be given without a hearing.

(3) The Patent Court may reverse the contested decision without deciding the case on its merits if

1. the Patent Office has not yet decided the case on its merits;
2. the proceedings before the Patent Office suffer from a substantial defect; or if
3. new facts or evidence have become known which are essential for the decision.

(4) The Patent Office must base its decision on the legal judgment on which the reversal pursuant to subsection (3) is based.

71. Costs of Appeal Proceedings

(1) When several persons are parties to the proceedings, the Patent Court may decide that the costs of the proceedings, including the costs incurred by the parties shall, to the extent that they can be reasonably considered to have been necessary for the appropriate defense of their interests and rights, be borne in whole or in part by one of the parties if and to the extent that this is equitable. Insofar as no such decision concerning the costs is made, each party to the proceedings shall meet the costs he has incurred.

(2) Costs may be imposed on the President of the Patent Office only if he has made petitions after his intervention in the proceedings.

(3) The Patent Court may order that the appeal fee (Section 66(5)) be refunded.

(4) Subsections (1) to (3) shall also be applicable if, either in whole or in part, the party withdraws the appeal, the trade mark application, the opposition or the cancellation request, or if, either in whole or in part, the trade mark registration is canceled in the Register due to surrender or non-renewal of the term of protection.

(5) In other respects, the provisions of the Code of Civil Procedure relating to the procedure for the assessment of costs and execution of the decisions regarding the assessment of costs shall apply mutatis mutandis.

72. Exclusion and Challenge

(1) For the exclusion and challenge of members of the court, Sections 41 to 44 and 47 to 49 of the Code of Civil Procedure shall be applicable mutatis mutandis.

(2) Persons having participated in the previous proceedings before the Patent Office shall also be excluded from judicial office.

(3) The decision on the challenge of a judge shall be rendered by the Board to which the person who is challenged belongs. If, as a result of the elimination of the member who has been challenged, the Board is unable to make a decision, another Board of Appeal shall render the decision.

(4) The decision on the challenge of a registrar shall be rendered by the Board to whose jurisdiction the matter belongs.

73. Investigation of Facts; Preparation of the Hearing

(1) The Patent Court shall investigate ex officio the facts of the case. It shall not be bound by the factual statements and the offers of proof of the parties.

(2) The presiding judge or a member of the Board appointed by him shall, before the hearing or, in the absence of a hearing, before the decision of the Patent Court, make all necessary arrangements for finally disposing of the matter, if possible in one hearing or in one session. In other respects, Section 273(2), (3), sentence 1, and (4), sentence 1, of the Code of Civil Procedure shall be applicable mutatis mutandis.

74. Taking of Evidence

(1) The Patent Court shall take evidence at the hearing. In particular, it may make inspections in situ, examine witnesses, experts and the parties, and order the consultation of documents.

(2) In appropriate cases, the Patent Court may, prior to the hearing, have evidence taken by one of its members as commissioned judge or, specifying particular questions of evidence, request another court to take such evidence.

(3) The parties shall be notified of all hearings in which evidence is taken and may attend such hearings. They may put relevant questions to witnesses and experts. If a question is objected to, the Patent Court shall decide.

75. Summons

(1) As soon as the date of the hearing is fixed, the parties shall be summoned with at least two weeks' notice. In urgent cases, the presiding judge may shorten this period.

(2) It shall be pointed out in the summons that if a party fails to appear, the case may be heard and decided in his absence.

76. Course of the Hearing

(1) The presiding judge shall open and conduct the hearing.

(2) After the case is called, the presiding judge or recording judge shall report on the essential contents of the files.

(3) Thereupon, the parties shall be given leave to speak in order to make and substantiate their motions.

(4) The presiding judge shall discuss with the parties the questions of fact and of law involved in the case.

(5) The presiding judge shall, upon request, permit each member of the Board to ask questions. If a question is objected to, the Board shall decide.

(6) After discussing the case, the presiding judge shall declare the hearing closed. The Board may decide to reopen the hearing.

77. Minutes

(1) At the hearing, and whenever evidence is taken, a registrar of the court shall be called in to act as minute-writer. If, by order of the presiding judge, no minute-writer is called in, one of the judges shall record the minutes.

(2) Minutes shall be taken of oral proceedings and of all taking of evidence. Sections 160 to 165 of the Code of Civil Procedure shall apply mutatis mutandis.

78. Consideration of Evidence; Right to be Heard Before the Court

(1) The Patent Court shall decide the case on the basis of its own conclusions freely reached in the light of the results of the proceedings as a whole. The decision must state the grounds which led the judges to form their conclusions.

(2) The decision may be based only on facts and the results of evidence on which the parties have had an opportunity to state their views.

(3) Where there has been a previous hearing, a judge not present at the last session of the hearing may participate in rendering the decision only if the parties consent.

79. Pronouncement; Service of the Decisions; Statement of Grounds

(1) Final decisions of the Patent Court shall, if a hearing has taken place, be rendered at the court session at which the hearing was concluded or at a session to be fixed forthwith. This deadline shall not be more than three weeks later except when important reasons, in particular the volume and the difficulty of the case, so require. Final decisions may be served upon the parties instead of being pronounced in court. If the Patent Court makes its decision without a hearing, pronouncement of the decision shall be replaced by service thereof upon the parties. Final decisions shall be served ex officio to the parties.

(2) Decisions of the Patent Court by which a motion is refused or a legal remedy is decided upon must state the grounds upon which the decision is based.

80. Corrections

(1) Typing errors, errors in calculation and similar obvious mistakes in the decision may at any time be corrected by the Patent Court.

(2) If the statement of facts as set out in the decision contains other mistakes or obscurities, correction may be requested within two weeks after service of the decision.

(3) The correction pursuant to subsection (1) may be decided by the Patent Court without a previous hearing.

(4) The Patent Court shall decide on the request for correction pursuant to subsection (2) without taking evidence. In such decisions, only judges who have taken part in rendering the decision whose correction is requested shall participate.

(5) The decision concerning the correction shall be recorded on the decision itself and the copies thereof.

81. Representation; Power of Attorney

(1) Any party may, at any stage of the proceedings, be represented before the Patent Court by an authorized representative. A decision may be made ordering the appointment of a representative. The provisions of Section 96 shall not be affected.

(2) The power of attorney shall be filed in writing at the Court with the documents of the case. It may be filed later; for this purpose, the Patent Court may fix a time limit.

(3) The lack of power of attorney may be raised at any stage of the proceedings. The Patent Court shall ex officio consider the lack of a power of attorney if an attorney-at-law or patent attorney does not appear as the representative.

82. Application of Further Provisions; Appeals from Decisions; Inspection of Files

(1) In the absence of provisions in this Law concerning proceedings before the Patent Court, the Judiciary Law and the Code of Civil Procedure shall apply mutatis mutandis unless the special nature of the proceedings before the Patent Court does not so permit. Section 227(3), sentence 1, of the Code of Civil Procedure shall not apply. In proceedings before the Patent Court, the Law on Court Costs [Gerichtskostengesetz] shall apply mutatis mutandis with respect to the expenses.

(2) Appeals from the decisions of the Patent Court shall lie only to the extent permitted under this Law.

(3) For the grant to third persons of permission to inspect the files of the case, Section 62(1) and (2) shall apply mutatis mutandis. The request for permission shall be decided upon by the Patent Court.

Chapter 6 Proceedings Before the Federal Court of Justice [Bundesgerichtshof]

83. Leave to Appeal on Points of Law

(1) An appeal on a point of law from the decisions of the Board of Appeal of the Patent Court in respect of an appeal under Section 66 shall lie to the Federal Court of Justice if the Board of Appeal in its decision has given leave to appeal on the said point of law. An appeal on a point of law shall have suspensive effect.

(2) The appeal on a point of law shall be permitted if

1. a question of law of basic significance is to be decided; or
2. the further development of the law or the assurance of uniform judicial practice requires a decision by the Federal Court of Justice.

(3) Leave to appeal on a point of law shall not be required if one of the following procedural defects is denounced:

1. that the court which rendered the decision was not properly constituted;
2. that a judge having participated in rendering the decision was excluded by law from the exercise of judicial office or, because of the possibility of partiality, had been successfully challenged;
3. that one of the parties was denied the right to be heard in court;
4. that a party to the proceedings was not represented according to the provisions of the law, unless he expressly or tacitly agreed with the conduct of the proceedings;
5. that the decision was made on the basis of a hearing in which the provisions on the publicity of proceedings were violated; or
6. that the decision does not state the grounds therefor.

84. Right to Appeal; Basis for an Appeal

(1) The right to appeal on a point of law shall belong to the parties to the proceedings on appeal.

(2) The only basis for an appeal on a point of law shall be the argument that the decision is founded on a breach of the law. Sections 550 and 551, Nos. 1 to 3 and 5 to 7, of the Code of Civil Procedure shall apply mutatis mutandis.

85. Formal Requirements

(1) The appeal on a point of law shall be filed in writing with the Federal Court of Justice within one month after service of the decision.

(2) The provisions of Section 142 on the reduction of the value in dispute shall apply mutatis mutandis in proceedings concerning appeals on points of law before the Federal Court of Justice.

(3) The appeal on a point of law shall state the grounds on which it is based. The period allowed for stating the grounds shall be one month; it shall commence with the filing of the appeal on a point of law and may, upon request, be extended by the presiding judge.

(4) The statement of the grounds for the appeal on a point of law must contain

1. the declaration as to the extent to which the decision is contested and the modification or reversal thereof is requested;
2. the indication of the violated rule of law; and
3. where the basis for the appeal on a point of law is the argument that the law was violated in respect of procedure, a statement of the facts constituting the defect.

(5) The parties must be represented before the Federal Court of Justice by an attorney-at-law, admitted to practice before the Court as authorized representative. Upon request of any party, the latter's patent attorney shall be given leave to speak. Section 157(1) and (2) of the Code of Civil Procedure shall not apply in this event. Of the costs arising from the collaboration of a patent attorney in the case, fees up to the amount of a full fee according to Section 11 of the Federal Regulations on Fees for Attorneys-at-law [Bundesgebührenordnung für Rechtsanwälte] shall be refunded, as well as the necessary expenses of the patent attorney.

86. Examination of Admissibility

The Federal Court of Justice shall examine ex officio whether the appeal on a point of law is in itself admissible and whether it has been filed and the grounds therefor have been stated in the form provided by law and within the prescribed time limit. If any of these requirements is lacking, the appeal on a point of law shall be dismissed as inadmissible.

87. Several Parties

(1) When several persons are parties to the proceedings in respect of an appeal on a point of law, the appeal and the statement of the grounds therefor shall be served upon the other parties, with the request to file declarations, if any, in writing with the Federal Court of Justice within a given period after service. The date on which the appeal was filed shall be communicated with the service of the appeal on a point of law. The appellant shall file the required number of certified copies together with the appeal or the statement of the grounds for the appeal.

(2) If the President of the Patent Office is not an interested party in an appeal on a point of law, Section 68(1) shall apply mutatis mutandis.

88. Application of Other Provisions

(1) In proceedings in respect of the appeal on a point of law, the provisions of the Code of Civil Procedure regarding exclusion and challenge of members of the court, authorized representatives and legal assistants, ex-officio service of documents, summonses, sessions and time limits, and reinstatement, shall apply mutatis mutandis. In the case of reinstatement, Section 91(8) shall apply mutatis mutandis.

(2) As to the publicity of the proceedings, Section 67(2) and (3) shall apply mutatis mutandis.

89. Decision on Appeals on a Point of Law

(1) The appeal on a point of law shall be the subject of a decision. Such decision may be rendered without a hearing.

(2) The Federal Court of Justice shall be bound, when rendering its decision, by the facts established in the decision appealed from, except when admissible and substantiated grounds for an appeal on a point of law are put forward in relation to such facts.

(3) The decision must state the grounds on which it is based and shall be served ex officio upon the interested parties.

(4) In the event of a reversal of the decision appealed against, the case shall be referred back to the Patent Court for a further hearing and decision. The Patent Court shall be bound to base its decision on the legal opinion on which the reversal is based.

90. Decision on Costs

(1) When several persons are parties to the proceedings, the Federal Court of Justice may decide that the costs of the proceedings including the costs incurred by the parties shall, to the extent that they were necessary for the appropriate defense of their claims and rights, be borne in whole or in part by one of the parties if and to the extent that this is equitable. Such determination may also be made if the appeal on a point of law, the trade mark application, the opposition or the cancellation request is wholly or partly withdrawn by the party or if, either in whole or in part, the registration of the trade mark is canceled in the Register due to surrender or non-renewal of the term of protection. Insofar as no such determination concerning the costs is made, each party shall individually meet the costs he has incurred.

(2) If the appeal on a point of law is rejected or dismissed as inadmissible, the costs arising from the appeal shall be awarded against the appellant. Costs arising from gross negligence of one of the parties shall be awarded against that party.

(3) Costs can only be imposed on the President of the Patent Office if he lodged the appeal on a point of law or made petitions in the proceedings.

(4) In other respects, the provisions of the Code of Civil Procedure relating to the procedure for the assessment of costs and execution of decisions regarding the assessment of costs shall apply mutatis mutandis.

Chapter 7 Common Provisions

91. Reinstatement

(1) Any person who, through no fault of his own, has been prevented from observing a time limit before the Patent Office or the Patent Court, default of which is detrimental to his rights according to the provisions of the law, shall, on request, be reinstated. This provision shall not apply to the time limits for filing an opposition and paying the opposition fee.

(2) Reinstatement must be requested within two months after the removal of the impediment.

(3) The request must state the facts upon which the reinstatement may be based. These facts must be established by prima facie evidence at the time of filing the request or in the procedure relating thereto.

(4) The omitted act must be completed within the time limit for the request. If this is done, reinstatement may be granted without a request.

(5) After one year from the expiration of the time limit which has not been observed, reinstatement may no longer be requested and the omitted act may no longer be completed.

(6) A decision on the request shall be made by the authority which shall decide on the action to be made good.

(7) The decision on reinstatement shall not be appealable.

(8) If the proprietor of a trade mark is granted reinstatement and if, in the course of the period between the loss of rights to the trade mark registration and the reinstatement, third parties have placed goods on the market or rendered services in good faith with a sign identical with or similar to the trade mark, the proprietor of the trade mark shall not be entitled to assert any rights with regard to the said acts.

92. Duty to Tell the Truth

In proceedings before the Patent Office, the Patent Court and the Federal Court of Justice the parties must make their statements on questions of fact fully and truthfully.

93. Official Language and Language in Court

The language of the Patent Office and the Patent Court shall be German. In other respects, the provisions of the Judiciary Law concerning the language of the court shall be applicable.

94. Service of Documents

(1) For the purpose of the service of documents in proceedings before the Patent Office and the Patent Court, the provisions of the Law on Service in Administrative Procedures [Verwaltungszustellungsgesetz] shall apply subject to the following conditions:

1. service upon addressees residing abroad who have not appointed a representative in this country (Section 96) may also be effected by mail in accordance with Sections 175 and 213 of the Code of Civil Procedure provided that it was possible for the addressee to recognize the necessity of appointing a representative in this country at the time of the service to be effected;
2. for the purpose of service upon holders of certificates of representation [Erlaubnisscheininhaber] (Section 177 of the Patent Attorney Regulations [Patentanwaltsordnung]), Section 5(2) of the Law on Service in Administrative Procedures shall apply mutatis mutandis;
3. documents may also be served upon addressees for whom a mail box has been installed at the Patent Office or at the Patent Court, by depositing the said documents in the mail box of the addressee. A written statement relating to the deposit shall be added to the files of the case. The time of the deposit shall be recorded on the document. Service shall be deemed to have been effected on the third day after deposit in the mail box.

(2) Section 9(1) of the Law on Service in Administrative Procedures shall not apply if service marks the commencement of the period allowed for filing an objection [Erinnerung] (Section 64(2)), an appeal (Section 66(2)) or an appeal on a point of law (Section 85(1)).

95. Legal Assistance

(1) The courts shall be required to furnish legal assistance to the Patent Office.

(2) In proceedings before the Patent Office, the Patent Court shall, at the request of the Patent Office, impose subpoenas and coercive measures [Ordnungs- oder Zwangsmittel] against witnesses and experts who fail to appear or who refuse to give evidence or to give it under oath. Enforcement of the summons served on a witness who has failed to appear shall likewise be ordered.

(3) A Board of Appeal of the Patent Court composed of three legal members shall pronounce on the request made under subsection (2). Pronouncement in such case shall take the form of a decision.

96. Domestic Representative.

(1) The proprietor of a filed or registered trade mark having neither a domicile nor a seat nor an establishment in this country may take part in proceedings before the Patent Office or the Patent Court regulated by this Law only if he has appointed a patent attorney or an attorney-at-law in this country as his representative.

(2) The representative appointed under subsection (1) shall be authorized to represent him in Patent Office and Patent Court proceedings and in civil litigation affecting the mark. The representative may also file requests for the institution of criminal proceedings.

(3) The place where the representative has his business premises shall be deemed, within the meaning of Section 23 of the Code of Civil Procedure, to be the place where the assets are located. If there are no business premises, then the place where the representative has his domicile shall be relevant and, in the absence thereof, the place where the Patent Office has its seat.

(4) Subsection (1) shall apply mutatis mutandis to third parties participating in proceedings before the Patent Office or the Patent Court regulated by this Law.

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