PART 5 PROTECTION OF MARKS UNDER THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS AND THE PROTOCOL RELATING TO THE MADRID AGREEMENT; COMMUNITY TRADE MARKS
Chapter 1 Protection of Marks Under the Madrid Agreement
107. Application of the Provisions of this Law
The provisions of this Law shall be applicable mutatis mutandis to international registrations of marks under the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) which are effected through the intermediary of the Patent Office or the protection of which extends to the territory of the Federal Republic of Germany unless otherwise provided in this Chapter or in the Madrid Agreement.
108. Application for International Registration
(1) The application for international registration under Article 3 of the Madrid Agreement of a registered mark shall be filed with the Patent Office.
(2) If the application for international registration is filed prior to the registration of the mark, the application shall be deemed to have been received on the date of the registration of the mark.
(3) The application for international registration shall be accompanied by a translation of the list of goods and services in the language prescribed for international registration. The list shall be arranged in the order of the classes of the International Classification of Goods and Services.
109. Fees
(1) The application for international registration shall be accompanied by a national fee as specified in the schedule of fees. If the application for international registration is filed prior to the registration of the mark, the fee shall become due on the date of registration. If the fee is not paid, the application shall be deemed not to have been filed.
(2) The international fees payable under Article 8(2) of the Madrid Agreement shall be paid directly to the International Bureau of the World Intellectual Property Organization.
110. Recordal in the Register
The date and number of the international registration of a mark registered shall be entered in the Register.
111. Subsequent Territorial Extension
(1) If a request for subsequent territorial extension of the international registration of a mark is filed under Article 3ter(2) of the Madrid Agreement with the Patent Office, such request shall be accompanied by a national fee as specified in the schedule of fees. If the fee is not paid, the request shall be deemed not to have been filed.
(2) Section 109(2) shall apply mutatis mutandis.
112. Effect of International Registration
(1) The international registration of a mark the protection of which has been extended to the territory of the Federal Republic of Germany under Article 3ter of the Madrid Agreement shall have the same effect as if an application for the recordal of the mark in the Register kept by the Patent Office had been filed and the mark had been registered on the date of international registration under Article 3(4) of the Madrid Agreement or on the date of recordal of the subsequent territorial extension under Article 3ter(2) of the Madrid Agreement.
(2) The effect referred to in subsection (1) shall be deemed not to have accrued if the international registration of a mark is refused protection pursuant to Sections 113 to 115.
113. Examination as to Absolute Grounds for Refusal
(1) International registrations of marks shall be examined as to absolute grounds for refusal under Section 37 in the same way as marks in respect of which an application for registration has been filed. Section 37(2) shall not apply.
(2) Rejection of the application (Section 37(1)) shall be replaced by refusal of protection.
114. Opposition
(1) For the purpose of international registrations, publication of the registration (Section 41) shall be replaced by publication in the gazette published by the International Bureau of the World Intellectual Property Organization.
(2) The time limit for lodging opposition (Section 42(1)) against the grant of protection for international registrations shall start on the first day of the month following the month indicated on the issue of the gazette containing the publication of the international registration.
(3) Cancellation of the registration (Section 43(2)) shall be replaced by refusal of protection.
115. Revocation of Protection a posteriori
(1) For the purpose of international registrations of marks the cancellation request or the action for cancellation on the ground of revocation (Section 49), the presence of absolute grounds for refusal (Section 50) or due to a prior right (Section 51) shall be replaced by the request or the action for revocation of protection.
(2) If a request for revocation of protection due to non-use under Section 49(1) is filed, the date of registration shall be replaced by the date on which the period according to Article 5(2) of the Madrid Agreement expired or, if the procedures under Sections 113 and 114 have not yet been concluded upon expiry of this period, by the date of receipt of the final notification concerning the grant of protection by the International Bureau of the World Intellectual Property Organization.
116. Opposition and Request for Cancellation on the Basis of International Registrations
(1) If, on the basis of an international registration, opposition is lodged against the registration of a mark, Section 43(1) shall be applicable provided that the date of registration shall be replaced by the date specified in Section 115(2).
(2) If, on the basis of an international registration, an action for cancellation is brought under Section 51, Section 55(3) shall be applicable provided that the date of registration shall be replaced by the date specified in Section 115(2).
117. Exclusion of Claims for Non-Use
If claims within the meaning of Sections 14, 18 and 19 are asserted because of infringement of an international registration, Section 25 shall be applicable provided that the date of registration of the trade mark shall be replaced by the date specified in Section 115(2).
118. Consent to the Transfer of an International Registration
The Patent Office shall give the International Bureau of the World Intellectual Property Organization the consent required under Article 9bis(1) of the Madrid Agreement in the event of the transfer of an international registration irrespective of whether the mark is recorded in the Register kept by the Patent Office for the new proprietor of the international registration.
Chapter 2 Protection of Marks Under the Protocol Relating to the Madrid Agreement
119. Application of the Provisions of this Law
The provisions of this Law shall apply mutatis mutandis to international registration of marks under the Madrid Protocol of June 27, 1989, Relating to the Madrid Agreement Concerning the International Registration of Marks (Protocol Relating to the Madrid Agreement) which are effected through the intermediary of the Patent Office or the protection of which extends to the territory of the Federal Republic of Germany unless otherwise provided in this Chapter or in the Protocol Relating to the Madrid Agreement.
120. Application for International Registration
(1) The application, under Article 3 of the Protocol Relating to the Madrid Agreement, for international registration of a mark in respect of which an application for registration has been filed, or of a registered mark, shall be filed with the Patent Office. The application may be filed prior to the registration of the mark if the international registration is to be effected on the basis of a registered mark.
(2) If the international registration is to be effected on the basis of a registered mark and if the application for international registration is filed prior to the registration of the mark, the application for international registration shall be deemed to have been received on the date of registration of the mark.
(3) Section 108(3) shall be applicable mutatis mutandis.
121. Fees
(1) The application for international registration shall be accompanied by a national fee as specified in the schedule of fees.
(2) If the international registration is to be effected on the basis of a registered mark under the Madrid Agreement as well as according to the Protocol Relating to the Madrid Agreement, a joint national fee as specified in the schedule of fees shall be paid for the application for international registration.
(3) If the international registration is to be effected on the basis of a registered mark and if the application for international registration was filed prior to the registration of the mark, the fee under subsection (1) or subsection (2) shall become due on the date of registration. If the fees under subsection (1) or subsection (2) are not paid, the application shall be deemed not to have been filed.
(4) The international fees payable under Article 8(2) or Article 8(7) of the Protocol Relating to the Madrid Agreement shall be paid directly to the International Bureau of the World Intellectual Property Organization.
122. Entry in the Files; Recordal in the Register
(1) If the international registration has been effected on the basis of an application for registration, the date and number of the international registration shall be entered in the file of the mark applied for.
(2) The date and number of the international registration effected on the basis of a registered mark shall be recorded in the Register. Sentence 1 shall also apply if the international registration has been effected on the basis of an application for registration and if the application has led to registration.
123. Subsequent Territorial Extension
(1) The request for subsequent territorial extension of the protection resulting from the international registration of a mark under Article 3ter(2) of the Protocol Relating to the Madrid Agreement shall be filed with the Patent Office. If the subsequent extension is to be effected on the basis of a registered mark and if the request has been filed prior to the registration of the mark, it shall be deemed to have been received on the date of registration.
(2) The request for subsequent territorial extension shall be accompanied by a national fee as specified in the schedule of fees. If the subsequent territorial extension on the basis of a registered mark is to be effected on the basis of the Madrid Agreement as well as on the basis of the Protocol Relating to the Madrid Agreement, the request for subsequent territorial extension shall be accompanied by a joint national fee as specified in the schedule of fees. If the fee under sentence 1 or sentence 2 is not paid, the application shall be deemed not to have been filed.
(3) Section 121(4) shall apply mutatis mutandis.
124. Analogous Application of the Provisions Concerning the Effect of International Registrations of Marks Under the Madrid Agreement
Sections 112 to 117 shall apply mutatis mutandis to international registrations of marks the protection of which has been extended to the territory of the Federal Republic of Germany under Article 3ter of the Protocol Relating to the Madrid Agreement provided that the provisions of the Madrid Agreement mentioned in Sections 112 to 117 shall be replaced by the corresponding provisions of the Protocol Relating to the Madrid Agreement.
125. Transformation of an International Registration
(1) Where an application under Article 9quinquies of the Protocol Relating to the Madrid Agreement for transformation of a mark canceled under Article 6(4) of the Protocol Relating to the Madrid Agreement is filed with and is received by the Patent Office with the necessary particulars prior to the expiry of a period of three months after the date of cancellation of the mark in the International Register, the date of the international registration of this mark under Article 3(4) of the Protocol Relating to the Madrid Agreement or the date of recordal of the territorial extension of protection under Article 3ter(2) of the Protocol Relating to the Madrid Agreement with the priority claimed for the international registration, if any, shall be decisive for the determination of seniority within the meaning of Section 6(2).
(2) The request for transformation shall be accompanied by a fee as specified in the schedule of fees. Where transformation is requested in respect of goods or services coming under more than three classes of the Classification of Goods and Services, a class fee as specified in the schedule of fees shall be payable for each further class. If the fees are not paid, Section 36(3) shall apply mutatis mutandis.
(3) The party filing the request shall present a certificate from the International Bureau of the World Intellectual Property Organization showing the mark and the goods or services in respect of which the protection of the international registration had effect in the Federal Republic of Germany prior to its cancellation in the International Register.
(4) In addition thereto, the party filing the request shall file a translation of the list of the goods or services in respect of which registration is sought.
(5) In all other respects, the request for transformation shall be treated as an application for the registration of a mark. Where, however, on the date of cancellation of the mark in the International Register, the period for refusal of protection under Article 5(2) of the Protocol Relating to the Madrid Agreement had already expired and no proceedings in respect of the refusal of protection or subsequent revocation of protection were pending on the said date, the mark shall be directly registered under Section 41 without previous examination. No opposition shall be admissible against registration of a mark under sentence 2.
Chapter 3 Community Trade Marks
125a. Filing of Applications for Community Trade
Marks with the Patent Office
If applications for Community trade marks are filed with the Patent Office under Article 25(1)(b) of Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community Trade Mark (Official Journal of the European Communities (OJEC) No. L 11, p. 1), the Patent Office shall mark the application with the date of its receipt and transmit it immediately and without examination to the Office for Harmonization in the Internal Market (trade marks and designs).
125b. Application of the Provisions of this Law
The provisions of this Law shall apply to trade marks filed or registered under the Community Trade Mark Regulation in the following cases:
1. For the application of Section 9 (relative grounds for refusal), earlier filed or registered Community trade marks shall be placed on an equal footing with earlier filed or registered trade marks under this Law with the proviso, however, that a reputation in the Community under Article 9.1(c) of the Community Trade Mark Regulation shall be substituted for a reputation in the Federal Republic of Germany under Section 9(1), No. 3.
2. In addition to the rights under Articles 9 to 11 of the Community Trade Mark Regulation, the proprietor of a registered Community trade mark shall have the same rights to compensation for damages (Section 14(6) and (7)), destruction (Section 18) and information (Section 19) as the proprietor of a trade mark registered under this Law.
3. If rights resulting from a registered Community trade mark are asserted in respect of the use of a later trade mark registered under this Law, Section 21(1) (forfeiture) shall apply mutatis mutandis.
4. If opposition to the registration of a trade mark (Section 42) is based on an earlier registered Community trade mark, Section 43(1) (prima facie evidence of use) shall apply mutatis mutandis with the proviso that use of the earlier Community trade mark under Article 15 of the Community Trade Mark Regulation shall be substituted for use of the earlier trade mark under Section 26.
5. If a request for cancellation of the registration of a trade mark (Section 51(1)) is based on an earlier Community trade mark,
(a) Section 51(2), first sentence (forfeiture) shall apply mutatis mutandis;
(b) Section 55(3) (proof of use) shall apply mutatis mutandis with the proviso that use of the Community trade mark under Article 15 of the Community Trade Mark Regulation shall be substituted for use of an earlier trade mark under Section 26.
6. Requests for seizure on import or export may be filed by the proprietors of registered Community trade marks in the same way as by the proprietors of trade marks registered under this Law. Sections 146 to 149 shall apply mutatis mutandis.
125c. Later Invalidation of a Trade Mark
(1) Where, in respect of a filed or registered Community trade mark, the priority of a trade mark recorded in the Register of the Patent Office has been claimed under Article 34 or 35 of the Community Trade Mark Regulation and where the trade mark recorded in the Register of the Patent Office has been canceled due to non-renewal of the period of protection under Section 47(6) or surrender under Section 48(1), the invalidity of the trade mark on grounds of revocation or nullity may be established later on request.
(2) Invalidity shall be established on the same conditions as cancellation on grounds of revocation or nullity. However, the invalidity of a trade mark on grounds of revocation under Section 49(1) may only be established if the conditions for cancellation under that provision were already fulfilled at the date of cancellation of the trade mark due to non-renewal of the period of protection or surrender.
(3) The invalidation procedure shall be governed by the provisions applicable to the procedure for cancellation of a registered trade mark with the proviso that the establishment of invalidity of a trade mark shall be substituted for the cancellation of its registration.
125d. Conversion of Community Trade Marks
(1) If a request for conversion of a filed or registered Community trade mark has been transmitted to the Patent Office under Article 109(3) of the Community Trade Mark Regulation, the applicant shall pay a fee as specified in the schedule of fees within a period of two months from the receipt of the request for conversion by the Patent Office. Where conversion is requested in respect of goods or services coming under more than three classes of the classification of goods and services, a class fee as specified in the schedule of fees shall also be payable for each further class. If the fee is not paid in time, the request for conversion shall be deemed not to have been filed.
(2) The Patent Office shall examine whether the request for conversion is admissible under Article 108(2) of the Community Trade Mark Regulation. If the request for conversion is inadmissible, it shall be refused.
(3) Where the request for conversion concerns a trade mark not yet registered as a Community trade mark, the request for conversion shall be treated as an application for the recordal of a trade mark in the Register of the Patent Office, with the proviso that the date of filing of the Community trade mark within the meaning of Article 27 of the Community Trade Mark Regulation or the priority date claimed in respect of a Community trade mark shall be substituted for the date of filing within the meaning of Section 33(1). If the priority of a trade mark recorded in the Register of the Patent Office is claimed under Article 34 of the Community Trade Mark Regulation, that priority shall be substituted for the date in accordance with the sentence 1.
(4) Where the request for conversion concerns a trade mark already registered as a Community trade mark, the Patent Office shall directly record the trade mark in the Register under Section 41 without further examination while maintaining its original priority. Opposition to the registration shall not be admitted.
(5) In other respects, the provisions of this Law concerning the application for trade marks shall apply to requests for conversion.
125e. Community Trade Mark Courts; Community Trade
Mark Litigation
(1) For all actions for which the Community trade mark courts have jurisdiction within the meaning of Article 91(1) of the Community Trade Mark Regulation (Community trade mark litigation), the Provincial Courts [Landgerichte] shall have exclusive jurisdiction as Community trade mark courts of first instance without regard to the value in dispute.
(2) The Community trade mark court of second instance shall be the Higher Provincial Court [Oberlandesgericht] within whose jurisdiction the Community trade mark court of first instance is located.
(3) The governments of the Länder shall have the power to allot by statutory ordinance Community trade mark litigation for the areas of several Community trade mark courts to one such court. The governments of the Länder may transfer such power by statutory ordinance to the Ministries of Justice of the Länder.
(4) The Länder may transfer by agreement, in whole or in part, the functions incumbent upon the Community trade mark courts of one Land to the competent Community trade mark court of another Land.
(5) Section 140(3) to (5) shall apply mutatis mutandis to proceedings before the Community trade mark courts.
125f. Informing the Commission
The Federal Ministry of Justice shall notify the Commission of the European Communities of the Community trade mark courts of first and second instance and of any change in the number, names or territorial jurisdiction of the Community trade mark courts of first and second instance.
125g. Territorial Jurisdiction of the Community
Trade Mark Courts
Where German Community trade mark courts have international jurisdiction under Article 93 of the Community Trade Mark Regulation, such provisions concerning territorial jurisdiction shall apply mutatis mutandis as would be applicable to trade mark applications filed with the Patent Office or to trade mark recorded in the Register of the Patent Office. Where jurisdiction cannot be established under the above provisions, the court having territorial jurisdiction shall be the court where the plaintiff has his domicile.
125h. Insolvency Proceedings
(1) Where it is known to the insolvency court that a filed or registered Community trade mark is among the insolvency assets, it shall directly request the Office for Harmonization in the Internal Market (Trade Marks and Designs) to record in the Community Trade Mark Register or, in the case of an application, in the files of the application
1. the opening of proceedings and, if not already contained therein, a restraint on disposal;
2. the release or realization of the Community trade mark or of the Community trade mark application;
3. the dismissal of proceedings; and
4. the annulment of proceedings, but in the case of control of the debtor, only after the control has been completed, and of any restraint on disposal.
(2) Recordal in the Community Trade Mark Register or in the files of the application may also be requested by the receiver. In the case of self-administration (Section 270 of the Insolvency Code), the administrator shall act in place of the receiver.
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