Trademark watch: the deadlines and duties of an owner

Registration starts several independent deadlines at once: the opposition period against younger, colliding trademarks, the grace period for use, the term of protection up to renewal, and the revocation period for continued non-use. No authority issues a warning on its own when such a younger trademark is filed.

The calendar below sets out each of these deadlines with its starting point, its duration and its consequence if missed. The first point does not concern the trademark's own registration, but every newly published registration of a younger, colliding sign. The remaining three points run from the owner's own trademark.

• Opposition period against a younger, colliding trademark: starts with publication of the younger trademark's registration in the Markenblatt, runs three months, after which opposition is excluded and only the more expensive invalidity request based on older rights remains available. That route closes over time as well: anyone who knowingly tolerates use of the younger mark for five consecutive years can no longer attack the registration under section 51(2) of the Trade Mark Act, unless the younger application was filed in bad faith.
• Grace period for use of the owner's own trademark: starts once opposition against it is no longer possible, or, where opposition was filed, once the opposition decision becomes final or is withdrawn, runs five years, after which claims under the trademark are excluded where use is lacking.
• Renewal of the term of protection: the term runs ten years from the filing date, the renewal request should be filed within six months before expiry, it can still be made within a six-month grace period afterward against a late fee, without renewal the registration is cancelled with effect from expiry.
• Revocation for non-use: starts with the expiry of the opposition period against the owner's own trademark, runs five uninterrupted years without genuine use, after which the registration can be declared revoked and cancelled on request, and for partial non-use only for the affected part.

The three-month opposition period follows from Section 42(1) of the German Trademark Act read together with Section 41(2). The subsequent invalidity request under Section 51 costs, according to the fee schedule of the German Patent and Trade Mark Office, 400 euros, fee number 333 300; the opposition itself costs 250 euros, fee number 331 600, plus 50 euros for each further opposing sign, fee number 331 610.

The five-year grace period for use is set out in Section 26(5), the legal consequence where use is lacking in Section 25(1), and the revocation provision, including the possibility of a merely partial cancellation, in Section 49 of the German Trademark Act. The revocation proceedings themselves cost, according to the fee schedule of the German Patent and Trade Mark Office, 100 euros, fee number 333 400, and, where the owner contests the request and the applicant pursues it further, an additional 300 euros, fee number 333 450.

The rules on the term of protection, the filing period for the renewal request, the grace period afterward and the cancellation where renewal does not take place are set out in Section 47 of the German Trademark Act. The late fee amounts, according to the fee schedule of the German Patent and Trade Mark Office, to 50 euros, fee number 332 101, the base fee to 750 euros for up to three classes, fee number 332 100. The Office notifies the owner of the expiry of the term of protection at least six months in advance as a matter of law, in practice eight months in advance, but accepts no liability for a notification that fails to arrive.

The German Patent and Trade Mark Office, according to its own statement, does not examine, in any new application, whether older trademark or business-designation rights held by third parties stand in the way of registration; opposition or invalidity proceedings based on older rights can still lead to cancellation of the younger trademark later. For the owner of an older trademark, this means that when a younger, colliding trademark is filed and registered, no official notice is sent to that owner. The owner learns of the collision only by watching the Markenblatt personally or having it watched. The European Union Intellectual Property Office states that it proceeds the same way and does not examine older rights of its own motion.

Newly registered German trademarks appear in the electronic Markenblatt of the German Patent and Trade Mark Office, published weekly on the basis of the Patent, Trademark and Design Act. This publication is also what starts the three-month opposition period. At Union level, the European Union Intellectual Property Office publishes the EU Trade Marks Bulletin, which according to its own statement is available for download daily in the advanced search section. Unlike the German registration, the opposition period for an EU trademark already begins with publication of the application in the Bulletin, not with registration, also lasts three months, and is followed by a subsequent two-month cooling-off period. For trademarks registered internationally under the Madrid System, the World Intellectual Property Organization publishes the Gazette of International Marks weekly, with data on new registrations, renewals, subsequent designations and other modifications.

The obligation to use follows from Section 26(1) of the German Trademark Act: the trademark must have been put to genuine use by the owner in Germany for the registered goods or services, unless proper reasons for non-use exist. This obligation becomes practically relevant only once the five-year grace period has expired. Where the trademark is asserted in a dispute and the other side raises the objection of non-use, the owner must, under Section 25(2), prove use within the preceding five years or set out proper reasons. If that proof does not succeed, claims under the trademark are excluded under Section 25(1), independent of any separate revocation proceedings before the Office.

Several official and jointly operated registers are available for the owner's own monitoring of new applications and registrations, most of them expressly free of charge.

• DPMAregister of the German Patent and Trade Mark Office: covers filed, registered and refused German trademarks, as well as EU trademarks and international registrations with protection extended to Germany, without the Office standing for their accuracy or completeness, and, according to its own statement, offers no similarity search in the legal sense, only a truncation search at the level of the sign itself.
• TMview, jointly operated by the EUIPO, the WIPO and national offices: according to the EUIPO, usable free of charge, covering applications and registrations from numerous offices inside and outside the European Union.
• eSearch plus at the EUIPO: brings together trademarks, designs, owners, representatives and bulletins.
• Madrid Monitor from the WIPO: a free public service for ongoing searches, while the complete historical Madrid backfile is available only for a fee. Its announced successor, Find and Monitor, in the WIPO's eMadrid portal, is to replace Madrid Monitor once its functionality has been fully taken over; for now both run in parallel.

The difference to a watch service lies in the degree of automation. The registers named above must be queried independently and repeatedly, while an automated alert system continuously compares new publications against a stored set of records and actively reports a match. One official example of such an alert system is the WIPO Madrid Electronic Alert: according to the WIPO, it sends a free email notification on any day on which a change to a watched international registration is recorded in the register.

• Checking a name before filing: Trademark search before filing
• Procedure, classes and fees of a filing: Filing a German trademark
• Continuous monitoring of IP rights as a service: Patentschutzradar