Cancellation actions: why not file them at the DPMA?
As of 01 May 2020 the last changes to the German Trade Mark Act, introduced by the Trade Mark Law Modernisation Act (MaMoG) 2019, came into force. From 01 May 2020 the German Trade Mark Act allows for administrative cancellation proceedings based on non-use and relative grounds of refusal. Before this date, the German Trade Mark Act only provided for cancellation proceedings based on absolute grounds of refusal to be brought before the German Patent and Trade Mark Office (DPMA). Revocation proceedings for lack of non-use, on the other hand, could be filed before the DPMA, but required the filing of a court action if the other side objected to the revocation within a two month deadline. Also for cancellation proceedings based on relative grounds of refusal, a court action was required.
Now parties have the choice of whether they want to file a court action or take advantage of this new option. Depending on the circumstances, there may be good reasons for one or the other. Something that might be of interest to most, however, is that cancellation proceedings before the DPMA trigger a substantially lower fee than court proceedings. Furthermore, the DPMA usually orders each party to bear their own costs, meaning that the losing party will not be subject to reimbursement claims.
Yet, it remains to be seen if and by how many this option of cancellation proceedings before the DPMA will be utilised going forward. In particular, it will be interesting to see how long proceedings will take on average and if there will be any recognisable decision-making trends. Watch this space for further updates on this.
MaMoG aims to implement EU Trade Mark Directive 2015/2436 of 16 December 2015 and, in fact, Germany is one of the last countries for the implemented changes to come into force. However, Germany is not the last country: France has also just recently introduced such administrative cancellation and revocation proceedings (effective 01 April 2020). Now there are only six EU member states missing: Italy, Spain, Slovenia, Latvia and Malta have only partially implemented the Directive so far and there is the intention to introduce administrative cancellation and revocation proceedings before 14 January 2023. Romania has not yet implemented the Directive at all, and timing of the legislative process seems to have been affected by the current global pandemic, so it remains to be seen when they will adopt the new laws.