WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IPINII/DEU/T/l 
10 October 1996 
(96-4145) 
Original: English/ 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
Germany 
The present document reproduces I the Law on the Protection of Trademarks and Other Signs 
(Trademark Law) of 25 October 1994, as notified by Germany under Article 63.2 of the Agreement 
(see document IP/N/1/DEU/1/Rev.1). 
Germany has notified this Law as being relevant to the areas of trademarks and geographical 
indications. 
Conseil des aspects des droits de propriete 
inteUectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES 
A LA PROPRIETE INTELLECTUELLE NOTIFIEES 
AU TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
Allemagne 
Le present document contient le textel de la Loi du 25 octobre 1994 sur la protection des marques 
de fabrique ou de commerce et autres signes (Loi sur les marques de fabrique ou de commerce) notifiee 
par l'Allemagne au titre de l'article 63:2 de l'Accord (voir le document IP/N/lIDEU/lIRev.1). 
L' Allemagne a notifie cette loi comme etant pertinente en ce qui conceme les marques de fabrique 
ou de commerce et les indications geographiques. 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL pARRAFO 2 DEL ARTICULO 63 DEL ACUERDO 
Alemania 
El presente documento reproduce I la Ley de Protecci6n de las Marcas de Pabrica 0 de Comercio 
y Ptros Signos (Ley de Marcas) de 25 de octubre de 1994, notificada por Alemania en virtud de 10 
dispuesto en el parrafo 2 del articulo 63 del Acuerdo (vease el documento IP/N/lIDEU/lIRev.1). 
Segun la notificaci6n de Alemania, esta Ley es pertinente alas marcas de fabrica 0 de comercio 
y alas indicaciones geograficas. 
IIn English only/anglais seulement/ingles solamente. lP/NI liD EU IT 11 
Page 2 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -DECEMBER 1995 
(This t,'x/ r('places ,he olle prl!\'iOllJly p"hlish£'c/ullc/a /h£' .Wn/I! cod,' (/ltn/h(',.., 
GERMANY INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
La'w on the Reform of Trade Mark La,v and on the Incorporation 
of the First Council Directive of December 21, 1988, to Approximate the Laws of the 
Member States Relating to Trade Marks (89/10-l/EEC) 
(Trade ;\lark Reform Law) (of October 25. 199~)* 
Law on the Protection of Trade Marks and Other Signs (Trade Mark La,v) 
Pan I: 
Pan 2: TABLE OF CONTENTS 
Scope 
Protected Trade !'.1arks and Other Signs ..... . 
Application of Other Provisions ........... . 
Prerequisites. Scope and Limits of Protection of 
Trade ~1arks and Commercial Designations: 
Transfer and License S,'uioll 
Chapter I: Trade Marks :tnd Commercial Designations: 
Priority and Seniority 
Signs Capable of Being Protected as Trade 
f\1arks ................................. . 
Accrual of Trade Mark Protection .......... -l 
Commercial Designations ................. 5 
Priority and Seniority . . . . . . . . . . . . . . . . . . . . . 6 
Chapter 2: Prerequisites for the Protection of Trade Marks 
by Registration 
Proprietorship ........................... 7 
Absolute Grounds for Refusal .............. 8 
Filed or Registered Trade Marks as Relative 
Grounds for Refusal ...................... 9 
Well-Known Trade Marks. . . . ... . . . . . . . .. . 10 
Trade Mark Registered in the Name of an Agent 11 
Trade Mark Acquired by Use and Commercial 
Designations Having Seniority ............. 12 
Other Earlier Rights ...................... 13 
Chapter 3: Scope of Protection: Infringements of Rights 
Exclusive Right of the Proprietor of a Trade 
Mark: Injunctive Relief: Damages .......... 14 
Exclusive Right of the Proprietor of a Commer-
cial Designation: Injunctive Relief: Damages . 15 
Reproduction of a Registered Trade Mark in 
Reference Works ........................ 16 
,.. Gl'I'mwl title: Gesetz zur Reform des Markenrechts 
und zur Umsetzung der Ersten Richtlinie X9/104/EWG des 
Rates vom 21. Dezember 1988 sur Anl!leichunl! der Rechtsvor­
schriften der Mitgliedstaaten uber -die M~rken (Marken­
rechtsreformgesetz ). 
ElIlry il1lo force: January I. 1995. 
SO/lrce: Blmdes~esel:hlatt. No. 7~ of October 28. 1994. 
NOfe: Enl.!lish t'ranslation communicated bv the German 
authorities. - . 
GERMANY -Text 3-001. page 001 INDUSTRIAL PROPERTY 
AND COPYRIGHT -DECEMBER 1995 
Claims Against Agents or Representatives .,. 
Claim lO Destruction .................... . 
Claim to Information .................... . 
Chapter 4: Restrictions (0 Protection 
Chapter 5: 
Part 3: 
Chapter 1: 
Chapter 2: 
Chapter 3: 
Chapter 4: 
GERMANY -Text 3-00 1. page 002 Limitation ............................. . 
Forfeiture .............................. . 
Exclusion of Claims Due to Legal Validity of 
Registration of a Later Trade Mark ........ . 
Use of Names and Descriptive Indications: 
Trade With Spare Parts .................. . 
Exhaustion ............................. . 
Exclusion of Claims Due lO Non-use ....... . 
Use of a Trade Mark ..................... . 
Trade Marks as Objects of Property 
Transfer ............................... . 
Presumption of the Proprietorship of a Right: 
Service on the Proprietor ................. . 
Rights in rem; Levy of Execution; Bankruptcy 
Proceedings ............................ . 
Licensing ............................. ,. 
Trade Mark Applications ................. . 
Proceedings in Trade Mark Mallers 
Registration Procedure 
Requirements of the Application .......... . 
Dale of Filing; Right to Registration ....... . 
Foreign Priority ......................... . 
Exhibition Priority ...................... . 
Examination of the Application Requirements 
Examination as lO Absolute Grounds for Refusal 
Accelerated Examination ................. . 
Withdrawal. Limitation and Correction of the 
Application ............................ . 
Division of the Application ............... . 
Registration ............................ . 
Opposition ............................. . 
Objection Due to Non-Use: Decision on the 
Opposition ............................. . 
Action for the Grant of Registration ........ . 
Correction: Division: Period of Protection and 
Renewal 
Correction of the Register and Publications .. 
Division of the Registration .............. . 
Period of Protection and Renewal .......... . 
Surrender. Revocation and Nullity; Cancella­
tion Procedure 
Surrender .............................. . 
Revocation ............................. . 
Nullity Due to Absolute Grounds for Refusal . 
Nullity Due to Earlier Rights ............. . 
Effects of Cancellation on Grounds of Revoca-
tion or Nullity .......................... . 
Cancellation by the Patent Office on Grounds of 
Revocation ............................. . 
Cancellation Procedure Before the Patent Of-
fice on Absolute Grounds for Refusal ...... . 
Cancellation Proceedings Before Regular Courts 
General Provisions for Procedures Before the 
Patent Office 
Competence ............................ . 
Exclusion and Challenge ................. . 
Expert Opinions ........................ . 
Investigation of the Facts: Right to Be Heard . 
Examination of Facts: Hearing; Minutes ..... JP 1Nl 1 ID EU/T 11 
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LA WS AND TREATIES 
DE IP/N/l/DED/T/1 
Page 4 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -DECEMBER 1995 
Decisions: Information on the Right (0 Appeal 61 
Inspection of Files: Inspection of the Register 62 
Costs of the Proceedings .................. 63 
Objection (Erillnerllng] ................... 64 
Power to Issue Legal Ordinances ........... 65 
Chapter 5 Proceedings Before the Patent Court 
Appeal ................................. 66 
Boards of Appeal: Public Oral Proceedings .. 67 
Intervention of the President of the Patent Of-
fice in Appeal Proceedings ................ 68 
Hearings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 69 
Decision in Respect of Appeals ............ 70 
Costs of Appeal Proceedings " . . . . . . . . . . . . . i I 
Exclusion and Challenge .................. n 
Investigation of Facts: Preparation of the Hearing 73 
Taking of Evidence ...................... 74 
Summons ............................ '" 75 
Course of the Hearing .................... 76 
Minutes ................................ 77 
Consideration of Evidence: Right to be Heard 
Before the Court ......................... 78 
Pronouncement: Service of the Decisions: 
Statement of Grounds. . . . . . . . . . . . . . . . . . . . . 79 
Corrections ............................. 80 
Representation: Power of Attorney. . . . . . . . . . 81 
Application of Further Provisions: Appeals 
from Decisions: Insp~ction of Files ......... 82 
Chapter 6: Proceedings Before the Federal Court of Justice 
I BlIlldesgerichrshoJl 
Leave to Appeal on Points of Law .......... 83 
Right to Appeal: Basis for an Appeal. . . . . . . . 84 
Formal Requirements ..................... 85 
Examination of Admissibility .............. 86 
Several Parties .......................... 87 
Application of Other Provisions ............ 88 
Decision on Appeals on a Point of Law ...... 89 
Decision on Costs ........................ 90 
Chapter 7: Common Provisions 
Part 4: 
Part 5: Reinstatement ........................... 91 
Duty [0 Tell the Truth .................... 92 
Official Language and Language in Court. . . . 93 
Service of Documents .................... 94 
Legal Assistance ..... . . . . . . . . . . . . . . . . . . . . 95 
Domestic Representative .................. 96 
Collective Marks 
Collective Marks ....................... . 
Proprietorship .......................... . 
Registrability of Indications of Geographical 
Origin as Collective Marks ............... . 
Restrictions on Protection; Use ............ . 
Right of Action: Damages ................ . 
Regulations Governing Use of the Mark .... . 
Examination of the Application ........... . 
Amendments of the Regulations Governing Use 
of the Mark ............................ . 
Revocation ............................. . 
Nullity Bec:1use of Abolute Grounds for Re-
fusal .................................. . 
Protection of Marks Under the Madrid Agree­
ment Concerning the International Registration 
of Marks and the Protocol Relating to the 
Madrid Agreement 97 
98 
99 
100 
101 
102 
103 
104 
105 
106 INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
DE GERMANY -Tex.t 3-001. page 003 INDUSTRIAL PROPERTY 
AND COPYRIGHT -DECEMBER 1995 
Chapter I: Protection of Marks Under the Madrid Agree­
ment 
Chapter 2: 
Pan 6: 
Chapter I: 
Chapter 2: 
Chapter 3: 
Part 7: 
GERMANY -Text 3-001. page 004 Application of the Provisions of this Law ... . 
Application for International Registration ... . 
Fees· .................................. . 
Recordal in the Register .................. . 
Subsequent Territorial Extension .......... . 
Effect of International Registration ........ . 
Examination as to Absolute Grounds for Refusal 
Opposition ............................. . 
Revocation of Protection Cl posft'l'iori ...... . 
Opposition and Request for Cancellation on the 
Basis of International Registrations ........ . 
Exclusion of Claims for Non-Use .......... . 
Consent to the Transfer of an International 
Registration ............................ . 
Protection of Marks Under the Protocol Relat­
ing to the Madrid Agreement 
Application of the Provisions of this Law ... . 
Application for International Registration ... . 
Fees .................................. . 
Entrv in the Files: Recordal in the Register .. . 
Sub;equent Territorial Extension ... ~ ...... . 
Analogous Application of the Provisions Con­
cerning the Effect of International Registrations 
of Ma;ks Under [he Madrid A!Heeme~t ..... . 
Transformation of an International Registration 
Indications of Geographical Origin 
Protection of Indications of Geographical 
Origin 
Names. Indications or Sil!ns Protected as Indi-
cations of Geographical Origin ............ . 
Scope of Protection ..................... . 
Injunctive Relief: Claim for Damages ...... . 
Limitation ............................. . 
Protection of Geographical Indications and 
Designations of Origin Under Regulation 
(EEC) No. 2081/92 
Application for Registration of a Geographical 
Indication or Designation of Origin ........ . 
Request to Amend the Specification ........ . 
Objections ............................. . 
Responsibilities in the Patent Office: Appeals 
Supervision ............................ . 
Injuctive Relief: Claim for Damages ....... . 
Limitation ............................. . 
Authorization to Issue Legal Ordinances 
Detailed Provisions for the Protection of Indi­
vidual Indications of Geographical Origin .,. 
Other Provisions for the Procedure Concerning 
Applications. Requests and Oppositions Under 
Regulation (EEC) No. 2081/92 ............ . 
Provisions Implementing Regulation (EEC) 
No. 2081/92 ............................ . 
Procedure in Litigation Concerning Signs 
Litigation Concerning Signs .............. . 
Venue for Claims Under this Law and Under the 
Law Against Unfair Competition .......... . 
Reduction of the Value in Dispute ......... . IP 1Nl liD EU IT 11 
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142 INDUSTRIAL PROPERTY 
LAWS AND TREATIES 
DE IP/N 11 ID EU IT /1 
Page 6 
INDUSTRIAL PROPERTY INDUSTRIAL PROPERTY 
LA WS AND TREATIES AND COPYRIGHT -APRIL 1996 
(Replacement sheet -pre\'ious publication DECEMBER 1995) 
Part 8: Provisions Governing Offenses Punishable 
With Imprisonment or Fines: Seizure on Import 
or Export 
Chapter I: Provisions Governing Offenses Punishable 
With Imprisonment or Fines 
Punishable Infringement of Signs. . . . . . . . . . . 143 
Punishable Use of Indications of Geographical 
Origin ............................... " . 144 
Provisions Governing Fines. . . . . . . . . . . . . . . . 145 
Chapter 2: Seizure of Goods on Import or Export 
Part 9: 
PART 1 
SCOPE Seizure in Case of Infringement of Rights to a 
Sign ................................... 146 
Confiscation: Opposition: Release of Goods 
Seized ........ '" ............ " ... ... .. . 147 
Competence: Remedies ................... 148 
Damages in the Case of Unjustified Seizure .. 149 
Seizure Under Regulation I EEC) No. 3842/86 150 
Seizure in the Case of Unlawful Marking With 
Indications of Geographical Origin ......... 151 
Transitional Provisions 
Application of this Law .................. . 152 
Restrictions on the Assertion of Claims for 
Infringement ............................ 153 
Rights in rem: Enforcement: Proceedings in 
Bankruptcy ............................. 154 
Licensing ....•.......................... 155 
Examination of Trade Mark Applications as to 
Absolute Grounds for Refusal. . . . . . . . . . . . . . 156 
Publication and Registration ............... 157 
Opposition Proceedings ......... '" .. ..... 158 
Division of an Application ................ 159 
Period of Protection and Renewal . . . . . . . . . . . 160 
Cancellation of a Registered Trade Mark on the 
Grounds of Revocation ................... 161 
Cancellation of a Registered Trade Mark 
Because of Absolute Grounds for Refusal .... 162 
Cancellation of a Registered Trade Mark Due to 
Earlier Rights ........................... 163 
Objection and Direct Appeal ............... 164 
Protected Trade Marks and Other Signs PART 2 
PREREQUISITES, SCOPE AND LIMITS OF 
PROTECTION OF TRADE MARKS AND 
COMMERCIAL DESIGNATIONS; 
TRANSFER AND LICENSE 
Sec. 1. The following shall be protected under this 
Law: Chapter 1 
1. trade marks, 
2. commercial designations, 
3. indications of geographical origin. 
Application of Other Provisions 
Sec. 2. The protection of trade marks, commercial 
designations and indications of geographical origin under 
this Law shall not exclude the application of other provi­
sions for the protection of these signs. 
DE Trade Marks and Commercial Designations; 
Priority and Seniority 
Signs Capable of Being Protected as Trade Marks 
Sec. 3.-(1) Any signs, particularly words, including 
personal names. designs, letters, numerals. sound marks, 
three-dimensional configurations. including the shape of 
goods or their wrapping as well as other packaging. in­
cluding colors and combinations of colors. which are ca-
GERMANY -Text 3-001, page 005 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -previous publication DECEMBER 1995) 
pable of distinguishing the goods or services of one 
undertaking from those of other undertakings may be 
protected as trade marks. 
(2) Signs which consist exclusively of a shape 
1. which results from the nature of the goods them­
selves; 
2. which is necessary to obtain a technical result: or 
3. which gives substantial value to the goods shall not 
be capable of being protected as trade marks. 
Accrual of Trade Mark Protection 
Sec. 4. Trade mark protection shall accrue 
1. by registration of a sign as a trade mark in the Reg­
ister kept at the Patent Office; 
2. through the use of a sign in the course of trade in­
sofar as the sign has acquired a secondary meaning 
as a trade mark within the affected trade circles; or, 
3. by notoriety as a trade mark within the meaning of 
Article 6bis of the Paris Convention for the Protec­
tion of Industrial Property (Paris Convention). 
Commercial Designations 
Sec. 5.-(1) Company symbols and titles of works shall 
be protected as commercial designations. 
(2) Company symbols are signs used in the course of 
trade as names, finn names or special designations of 
business establishments or enterprises. Business symbols 
and other signs intended to distinguish one business from 
another which are regarded within the affected trade cir­
cles as the distinctive signs of a business establishment. 
shall be equivalent to the special designation of a busi­
ness establishment. 
(3) Titles of works are the names or special designa­
tions of printed publications, cinematographic works, 
musical works, dramatic works or other comparable 
works. 
Priority and Seniority 
Sec. 6.-(1) Where, in the case of collision of rights 
within the meaning of Sections 4, 5 and 13, the seniority 
of rights is relevant under this Law for determining the 
priority of such rights, seniority shall be determined pur­
suant to subsections (2) and (3). 
(2) For filed or registered trade marks the date of fil­
ing (Section 33(1» shall be relevant for determining se­
niority or, where priority has been claimed pursuant to 
Section 34 or Section 35, the date of priority. 
(3) For rights witnin the meaning of Section 4, Nos. 2 
and 3. and Sections 5 and 13. the date of the acquisition 
of such rights shall be relevant for determining seniority. 
GERMANY -Text 3-001. Da2e 006 IP 1Nl 110 EU IT 11 
Page 7 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
(4) Rights having the same seniority pursuant to sub­
sections (2) and (3) due to the same date shall rank equal­
ly and shall not establish any rights in respect of each 
other. 
Chapter 2 
Prerequisites for the Protection of 
Trade Marks by Registration 
Proprietorship 
Sec. 7. The following may be proprietors of registered 
and filed trade marks: 
I. natural persons: 
2. legal persons: or 
3. partnerships having capacity to acquire rights and 
incur liabilities. 
Absolute Grounds for Refusal 
Sec. 8.-(1) Signs that are capable of being protected 
as a trade mark within the meaning of Section 3, but not 
capable of being represented graphically, shall not be 
registered. 
(2) The following shall not be registered: 
1. trade marks which are devoid of any distinctive 
character with respect to the goods or services; 
2. trade marks which consist exclusively of signs or 
indications which may serve, in trade, to designate 
the kind, quality, quantity. intended purpose. val­
ue, geographical origin. the time of production of 
the goods or of the rendering of the services, or to 
designate other characteristics of the goods or ser­
vices; 
3. trade marks which consist exclusively of signs or 
indications which have become customary in the 
current language or in the bona fide and estab­
lished practices of the trade for designating goods 
or services; 
4. trade marks which are of such a nature as to de­
ceive the public, in particular, as to the nature. 
quality or geographical origin of the goods or ser­
vices; 
5. trade marks which are contrary to public policy or 
to accepted principles of morality; 
6. trade marks which include armorial bearings, flags 
or other emblems of State, or armorial bearings of 
a locality, an association of communities or an as­
sociation of other communal entities within the 
country; 
7. trade marks which include official signs and hall­
marks, indicating control and warranty, which. ac­
cording to a notice published by the Federal 
Ministry of Justice in the Federal Gazette [Bundes-
DE IP/N/lIDEU/TIl 
Page 8 
INDUST~/AL PROPERTY 
AND COPYRIGfff -DECEMBER 1995 
::eset:hlarrJ. cannm be validlv rel!istered as trade 
marks: . -
R. trade marks which include armorial bearinl!s. tlal!s 
or mher signs. seals. or designations. of -intern;­
tional intergovernmental organizations which. ac­
cording to a nmice published' by the Federal 
Ministry of Justice in the Federal Gazette. cannot 
be validly registered as trade marks: or. 
C). trade marks the use of which can obviously be pro­
hibited pursuant to other provisions In the public 
interest. 
13) Subsection (2). ~os. I. 2 :lOd 3. shall not apply if 
the trade mark has. before the date of the deci~ion on rel!­
istration and following the use which has been made of it. 
c:stabl ished itself in affected trade Circles as the distin­
guishing sign tor the goods or services for which it has 
been filed. 
(~) Subsection (2). Nos. 6. 7 and 8. shall also apply if 
the trade mark includes the imitation of a sign specified 
therein. Subsection (2), ~os. 6. i and X. shall not apply 
where the appl icant is authorized to include one of the 
signs specified therein in his trade mark even if it mav be 
~onfused with another of the signs specified therein. fur­
thermore. subsection (~). :--':0. 7. shall not apply where the 
goods or services for which the application for registra­
tion of the trade mark has been filed are neither identical 
with nor similar "to those for which the sil!n or hallmark. 
indicating control or warrantv. has been i~troduced. Fur­
thermore. subsection (2). ~{) __ X. shall nm apply where the 
trade mark filed ie; not of such a nature as to falselv SUI!­
gest to the public that a connection exists betwe~n the 
trade mark and the international intergovernmental orga­
nization. 
Filed or Registered Trade Marks 
115 RelC1li\'e Grounds for Refusal 
Sec. 9.-( 1) Registration of a trade mark may be can­
celled 
1. if it is identical with an e:ulier filed or registered 
trade mark. and the goods or services for which the 
trade mark is registered are identical with the 
goods or services for which the earlier trade mark 
is filed or is registered. 
., if because of its identity with. or similarity to. the 
earlier filed or rel!istered trade mark. and the iden­
tity or similarity 'Or the goods or services covered 
by the trade marks there exists a likelihood of con­
fusion on the pan of the public. which includes the 
likelihood of association with the other trade 
marks. or 
3. if it is identical with or similar to an earlier filed or 
registered trade mark. and has been registered for 
goods or services which are not similar to those for 
which the earlier trade mark is filed or rel!istered. 
where the earlier trade mark has a reputati~n in the INDUSTRIAL PROPERTY 
LAWS AND TREATIES 
Federal Republic of Gc!rmany and where the use of 
the registered trade mark without due cause would 
take unfair advantage of. or be detrimental to. the 
distinctive character or the repute of such trade 
mark. 
(2) Applications for trade marks constitute grounds 
for refusal within the meaning of subsection (1) only if 
they are registered. 
Well-Knmnz Trade :Harks 
Sec. 10.-( I) A trade mark shall not be registered if it 
is identical with or similar to an earlier trade mark well 
known in the Federal Republic of Gc!nnany within the 
meanm2 of Article 6bis of the Paris Convention and if the 
additio~al requirements under Section 9( 1), Nos. 1.2 or 3. 
are met. 
(2) Subsection ( 1) shall not apply if the applicant has 
been authorized to file the Jpplication by the proprietor 
of the well-known trade mark. 
Trade Mark Registered in the Name of an Agent 
Sec. 11. Where a trade mark is registered in the name 
of the agent or representative of a person who is the pro­
prietor of the trade mark. without the proprietor's autho­
rization. the registration of the trade mark may be 
cancelled. 
Trade Mark Acquired by Use and Comm~rcial 
Designations Having Seniority 
Sec. 12. The registration of a trade mark may be can­
celled where anoth"er person. prior to the date relevtlnl for 
the senioritv of the rel!istered trade mark. has acquired 
rights to a trade mark -within the meaning of Section 4. 
No. 2. or to a commercial designation within the meaning 
of Section 5. and those rights confer on him the power to 
prohibit the use of the registered trade mark throughout 
the entire territory of the Federal Republic of Germany. 
Other Earlier Rights 
Sec. 13.-( I) The registration of a trade mark may be 
cancelled where anothe-r person. prior to the date relevant 
for the seniority of the registered trade mark. has ac­
quired a right other than the rights specified in Sections 9 
to 12. and that right confers on him the power to prohibit 
the use of the registered trade mark throughout the entire 
territory of the Fede'ra1 Republic of Germany. 
(2) The other rights within the meaning of subsec­
tion ( I) include: 
t. rights in a name. INDUSTRIAL PROPERTY 
AVD COPYRIGHT-DECEMBER 1995 
.... a right of personal portrayal. 
3. copynghts. 
~. names of plant varieties. 
5. indicatlons of geographical origin. 
6. other industrial property rights. 
Chapter 3 
Scope of Protection: Infringements of Rights 
Exc:lusi\"t! Ri~h( of the Prnprrelor Of {/ 
rrw.ie IHark: IlIjuncflrt! Relief: Dl.1mc.Jl!t's 
Sec. 1-1.-( 1) The acquisition of trade mark protection 
pursuant to Section 4 shall confer on the propnetor of the 
[raal! mark ex.c1usive rights therein. 
12) Third parties shall be prohibited from using in the 
course of trade. without the consent of the proprietor of 
the trade mark. 
I. any sign which is identtcal with the trade mark in 
relation to goods or serv\ces which are identical 
with those for which the trade mark is protected: 
, any sign where. because of its identllY with. or 
similarity to. the trade mark and the identity or 
:)Imllanty of the goods M sl!rvices covered by the 
trade mark·and the sign. there exists a likelihood of 
confusion:-on the part of the public. including the 
likelihood of association between the sign and the 
trade mark: or. 
3. any sign which is identical with or similar to the 
trade mark in relation lO goods or services which 
are not similar to those for which the trade mark is 
protected: where the trade mark has a reputation in 
the Federal RepUblic of Germany and where the 
use of that sign without due cause takes unfair ad­
vantage of. or is detrimenlal to. the distinctive 
character or the repute at such trade mark. 
(3) If the prerequisites specified in subsection (2) are 
met. the following, i~ particular, shall be prohibited: 
1. affixing the sign to goods or to their packaging or 
wrapping; 
2. offering the goods. putting them on the market or 
stocking them for these purposes under that sign; 
3. offering or supplying services under that sign: 
4. importing or exporting the goods under that sign: 
5. using the sign on business papers or in advertising. 
(4) Without having the consent of the proprietor of the 
trade mark. third parties shall be prohibited in the course 
of trade from: 
I. affixing a sign which is identical with or similar to 
the trade mark to packaging or wrappings or to 
means of marking such as labels. tags. sewn-on 
labels or the like: 
., offering packaging. \vrappings or the means of 
marking under a sIgn which is identical with or IPINIl/DEU/TI1 
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INDUSTRIAL PROPERTY 
LAWS AND TREATIES 
similar to the trade mark. putting them on the mar­
ket or stocking them tor these purposes under that 
sign: or. 
3. i~porting or exporting packaging. wrappings or 
means of marking under a sign which is identical 
with or similar to the trade mark. 
if there is a risk that the packaging or wrappings are being 
used for the packaging or the wrapping of goods or ser­
vices. or (he means of marking for marking goods or ser­
vices. in respect of which. pursuant to subsections t 2) 
.1Od (3), third parties would be prohibited from using that 
'>Ign. 
(5) Any person who uses a sign in breach of subsec­
tions (2) to (4) may be sued by the proprietor of the trade 
mark to enjoin such use. 
(6) Any person who undertakes such infringing action 
intentionallv or negligentlv shall be liable for compensa­
tion to the proprietor-of the trade mark for damage suf­
fered therefrom. 
(7) \Vhere an employee or an authorized representa­
tive undertakes such infringing action in a business es­
tablishment. the proprietor ~f the business establishment 
may be sued by the proprietor at the trade mark to enjoin 
such use and. where the employee or authorized repre­
sentative has undertaken such action intentionally or neg­
ligently. compensation for damages may also be claimed 
from the proprietor of the business establishment. 
Exclusive Right of the Proprietor of a Commercial 
Designation: Injunctive Relief; Damages 
Sec. J 5 .-( 1) The acquisition of protection for a com­
mercial designation shall confer on its proprietor_an ex­
clusive right. 
{2) Third parties shall be prohibited from using in the 
course of trade. without authorization. the commercial 
designation or a similar sign in a manner capable of caus­
ing confusion with the protected designation. 
(3) Where the commercial designation has a reputa­
tionin this country. third parties shall also be prohibited 
from using the commercial designation or a similar sign 
in the course of trade if there is no risk of confusion with­
in the meaning of subsection (2). where the use of that 
sign without due cause takes ~nfair advantage of. or is 
detrimental to. the distinctive character or the repute of 
the commercial designation. 
(4) Any person who uses a commercial designation or 
a similar si2n in breach of subsections (2) or (3) may be 
sued by the-proprietor of the commercial designation to 
enjoin such use. 
(5) Any person who undertakes such infringing action 
intentionally or negligently shall be liable for compensa-IP/N/l/DEU/T/1 
Page 10 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL /996 
(Replacement shut -pre\';ous publication DECEMBER 1995) 
(ion to the proprietor of the commercial designation for 
damage suffered therefrom. 
(6) Section 14(7) shall apply mutatis mutandis. 
Reproduction of a Registered Trade Mark 
in Reference Works 
Sec. 16.-(1) If the reproduction of a registered trade 
mark in a dictionary, encyclopedia, or similar reference 
work gives the impression that it constitutes the generic 
name of the goods or services for which the trade mark is 
registered, the proprietor of the trade mark is entitled to 
demand of the publisher of the work that the reproduction 
of the trade mark be accompanied by an indication that it 
is a registered trade mark. 
(2) If the work has already been published. this claim 
shall be limited to incorporating 'the indication under sub­
section (1) into the next edition of the work. 
(3) Subsections (1) and (2) shall apply muratis mutan­
dis if the reference work is marketed in the form of an 
electronic database. or if access is granted to an electron­
ic database containing a reference work. 
Claims Agains( Agents or Representatives 
Sec. 17.-0') Where. in breach of Section 11, a trade 
mark has been filed or registered in the name of an agent 
or representative of the person who is the proprietor of 
that trade mark. without the proprietor's authorization. 
the latter shall be entitled to demand the assignment of 
the right conferred by the application or registration of 
the trade mark from the agent or representative. 
(2) Where. in breach of Section 11. a trade mark has 
been registered in the name of an agent or representative 
of the person who is the proprietor of the trade mark, the 
latter shall be entitled to prohibit the use of the trade 
mark within the meaning of Section 14 by the agent or 
representative if he has not authorized such use. If the 
agent or representative undertakes such infringing action 
intentionally or negligently, he shall be liable for com­
pensation to the proprietor of the trade mark for damage 
suffered therefrom. Section 14(7) shall apply mutatis mu­
tandis. 
Claim to Destruction 
Sec. 18.-(1) Where the cases referred to in Sec­
tions 14, 15 and 17 are applicable, the proprietor of a 
trade mark or a trade designation may require the de­
struction of the unlawfully marked products that are in 
the possession of the infringer or are in his property un­
less the infringing nature of the products can be removed 
in some other way and the destruction is disproportion­
ate, in the individual case, for the infringer or the propri­
etor. 
DE INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
(2) Subsection (1) shall also apply mutatis mutandis to 
devices that are the property of the infringer and are used 
or intended exclusively or almost exclusively for the un­
lawful marking of a product. 
(3) Further claims to destruction shall remain unaf­
fected. 
Claim to Information 
Sec. 19.-(1) Where the cases referred to in Sections 
14. 15 and 17 are applicable, the infringer may be re­
quired by the proprietor of a trade mark or commercial 
designation to give information as to the origin and distri· 
bution channels of the unlawfully marked product. with· 
out delay, unless this is disproportionate in the individual 
case. 
(2) The person required to give infonnation under 
subsection (1) shall give particulars of the name and ad­
dress of the manufacturer, the supplier and other prior 
owners of the product, of the trade customer or the princi­
pal, and also in respect of the quantity of products that 
have been manufactured, dispatched, received or or­
dered. 
(3) In those cases where infringement is obvious. the 
obligation to provide information may be imposed by an 
injunction in compliance with the Code of Civil Proce­
dure. 
(4) Such infonnation may only be used in criminal 
proceedings or in proceedings under the Law on Admin­
istrative Offenses (Gesetz uber Ordnungswidrigkeiten] 
against the person required to give infonnation, or 
against a dependent person under Section 52( 1) of the 
Code of Criminal Procedure. in respect of an act commit 
ted before the infonnation was given, with the consent 01 
the person required to give information. 
(5) Further claims to infonnation shall remain unaf­
fected. 
Chapter 4 
Restrictions to Protection 
Limitation 
Sec. 20.-(1) Claims for infringement of the rights re­
ferred to in Sections 14 to 19 shall come under the statute 
of limitations after three years from the time when the 
claimant obtains knowledge of the infringement and of 
the identity of the infringer, and irrespective of such 
knowledge, after 30 years from the infringement. 
(2) Section 852(2) of the Civil Code shall apply muta­
tis mutandis. 
GERMANY -Text 3-001, page 009 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL i996 
I Replacement sheet -pre\'ious publicarion DECEMBER /995) 
(3) If the infringer has obtained anything through the 
infringement at the expense of the claimant. the said in­
fringer shall be liable. even after expiration of the term of 
limitation. for the restitution in accordance with the pro­
visions on restitution of unjust enrichment. 
Forfeiture 
Sec. 21.-( 1) The proprietor of a trade mark or a com­
mercial designation shall not be entitled to prohibit the 
use of a later registered trade mark in respect of the goods 
and services for which it is registered where he has acqui­
esced. for a period of five successive years. in the use of 
this trade mark while being aware of such a use. unless 
the application for the later trade mark was filed in bad 
faith. 
(2) The proprietor of a trade mark or a commercial 
designation shall not be entitled to prohibit the use of a 
trade mark within the meaning of Section 4, No. 2 or 3, of 
a commercial designation or another later right within the 
meaning of Section 13 where he has acquiesced, for a 
period of five successive years. in the use of this right 
while being aware of such a use. unless. at the time of . 
acquiring that right. the proprietor of that right had acted 
in bad faith. 
(3) In the cases referred to in subsections (1) and (2). 
the proprietor of the later right shall not be entitled to 
prohibit the use of the earlier right. 
(4) Subsections (1) to (3) shall not affect the applica­
tion of general principles on the forfeiture of rights. 
Exclusion of Claims Due to Legal Validity of 
Registration of a Later Trade Mark 
Sec. 22.-( I) The proprietor of a trade mark or a com­
mercial designation shall not be entitled to prohibit the 
use of a later registered trade mark in respect of the goods 
and services for which it is registered, where a request for 
cancellation of the registration of the later trade mark has 
been rejected or should be rejected on the grounds 
I. that the earlier trade mark or earlier commercial 
designation has not yet acquired a reputation 
within the meaning of Section 9(1), No. 3, Sec­
tion 14(2). No. 3, or Section 15(3) on the date rele­
vant for the seniority of the registration of the later 
trade mark (Section 51 (3»; 
2. that the registration of the earlier trade mark could 
have been cancelled on the date of publication of 
the registration of the later trade mark due to 
revocation or absolute grounds for refusal (Sec­
tion 51(4». 
(2) Where the cases referred to in subsection (1) are 
applicable, the proprietor of a later registered trade mark 
GERMANY -Text 3-001, page 010 IPINIl/DED/TI 1 
Page 11 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
shall not be entitled to prohibit the use of an earlier trade 
mark or an earlier commercial designation. 
Use of Names and Descriptive indications; 
Trade With Spare Parts 
Sec. 23. The proprietor of a trade mark or commercial 
designation shall not be entitled to prohibit third parties 
from using in the course of trade: 
1. his name or address; 
2. signs which are identical with or similar to the 
trade mark or commercial designation as indica­
tions concerning characteristics or properties of 
the goods or services. in particular, the kind, qual­
ity, intended purpose, value, geographical origin or 
the time of production of the goods or of rendering 
of the services; or, 
3. the trade mark or commercial designation where it 
is necessary to indicate the intended purpose of a 
product or service, in particular as accessories or 
spare parts, 
provided such use is not contrary to accepted principles 
of morality. 
Exhaustion 
Sec. 24.-(1) The proprietor of a trade mark or a com­
mercial designation shall not be entitled to prohibit its 
use in relation to goods which have been put on the mar­
ket in the Federal Republic of Germany, in another 
Member State of the European Union or in another Con­
tracting State of the Convention concerning the European 
Economic Area under that trade mark or commercial des­
ignation by the proprietor or with his consent. 
(2) Subsection (1) shall not apply where there exist 
legitimate reasons for the proprietor of the trade mark or 
the commercial designation to oppose further commer­
cialization of the goods, especially where the condition 
of the goods is changed or impaired after they have been 
put on the market. 
Exclusion of Claims Due to Non-use 
Sec. 25.-(1) The proprietor of a registered trade mark 
shall not be entitled to assert any claims against third par­
ties within the meaning of Sections 14, 18 and 19, if. 
within a period of five y~ars preceding the assertion of 
the claims, the trade mark has not been put to use pursu­
ant to Section 26 in connection with the goods or services 
on which the grounds for those claims are based provided 
that the trade mark has, on that date, been registered for 
at least five years. 
(2) Where a plaintiff asserts claims on grounds of in­
fringement of a registered trade mark within the meaning 
of Sections 14, 18 and 19 by bringing an action. he shall, 
DE IPIN/lIDEU/TIl 
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INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement shut -pre\'iolls puhlication DECEMBER 1995) 
in response to an objection by the defendant. establish 
proof that the trade mark has been put to use pursuant to 
Section 26 within a period of five years before the bring­
ing of the action. for the goods or services on which the 
grounds for his claims are based. provided that the trade 
mark has. on that date. been registered at lea~t for five 
years. Where the period of five years of non-use ends af­
ter the bringing of the action. the plaintiff shall. in re­
sponse to an objection by the defendant. establish proof 
that the trade mark has been put to use pursuant to Sec­
tion 26 within a period of five years preceding the con­
clusion of the oral proceedings. For the decision. only 
those goods or services shall be taken into account for 
which proof of use has been established. 
Use of a Trade Mark 
Sec. 26.-(1) Insofar as the assertion of claims result­
ing from a registered trade mark or the maintenance of 
the registration depends on the use of the trade mark. the 
proprietor must have put the trade mark to genuine use in 
this country in connection with the goods and services in 
respect of which it is registered. unless there are proper 
reasons for non-use. 
(2) Use of the trade mark with the consent of the pro­
prietor shall b~ deemed to constitute use by the propri-
etor. : 
(3) Use of the trade mark in a form differing from the 
form in which it was registered shall also be deemed to 
constitute use of a registered trade mark. provided that 
the differing elements do not alter the distinctive charac­
ter of the trade mark. Sentence I shall also apply if the 
trade mark is also registered in the form in which it has 
been put to use. 
DE (4) Affixing of the trade mark to goods or to their 
packaging or wrapping in this country solely for export 
purposes shall also be deemed to constitue use of the 
trade mark in this country. 
(5) Where use within five years from the date of regis­
tration is required. the date of registration shall be re­
placed by the date of the conclusion of the opposition 
proceedings in the cases in which opposition to registra­
tion has been lodged. 
Chapter 5 
Trade Marks as Objects of Property 
Transfer 
Sec. 27.-(1) The right conferred by the registration. 
use or notoriety of a trade mark may be transferred or as-INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
signed to another person in respect of some or all of the 
goods or services for which the trade mark is protected. 
(2) Where the trade mark relates to a business' estab­
lishment or to a portion of a business establishment. the 
transfer or assignment of the business establishment or of 
that portion of the business establishment to which the 
trade mark relates shall include in the case of doubt the 
right accruing from the registration. use or notoriety of 
the trade mark. 
(3) On request of one of the parties the transfer of the 
right conferred by the registration of the trade mark shall 
be recorded in the Register. if proof thereof is furnished 
to the Patent Office. 
(4) Where the transfer of rights concerns only some or' 
the goods or services for which the trade mark is regis­
tered. Section 46 shall apply mutatis mutandis. 
Presumption of the Proprietorship of a Right; 
Service on the Proprietor 
Sec. 28.-( I) It is presumed that the person registered 
as proprietor in the Register is entitled to the right con­
ferred by the registration of a trade mark. 
(2) If the right conferred by the registration of a trade 
mark has been assigned or transferred to a third party. the 
successor in title shall. in proceedings before the Patent 
Office. appeal proceedings before the Patent Court or 
proceedings of appeal on a point of law before the Feder­
al Court of Justice. be able to assert the claim for protec­
tion of this trade mark and invoke the right conferred by 
the registration only from the date of .the receipt of the 
request for registration of the transfer at the Patent Of­
fice. Sentence 1 shall apply mutatis mutandis to other 
proceedings before the Patent Office. appeal proceedings 
before the Patent Court or proceedings of appeal on a 
point of law before the Federal Court of Justice to which 
the proprietor is a party. 
(3) Orders and decisions of the Patent Office for 
which service to the proprietor of the trade mark is re­
quired, shall be served on the person registered as propri­
etor. If a request for registration of a transfer has been 
received at the Patent Office. the orders and decisions re­
ferred to in sentence 1 shall also be served on the succes­
sor in title. 
Rights in -rem; Levy of Execution; 
Bankruptcy Proceedings 
Sec. 29.-(1) The right conferred by the registration. 
use or notoriety of a trade mark 
GERMANY -Text 3-001. page 011 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -previous publication DECEMBER 1995) 
1. may be given as security or be the subject of rights 
in rem; or 
2. may be levied in execution. 
(2) If the rights referred to in subsection (1), No. I, or 
measures referred to in subsection (1), No. 2. concern the 
right conferred by the registration of a trade mark, they 
shall on request of one of the panies be 'recorded in the 
Register. if proof thereof is furnished to the Patent Of­
fice. 
(3) Where the right conferred by the registration. use 
or notoriety of a trade mark is involved in bankruptcy 
proceedings. an entry to this effect shall be made in the 
Register on request of the administrator in bankruptcy 
proceedings or the bankruptcy court. 
Licensing 
Sec. 30.-( 1) The right conferred by the registration, 
use or nororiety of a trade mark may be [he subject of an 
exclusive or nonexclusive license for some or all of the 
goods or services for which the trade mark is protected 
and for [he whole or part of the Federal Republic of Ger-. 
many. 
(2) The propri~.tor of a trade mark may invoke the 
rights conferred by..that trade mark against a licensee who 
contravenes any provision in his licensing contract with 
regard to 
1. the duration of the license, 
2. the fonn covered by the registration in which the 
trade mark may be used, 
3. the kind of goods or services for which the license 
has been granted, 
4. the territory in which the trade mark may be af­
fixed. or 
5. the quality of the goods manufacured or the ser­
vices provided by the licensee. 
(3) The licensee may bring an action for infringement 
of a trade mark only if the proprietor of the trade mark 
consents thereto. 
(4) Any licensee shall, for the purpose of obtaining 
compensation for damage suffered by him, be entitled to 
intervene in infringement actions brought by the propri­
etor of the trade mark. 
(5) The transfer pursuant to Section 27 or the grant of 
a license pursuant to subsection (1) shall not affect li­
censes previously granted to third parties. 
Trade Mark Applications 
Sec. 31. Sections 27 to 30 shall apply mutatis mutan­
dis to rights conferred by trade mark applications. 
GERMANY -Text 3-001. page 012 IP/N/lfDEU/TIl 
Page 13 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
PART 3 
PROCEEDINGS IN TRADE MARK MA TIERS 
Chapter 1 
Registration Procedure 
Requirements of the Application 
Sec. 32.-(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 re­
quirements laid down in the legal ordinance under Sec­
tion 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 class­
es of the classification of goods and services, a class fee· 
as prescribed by the schedule of fees shall be paid in ad­
dition for each additional class. 
Date of Filing; Right to Registration 
Sec. 33.-(1) The date of filing of a trade mark shall be 
the date on which the documents containing the informa­
tion 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 appli­
cation requirements are not complied with or registration 
is prejudiced by absolute grounds for refusal. 
Foreign Priority 
Sec. 34.-( 1) Claiming priority of a previous foreign 
application shall be governed by the provisions of the in­
ternational agreements su'bject to the proviso that priority 
under the Paris Convention may also be claimed for ser­
vices. 
(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 t the applicant 
may claim a right of priority corresponding to that under 
the Paris Convention provided that, after publication by 
DE IP/N/l/DEU/T/l 
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INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL /996 
(Replacement sheet -pre\';o/ls pllhlication DECEJIBER 1995 ) 
the Federal Ministry of Justice in the Federal 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 Conven­
tion. 
(3) Any person who claims priority. pursuant to sub­
sections ( I) 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 in­
vite the applicant to indicate the file number of the earlier 
application and to file a copy of the said application with­
in a period of two months after communication of the in­
vitation. Particulars may be altered within those periods. 
\Vhere particulars are not provided in due time. the prior­
ity claim for the application shall be forfeited .. 
DE Exhibition Priority 
Sec. 35.-( I) If an applicant for the trade mark has dis­
played goods or services under the trade mark applied 
for. 
I. at an official or officially recognized international 
exhibition. falling within the terms of the Conven­
tion on Iiitemational 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 (I). 
No. I. are published by the Federal Ministry of Justice in 
the Federal 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 Gazette. 
(4) Any person who, pursuant to subsection (I), 
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 in­
vite 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 ap­
plied 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 Sec­
tion 34. INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
Examination of the Application Requirements 
Sec. 36.-( 1) The Patent Office shall examine whether: 
I. the trade mark application satisfies the require­
ments for according a date of filing in accordance 
with Section 33( I); 
2. the application complies with the other application 
requirements: 
3. the fees under Section 3:2(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 subsec­
tion (I). No. I. are not remt:dicd 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 de­
ficiencies established are remedied. 
(3) If the fees are not paid. the applicant shall be in­
formed 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 noti­
fication. If. within this period. the application fee and the 
surcharge. but not the required class fees. are paid. sen­
tence 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 indica­
tion. the leading class shall be taken into account first fol­
lowed by the other classes in the sequence of the 
subdivision of classes. 
(4) If other deficiencies are not remedied within a pe­
riod 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. 
Examination as to Absolute Grounds for Refusal 
Sec. 37.-( 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 orig­
inal date of filing and a priority claimed pursuant to Sec­
tion 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). 
GERMANY -Text 3-001. page 013 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -previous publication DECElvlBER 1995) 
(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 prerequi­
sites pursuant to Section 9( 1), No. I or 2. "are met. 
(5) Subsections (I) to (4) shall apply mutatis mutandis 
where the trade mark is not eligible for registration in re­
spect of only some of the goods or services for which it 
has been applied for. 
Accelerated Examination 
Sec. 38.-( 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 noc to have 
been made. 
Withdrawal. Limitation and Correction 
of the Application 
Sec. 39.-( I) The applicant may at any time withdraw 
the application or nmit the list of goods and services con­
tained therein. 
(2) Upon request of the applicant, the content of the 
application may be amended by correcting errors of 
wording or of typing or ocher obvious mistakes. 
Division of the Application 
Sec. 40.-(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 thence­
forth be dealt with as a divisional application. The senior­
ity of the original application shall continue to apply to 
each part of a divided application. 
(2) The elements of the application required by Sec­
tion 32 shall be filed for the divisional application. Fur­
thermore. 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 declara­
tion 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. 
Registration 
Sec. 41. Where an application meets the application 
requirements and is not rejected pursuant to Section 37. 
GERMANY -Text 3-001. page 014 JP IN I lIDEU IT /1 
Page 15 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
the trade mark shall be recorded in the Register. The reg­
istration shall be published. 
Opposition 
Sec. 42.-(1) Within a period of three months follow­
ing the date of publication of the registration of the trade 
mark pursuant to Section 41. the proprielOr 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 cancelled due to 
1. an earlier filed or earlier registered trade mark 
pursuant to Section 9( 1). No. I or 2: 
2. an earlier well-known trade mark pursuant to Sec­
tion 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. 
Objection Due to Non-Use; Decision 
on the Opposition 
Sec. 43.-0) 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. substanti­
ate 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 cancelled in respect of some or all of 
the goods or services for ,which it is registered. the regis­
tration shall be cancelled in full or in part. If the registra­
tion of the trade mark cannot be cancelled, the opposition 
shall be rejected. 
(3) If the registered trade mark has to be cancelled be­
cause of one or several earlier trade marks. the proceed­
ings with regard to further oppositions may be suspended 
until a decision on the registration of the trade mark has 
become final. 
DE IP/N/l/DEU/T/1 
Page 16 
INDUSTRIAL PROPERTY 
AND COPYRIGHT- DECEMBER 1995 
( .. ) (n the case ot' cancellation pursuant to subsectIOn 
12). Sl!cllon 52(2) and (3) shall apply mutafls mllfandlS. 
.4. Clion for the Grane of Registration 
Sec. -N ,-( I) The proprietor of a trade mark may in­
voke agamst the opponent. by bringing an action. that he 
IS entitled to claim registration pursuant to St!ctlon .. 3 
Jesplte cancellation or the registratlon. 
(2) The action pursuant to subsection (I} "hall he 
brought within six months alter the tiecision effecting the 
(ancellation of the registration has become final. 
(3) Registration on the grounds of a decision in favor 
1)1' the proprietor of the trade mark shall be! recorded \\'hilt! 
preserving seniority or the reglstrallon. 
Chapter 2 
Correction: Division: Period of Protection 
and Renewal 
Correction of the Register alld PlIhli(,(lriol/s 
Sec. -15.-1 I1 Registrations in the RegIster may bt! 
~mended upon request or ex officio by correcting \!rrors 
uf wording or of ~yptng or other obvious mistakes. Where 
the registration affecteti by the correctton has been pub­
lished. the corrected registration shall also be published. 
(2) Subsection ( I) shali apply muratis muranciis to the 
correction ur' publications. 
Division of the Registration 
Sec, -16.-( I) The proprietor of a registered trade mark 
may tiivide 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 dec­
laration 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 relHstra­
tion of the trade mark. pending at the time of decla;ation. 
would. after the division. onlv be directed against one of 
the parts of the original registration. -
(3) The documents required for the divisional registra­
tion shall be filed. Furthermore. a fee as prescribed in the 
schedule of fees shall be paid for the division. If the doc­
uments are not filed within three months of receipt of the 
declaration of division. or the fee has not been paid with-
.1 this period. the divisional registration shall be deemed I~DUSTRlAL PROPERTY 
LA WS AND TR.EA TIES 
to have been renounced. The declaration of division can­
not be revoked . 
Period of ProtectlOn and Renewal 
Sec. 47.-( 1) The period of protection of a registered 
trade .mark shall begin on the date of filing the applica­
lion (St!cllon 33( 1 )) and shall end 1 0 years after the last 
Jay or the month containing the tiate or' filing. 
(2) The period of protection may be renewed for fur­
ther periods or 10 years. 
(3) The period of protection shall be renewed through 
payment of the renewal fee and. where renewal is re-
4uested 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 regis­
tered trade mark shall be informed by the Patent Office 
that the reeistration shall be cancelled. unless the fees 
~md a surcharge as prescribed in the schedule of fees are 
paid within a period or" six months after the expiry of the 
month in which the nOtificJtion was served. 
(-l-) Where the fees are paid only in respect of some of 
the goods or services for which the trade mark is regis­
tered. the period of protection shall be renewed for those 
goods or services onlv. If. within the period specified in 
~ubsection (3). sente~ce 4. the renewal fee and the sur­
charge. but not the required class fees. are pai.d. the 
period of protection shall. unless sentence 1 applIes. be 
renewed onlv for those classes of the classification of 
200ds and se"rvices which are covered by the payment of 
fees. Where there is a leadine class. it shall be taken into 
~ccount first. The other c1a~ses shall be taken into ac­
count 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 reg­
istration of the trade mark shall be cancelled with effect 
as from the date of expiry of the period of protection. 
Chapter 3 
Surrender. Revocation and Nullity; 
Cancellation Procedure 
Surrender 
Sec. -18,-( I ) The reeistration of the trade mark shall be 
~ancelled in the Register at any time upon request of the 
r..t:DUAI'JV -Text 3-001. oa2e 015 I,VDUSTRIAL PROPERTY 
AND COPYRIGIIT -DECEMBER 1995 
prOpr1~lor in respect of some or all of the goods or -;er­
\ Ices tor \\ hich Il I~ registered. 
12) The registration shall be cancelled only · .... llh the 
agreement of the proprietor of a nght to the trade mark 
entered in the Register. 
Rew)carioll 
SC! "':lJ -I 1I The registration of a Irade mark ,hall he! 
-.:anc~lkJ upon request on grounds 01 revocation It. \\ "h­
In a (()nllnUOU~ renol..! of five years aftcr the Jate ot reg­
,,,tra(H)n. the trade mark has not hl!en put tt) u:-.t: In 
J(cordance with Section 26. However. no person may 
~:Iaim that the proprietor's rights in a trade mark ~hould 
he revoKed \vhere. during the intcrval between the ex.piry 
\)1 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 fil­
ing of the cancellation request. subsequent to the expiry 
nl a continuous period of five yt!ars of non-u:-.e "hall. 
howcver. be disreg:uded where preparatlons tor the com­
mencement or resumption occur only after the proprietor 
tlf the trade mark became aware that the canct!llallon re· 
'-Iuest may be lileJ. It the cam:cllation requt!o.;( j:., tikd 
with the Patent Office unJer Section ))( Il. the reque:-.t 
filed \1':llh (he Patein Offit.:e :-.hall bl! d~cisivl! lor the t:al­
culation of the period of three months accordin1! 10 sen· 
tence 3. provided that action for cancellatio-n under 
Secllon 55! I) is lodged within three months after service 
of the notification under Section 53( 4). 
(2) The registration of a trade mark shall also be can­
celled upon request on grounds of revocation. 
I. if. in consequence of acts or inactivity of the pro­
prietor_ the trade mark has become the common 
name in the trade for the !!oods or services in re­
'ipect of which it is registe;ed: 
, if. in consequence of the use made of it by the pro­
prietor of the trade mark or with his consent in re­
spect of the goods or services for which it is 
registered. the trade mark is liable to mislead the 
public. particularlv as to the kind. nature or !!eo­
graphical origin of those goods or services: or-
3. if the proprietor of the trade mark no lon2er satis­
fies the conditions laid down in Section f 
! 3) Where a !!round for revocation of ri!!hts exists in 
respect ot only ;ome of the goods or servi;es for which 
the trade mark is registered. the registration ~hall be can­
celled in respect of those goods or services only. 
VIII/ifY Due to Absolute GrounJs /n,. Rl'til.'iU1 
Sec:. :0.-( 1) Registration of a trade mark shall be can­
celled on request on the grounds of nullity 
I. where it has heen registered in breach of Section 3: IPINI l/DEU/TI 1 
Page 17 
L~DUSTRlAL PROPERTY 
LA WS AND 1REA TII::.S 
~ where Il has been registered in breach of Section 7: 
3. where it has been rcglstered in breach of Section 8: 
nr 
... L \I.'here the applicant was acting in bad faith when 
he filed the trade mark application. 
C!) Where the trade mark has been registered in 
breach of Section 3. 7 or 8. the registration may be can­
celled only if the ground for refusal still exists at the time 
\vhen the decision on (he cancellation request is made. 
\lorcover. where the trade mark has been registered in 
hreach of St!ction X( 21. ~o. I. :: or 3. the registration may 
nnly he cancelled if the cancellation request has been 
filed within a period of 10 years trom the date of registra­
tion. 
( .') The registration of a (rade mark may be cancelled 
l'X Officio where it has been registered in breach of Sec­
tion ~(2). :\os. ~ to 9. and 
I. the cancellation procedure is initiated within a pe­
riod of two years from the date of registration: 
"\ the ground for rer"usal still exists at the date when 
the decisiun un the cancellation is made: and 
3. the registration has obviously been recorded in 
t"lreach of (he ~tated proviSIOns. 
(~) Where the ground for nullity exists in respect of 
dnl y some of the goods or services for which the trade 
mark is registcred. the registration shall be cancelled in 
respect of those goods and services only. 
Nullity Dlle (0 Earlier Rights 
Sec:. 5/.-( I) The re!!istration of a trade mark shall be 
cancelkd by bringing ~n action on the grounds of nullity 
if it is prejudiced by a right having seniority within the 
meaning of St!ctions 9 to 13. 
(2) The registration may not be cancelled 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 lat­
er trade mark for the goods or services for which it is reg­
istered. 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 
mean in!! of Section 4. No. 2. to a well-known trade mark 
within the meanine of Section ~. No. 3. to a commercial 
desienation within-the meanine of Section 5, or to a plant 
vari~tv name within the meani~e of Section 13(2), No. 4. 
Furth~rmore. registration of a tr;de mark may not be can­
celled if the proprietor of a right having seniority referred 
to in Sections 9 to 13 has consented to the registration of 
the (rade mark prior 1'0 the filing of the cancellation re-
quest. 
(3) The re!!istr:ltion may not be cancelled on the 
grounds of an ~arlier trade ~ark with a reputation or an IP/N/l/DEU/T/I 
Page 18 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
I Rep{ucemel/t sheet -prc\';OUS publicatiulI DECEMBER /995) 
earlier commercial designation with a reputation if the 
trade mark or commercial designation has not acquired a 
reputation within the meaning of Section 9( I). No. 3. 
Section 14(2). No. 3. or Section 15(3) on the date rele­
vant for the seniority of the registration of the later trade 
mark. 
(4) The registration may not be cancelled on the 
grounds of the registration of an earlier trade mark where 
the registration of the earlier trade mark could have been. 
cancelled 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 Sec­
tion 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 cancelled as regards 
those goods and services only. 
Effects of Cancellation all Grounds of 
Re\'ocation or Nullity 
Sec. 52.-( I) Where the registration of a trade mark is 
cancelled on grounds of revocation to any extent. the ef­
fects of that registration shall be deemed to have ceased 
to that extent a~: from the date of the bringing the action 
for cancellatior'l. An earlier date. on which one of the 
grounds forrevocation occured. may be fixed in the deci­
sion at the request of one of the parries. 
(2) Where the registration of a trade mark is cancelled 
on grounds of nullity to any extent. the effects of that reg­
istration shall be deemed to have been void to that extent 
ab initio. 
(3) Subject to the provisions relating either to com­
pensation 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: 
I. any decision in infringement proceedings which 
has acquired the authority of a final decision and 
been enforced prior to the decision on the cancella­
tion request: 
DE 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. 
Cancellation by the Patent Office 
on Grounds of Revocation 
Sec. 53.-( 1) The cancellation request on grounds of 
revocation (Section 49) may be submitted to the Patent INDUSTRIAL PROPERTY 
LA WS AN~ TREA TIES 
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 cancel­
lation. 
(3) If the proprietor of the registered trade mark fails 
to object to the cancellation within two months after ser­
vice of the notification. the registration shall be can­
celled. 
(4) If the proprietor of the registered trade mark ob­
jects 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. 
Cancellation Procedure Before the Patent Office 
on Absolute Grounds for Refusal 
Sec. 54.-( I) The request for 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 cancel­
lation within two months after service of the notification. 
the registration shall be cancelled. If he objects to the 
cancellation. the cancellation procedure shall be carried 
out. 
Cancellation Proceedings Before Regular Courts 
Sec. 55.-(1) An action for 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 re­
quest 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 Sec­
tion 13(2) of the Law against Unfair Competition 
in such cases where a cancellation request has been 
filed because of an indication of geographical 
origin having seniority (Section 13(2), No. 5). 
GFRMANY -Text ]-001_ naoe 017 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(ReplLlamellr sheer -flreriolls plIhlicariofl DECEMBER 1995) 
(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 dur­
ing the period of five years preceding the end of the oral 
proceedings. Where the earlier trade mark has been regis­
tered 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 objec­
tion. furnish proof that. at that date. the registration of the 
earlier trade mark could not have been cancelled under 
Section 49( I). In the decision. only those goods or ser­
vices 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. V/ith regard to the right of the suc­
cessor in title to become a party to the proceedings. Sec­
tions 66 to 74 and 76 of the Code of Civil Procedure shall 
apply mutaris mutandis. 
Chapter 4 
General Provisions for Procedures 
Before the Patent Office 
Competence 
Sec. 56.-( 1) Trade Mark Sections and Trade Mark 
Divisions shall be established in the Patent Office for im­
plementing procedures in trade mark matters. 
(2) The Trade Mark Sections shall be competent for 
examining trade mark applications and for taking deci­
sions in registration procedures. The tasks of the Trade 
Mark Section shall be performed by a member of the 
Patent Office (examiner). The tasks may also be per­
formed 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 the Trade Mark Divi-
ra::RMANY -Text 3-001. oa2e 018 IP/N/l/DEU/T/1 
Page 19 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
sion shall be performed by at least three members of the 
Patent Office. The Chairman of the Trade Mark Di vision 
mav handle alone all matters falling within the compe­
ten~e 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. 
Exclusion and Challenge 
Sec. 57.-( 1) For the exclusion and challenge of exam­
iners 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 Sec­
tions 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 muratis mutandis. 
(2) The decision on a challenge plea (Ab/ehnungsge­
such]. insofar as the plea requires a decision. shall be 
made by the Trade Mark Division. 
Expert Opinions 
Sec. 58.-( 1) 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 diver­
gent 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 per­
mission of the Federal Ministry of Justice. 
Investigarion of the Facts: Right to Be Heard 
Sec. 59.-( 1) The Patent Office shall investigate ex of­
ficio 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. 
Examination of Facts; Hearing; Minutes 
Sec. 60.-( 1) The Patent Office may at any time sum­
mon and hear the interested parties. may examine wit­
nesses. experts and the parties concerned. whether under 
DE IP IN 11 ID EU IT 11 
Page 20 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -DECEMBER 1995 
\)ath or nOt. and may Institute other inquiries necessary 
for clarification of the matter. 
(2) Until such time as the decision concluding the pro­
cedure is made. the applicant or proprietor of a trade 
mark or another pany 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) ~1inutes of hearings and the examination of wit­
nesses shall be taken. which shall reproduce the essen­
tials of the proceedings and contain the legally material 
declarations of the panies concerned. Sections 160a. 162 
J.nd 163 of the Code of Civil Procedure shall apply muta­
tis mutandis. The parties sha1l receive a copy of the 
minutes. 
Decisions: Information on the Ri~ht to Appeal 
Sec. 0/.-( 1) The decisions ot the Patent Office shall 
contain the 2rounds there for. and shall be in writin!! and 
be communi~ated ex officio to all interested parties.-even 
if they have been pronounced in accordance with sen­
tence 2. If a heari~.g has taken place. pronouncement may 
also be !!iven at the end of the heann2. Grounds need not 
be give~ if the a·pplicant or the pro-prieror or the trade 
mark is the only party and his request has been allowed. 
(2) The written execution shall be accompanied by a 
statement informmg the parties concerned of the appeal 
which shall be permissible from the decision. of the au­
thority 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 panies 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. ex­
cept where the pany concerned has been informed in 
writing that an appeal was not permissible: Section 91 
shall apply mutatis mutandis. Sentences I to 4 shall apply 
mucatis mutandis to the legal remedy of objection under 
Section 64. 
Inspection of Files: Inspeclion of the Register 
Sec. 62.-( I) 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. 
t3) Anyone may freely inspect the Register. L.~DUSTRlAL PROPERTY 
LAWS AND.TREATIES 
COSIS of the Proceedings 
Sec. 63.-( I) \Vhen several persons are panies 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 panies shall. to the 
extent that they were necessary for the appropriate de­
fense 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 cancelled in the Register due to surrender or non­
renewal of the term of protection. Insofar as no such de­
termination 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 oppo­
sition or for the cancellation request be wholly or panly 
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 provi­
sions of the Code of Civil Procedure relating to the proce­
dure 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 regardin!! the assessment of costs. 
Section 66 shall apply. provid~d that the appeal shall be 
filed within two weeks and no fee has to be paid for lodg­
ing the appeal. The executable copy shall be issued by the 
registrar of the Patent Coun. 
Objection (Erinnerung) 
Sec. 64.-( I) Objection may be raised to the deCisions 
of the Trade Mark Sections and Trade Mark Divisions is­
sued by officials of the higher intennediate 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 con­
tested considers the objection to be well founded. he shall 
rectify his decision. This shall not apply if the pany rais­
ing the objection is opposed by another pany to the pro­
ceedings. 
(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 irrele­
vant. INDUSTRIAL PROPER1Y 
AND COPYRIGf{f -DECEMBER 1995 
PnH't'r to Issue Lt:t:ul Ordinances 
Sec. b5 .-11) By legal ordinance and without the con­
'ient of the Federal Council (Bundesrarl. the Federal Min­
istry of Justice shall have the power: 
\. 
-' . 
-l. 
5. 
b. 
8. 
9. to regulate the establishment and the business 
procedure or the Patent Office in trade mark mat­
ters: 
[0 prescrrbe additional requirements for the appli­
cltion of trade marks: 
10 determme the classification of goods and ser­
vices: 
to make detailed provisions concerning the exe­
cution or examination. opposition and cancella­
tion procedures: 
to make provisions concerning the Register for 
registered trade marks and. where appropriate. 
separate provisions on the Register tor collective 
marks: 
to reg.ulate the information on registered trade 
marks to be recorded in the Register and to deter­
mine the scope ot information as well as the man­
ner of publishing information: 
to make provisions concerning other procedures 
before the Patent Office provided in this Law. In 
particular. the procedure concernin2 the division 
of applicailons and registrations. ~,e procedure 
concerning the provision of information or certi­
fications. the procedure concernin2 reinstate­
ment. the procedure concerning the i~specllon of 
files and the procedure concerning the protection 
of international registrations of trade marks: 
to make provisions concernin2 the form of filing 
requests and submissions regarding trade mark 
matters. including the communication of requests 
Jnd submissions via electronic data transmission: 
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. includ­
ing the communication via electronic data trans­
mission. unless a specific form of communication 
is prescribed by law; 
10. to make provisions determining the cases and the 
preconditions for taking into account submis-
11. sions and documents relating to trade mark mat­
ters in other languages than German: 
to entrust officials of the higher intennediate 
grade of the civil service or comparable employ-
ees with the handling of particular matters within 
the competence of the Trade Mark Divisions 
which present no particular legal difficulties. 
with the ex,.ception of decisions on the cancella­
tion of trade marks (Section 48( 1). Sections 53 
and 54). the giving of opinions (Section 58(1)) 
and the decisions whereby the giving ot an expert 
opinion is refused: IP/N/lIDEU/TIl 
Page 21 
INDUSTRIAL PROPERTY 
LAWS AND TREATIES 
12. to entrust officials of the lower intermediate 
grade of the civil service or comparable employ­
ees with the handling ot particular matters within 
the competence of the Trade Mark Sections or 
Trade Mark Divisions which present no panicu­
lar legal difficulties. with the exception of deci­
sions on applicallons. oppositions or other 
requests: 
13. to prescribe the collection of administrative fees 
in order to cover the expenses of requests ad­
dressed to the Patent Office. insofar as provision 
Iheret"or has not been made by law. in particular. 
(u) to order that fees and expenses be collected 
for certifications. authentications. the inspec­
tion of files and the furnishing of infonna­
tion: 
I h) to establish rules concerning those who owe 
tees. the due date of payments. the obligation 
to pay in advance. exemptions from payment. 
limitation and the regulations and procedures 
tor determining the costs. 
(2) The Federal Ministry may delegate such power to 
j-;sue le2al ordinances under subsection ( 1) by legal ordi­
nance i~ whole or in pan to the President of the Patent 
Office without the consent of the Federal Council. 
Chapter 5 
Proceedings Before the Patent Court 
Appeal 
Sec. 66.-( 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)1. has 
not been raised. The appeal may be filed by the panies 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 ex.piry of this time limit. the 
pers~n filing the objection has filed a request for deci­
sion. the appeal from a qecision of the Trade ~~k Se~­
tion or Trade Mark Division is directly admlsslble. 10 
dero2ation of subsection (I). sentence I. if the decision 
on the objection is not made within a period of two 
months from the receipt of the request. If the person rais­
ing the objection is opposed by another party to the pro­
ceedings. sentence I shall be applicable provided that the 
period of six months after the objection was rai.sed is re­
placed by a period of 10 months. If the other party has 
~lso raised an objection. the other party must give his 
(onsent to the appeal under sentence 2. The written dec-IP/N/lIDEU/TIl 
Page 22 
I.VDUSTRIAL PROPERTY 
AND COPYRIGIfT- DECEMBER 1995 
lara!lon of consent shall be attached to the appeal. If the 
nrhcr party does not also lodge an appeal \vilhin one 
month after 'ervice of the appeal under subsection (-+ L 
~~ntence 2. his objection IS deemed 10 have been with­
Jrawn. The remaining periods of time under semences I 
;1nd.2 shall be interrupted if the proceedings are suspend­
~d or if. on request of a party to the proceedines. an ex­
tl.!nSlon of time has been gramed. The remainin-g periods 
nr time under sentences 1 and 2 shall recommence 10 run 
.llta thl.! ~u"penSlon ot the proc~edings has heen tl!rmi­
i\:.\ted or me extenSiOn of time granted has c.'(plred. After 
.\ Je(l~ion on the objection has b~en i!'>sued. an appeal 
unLlcr -.I.!ntences I and .2 ~hall no longer be admissible. 
1-+ I Copies of the appeal and of all written -;tatemems 
..,hall be atl:lched for the Olher panies. The appeal and all 
wrHtcn ..,tatcments (omalOing mOllons penaming to the 
matter or the declaration or' withdrawal of th~ appeal or of 
;1 motion shall be served ex officio upon the Olher parties. 
Other documents shall be communicated informailv to 
the said parties. provided that ex "fficio 'ervice has' not 
!-1een orden:d. 
15) A fl.!c as prescribed hy the !'>chedulc 01 fees "hall he 
palu tor th~ appeal. I t" the lee l\)r an appe:Ii pursuant to 
..,uosectlon I 11 i\ n\)t paH.i \\ ithin lh~ pl!r1od unut!r ~ubse(­
lion 12) or for:I1'! appeal pursuant to subsection 13) is not 
paid \vithin thepl!riuJ of ant.! month after receipt of (hI! 
appeal. the appeal .. hall be dl!el11l!J 1)\)\ tll ha"'l! been tiled. 
(6) If the authority whose decision is contested con­
... iders the appeal to be \\oell founded. it shall rectif\' its 
decision. This shall not he applicable where the appellant 
is opposed by another party to the proccedines. The au­
thorilY may order that the appeal fee be retu~ded. If the 
appeal is not rectified pursuant to \entence 1. it shall be 
remitted to the Patent Court before the expiration ot" one 
month. without comment as to its merits. (n cases under 
,entem:e 2. the appeal shall he rl!mitted to the Patent 
Court without delay. 
Boards of Appeal: Puhlic Oral Proceedillgs 
Sec. 6i.-( I) A Board of Appeal of the Patent Court 
shall decide on appeals within the meaning of Section 66. 
~omposed of three legally qualified members. 
(2) Proceedings concerning appeals from decisions by 
(he Trade i't1ark Sections and Trade Mark Divisions. in­
duding the pronouncement of the decisions. shall be pub­
lic if the registration has been published. 
(3) Sections 172 to 175 ot' the Judiciary Law [Ge­
richts\'er/(]ssun~sgesel: I shall he applicable. lIfultllis 
mlll(]lItiis. provided that: 
I. on the request of one of the parties. the public may 
also be excluded from the proceedings it publicity 
threatens to endanger the interests worthy of pro­
tection of the party making the request: IND USTRIAL PROPERTY 
LAWS AND TREATIES 
"'\ the public shall be excluded from the pronounce­
ment of the decisions until the publication of the 
registration. 
Inten'enrion of the President of the 
Parent Office in Appeal Proceedings 
Sec. oR.-1 I) The President of the Patent Office may. if 
he considers it appropriate in order to safeguard the pub­
lic intereSL make written statements in appeal proceed­
ing.s before the Patent Court. he present at hearing.s and 
make representations there. Written statements by the 
President ot 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 Presi­
dent of the Patent Office the opportunity to intervene in 
appeal proceedings. The President of the Patent Office 
shall become an interested pany (0 the proceedings upon 
receipt of the notice of intervention. 
Heunllr.:s 
St'c. 69 .. ~ hearing shall lake place if: 
I. one ot the parties so re4uests: 
, evidence is to be tJken before the Patent Court 
(Section 7·H I )); or 
3. the Patent Court considers it appropriate. 
Decision in Respect of Appeals 
Sec. 70.-( I) 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 deci­
sion without deciding the case on its merits if: 
I. 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 le­
gal judgment on which the reversal pursuant to subsec­
tion (3) is based. 
COSlS of Appeal Proceedings 
Sec. 71.-( I) 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 
panies shall. to the extent that they can be reasonably INDUSTRIAL PROPERTY 
AND COPYRIGHT -DECEMBER 1995 
(onsldered to have been necessary for the appropriate de­
tense of their interests and rights. be borne in whole or In 
part by one or the panies if and to the extent (hat this is 
equitable. Insotar as no such decision concerning the 
costs is made. each pany to the proceedings shall meet 
the costs he has incurred. 
(2) Costs may be imposed on the PreS10ent 01 lilt: 
Patent Office only IT he has made petitions after his inter­
\ entlon In the proceedings. 
(3) The Patent Court may order that the appeal fee 
t Section b6(S)} be refunded. 
,~) Subsections ( 1) to t 3) shall also be applicable if. 
I!ither in whole or in pan. the party withdraws the appeal. 
the trade mark application. the opposition or the c:mcella­
tlon request. or if. either in whole or in part. the trade 
mark registration is cancelled in the Register due to sur­
render or non-renewal of the tenn of protectlon. 
(5) In other respects. the provisions of the Code of 
Civil Procedure relating to the procedure for the assess­
ment of costs and execution or" the JI!t.:lsions re~arOIn!l 
[he asst!ssment of costS shall apply tnlllatls I11l1lalldl.L -
Exclusion al/d CJza/lel/'(t! 
S~c. ::-.: .-\ I) For the excl1lsion and challenge of mem­
bers of the court. Sections . ~ I to -\,-1-and -\,7 to 49 ot the 
Code of Civli Procedure shall be applICable mUlaI/S mu­
tandis. 
(2) Persons having panicipated in the previous pro­
ceedin2s before the Patent Office shall also be excluded 
from j~dicial office. 
(3) The decision on the challenge of a judge shall be 
rendered by the Board to which the person who is chal­
len2ed helonl!s. If. as a result of the elimination of the 
me~Der who -has been challenged. the Board is unable to 
make a decision. another ~oard of Appeal shall render 
tr.:: decision. 
(4) The decision on the challenge of a registrar shall 
be rendered by the Board to whose jurisdiction the matter 
belongs. 
/1l\·esti,(Qrion of Facts: Preparation of the Hearin~ 
Sec. 73.-( I) The Patent Court shall investigate ex offi­
cio the facts of the case. It shall not be bound by the fac­
tual statements and the offers of proof of the parties. 
t 2) The presiding judge or a member of the Board ap­
pointed by him shall. before the hearing or. in the ab­
sence of a hearing, before the decision of the Patent 
..... ourt. make all necessary arrangements for finally dis­
pvsing of the matter. if possible in one hearing or in one 
session. In other respects. Section 273C!)' (3). sentence 1. IP/N/I/DEU/T/l 
Page 23 
LNDUSTRIAL PROPERTY 
LA WS AND TREATIES 
and (~). sentence I. of the Code of Civil Procedure shall 
be applicable mlUatis mUlandis. 
Taking of Evidence 
Sec. 7-1.-( 1) The Patent Co un shall take evidence at 
the hearing. In particular. it may make inspections in situ, 
examIne witnesses. experts and the panies. and order the 
consultation of documents. 
( 2) In appropriate cases. the Patent Coun may. prior to 
the hearing. have evidence taken by one of its members 
as commissioned judge or. specifying particular ques­
tions of evidence. request another court to take such evi­
Jence. 
(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 ex­
perts. If a question is objected to. the Patent Coun shall 
Jecide. 
Summons 
Sec. -:5.-( I) As soon o.s 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 par­
ty fails to appear. the case may be heard and decided in 
his absence. 
Course of rhe Hearing 
Sec. 76.-( 1) The presiding judge shall open and con­
duct the hearing. 
(2) After the case is called. the presiding judge or re­
cording 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 panies 
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 re­
open the hearing. 
Minutes 
Sec. 77.-( 1) At the hearing. and whenever evidence is 
taken. a registrar or" the court shall be called in to act as IPINIl/DEU/TI 1 
Page 24 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -prC\'iou5 publication DECEMBER 1995) 
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. 
Consideration of Evidence; Right to Be Heard 
Before the Court 
Sec. 78.-( I) 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 de­
cision 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 op­
portunity to state their views. 
(3) Where there has been a previous hearing, a judge 
not present at the last session of the hearing may partici­
pate in rendering the decision only if the parties cons~nt. 
Pronouncement: Service of the Decisions; 
". Staremellf of Groul/ds 
Sec. 79.-( I) Final decisions of the Patent Court shall. 
if a hearing has taken place. be rendered at the court ses­
sion at which the hearing was concluded or at a session lO 
be fixed forthwith. Thi; deadline shall not be more than 
three weeks later except when important reasons, in par­
ticular the volume and the difficulty of the case, so re­
quire. 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 
panies. Final decisions shall be served ex officio to the 
parties. 
(2) Decisions of the Patent Court bv which a motion is 
refused or a legal remedy is decided ~pon must state the 
grounds upon which the decision is based. 
DE Corrections 
Sec. 80.-(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. INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
(4) The Patent Court shall decide on the request for 
correction pursuant to subsection (2) without taking evi­
dence. 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. 
Representation: Power of Attorney 
Sec. 81.-( I) Any party may, at any stage of the pro­
ceedings. be represented before the Patent Court by an 
authorized representative. A decision may be made or­
dering the appointment of a representative. The provi­
sions 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 ojficio 
consider the lack of a power of attorney if an attorney-at­
law or patent attorney does not appear as the representa­
tive. 
Application of Further Provisions,' Appeals from 
Decisions; Inspection of Files 
Sec. 82.-(1) In the absence of provisions in this Law 
concerning proceedings before the Patent Court, the Judi­
ciary Law and the Code of Civil Procedure shall apply 
mutatis mutandis unless the special nature of the pro­
ceedings before the Patent COllrt does not so permit. The 
provisions of the Judiciary Law on court vacations shall 
not apply. In proceedings before the Patent COllrt, the 
Law on Court Costs 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 in­
spect the files of the case. Section 62( 1) and (2) shall ap­
ply mutatis mutandis. The request for permission shall be 
decided upon by the Patent Court. 
Chapter 6 
Proceedings Before the Federal Court of Justice 
[B undesgerichtshoJ] 
Leave to Appeal on Points of Law 
Sec. 83.-(1) An appeal on a point of law from the de­
cisions of the Board of Appeal of the Patent Court in re-
GERMANY -Text 3-001. Dage 023 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
'Rcplacemcl/l JI/eel -prel'iollJ puhlicalion DECEAJBER /995) 
spect of an appeal under Section 66 shall lie to the 
Federal Court of Justice if the Board of Appeal in its de­
cision 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: 
I. a question of law of basic significance is to be de­
cided: or 
1 lhe further development of the law or the assurance 
of uniform judicial practice requires a decision by 
[he Federal Court of Justice. 
(3) Leave to appeal on a point of law shall not be re­
quired if one of the iollowing procedural defects is de­
nounced: 
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 par­
tiality. 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 decis'j"on was made on the basis of a hear­
ing in which the provisions on the publicity of pro­
ceedings were violated: or 
6. that the decision does not state the grounds there­
for. 
Right to Appeal: Basis for an Appeal 
Sec. 84.-( I) 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 arQ:ument that the decision is founded on a breach 
of the la;. Sections 550 and 551. Nos. 1 to 3 and 5 to 7, 
of the Code of Civil Procedure shall apply mutatis mutan­
dis. 
Formal Requirements 
Sec. 85.-( I) 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) In proceedings concerning appeals on points of 
law before the Federai Court of Justice. fees and ex­
penses shall be determined by the provisions of the Law 
on Court Costs" There shall be levied. for the pro­
ceedings. a full fee which shall be calculated according [0 
the rates applicable ~ to proceedings in appeal instance 
cases. The provisions of Section 142 on the reduction of 
the value in dispute shall apply mutatis mutandis. 
GERMANY -Text 3-001. page 024 lP/NIl/DEU/T/1 
Page 25 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
(3) The appeal on a poin[ of law shall state the 
grounds on which it is based. The period allowed for stat­
ing 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: 
I. the declaration as to the extent to which the deci­
sion is contested and the modification or reversal 
thereof is requested: 
., the indication of the violated rule of law; and 
3. where the basis for the appeal on a point of law is 
the argumenl that the law was violated in respect of 
procedure. a statement of the facts constituting the 
defect. 
(5) The panies must be represented before the Federal 
Coun of Justice by an attorney-at-Iaw. admitted to prac­
tice before the Court as authorized representative. Upon 
request of any party. the latter's patent attorney shall be 
given leave [0 speak. Section I57( 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 
lO Section 11 of the Federal Fee Ordinance for Attorneys­
at-law [Bundesgehz1hrenordnung fiir Rechlsanwalte J 
shall be refunded. as well as the necessary expenses of 
the patent attorney. 
Examination of Admissibility 
Sec. 86. 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 require­
ments is lacking, the appeal on a point of law shall be 
dismissed as inadmissible. -
Several Parties 
Sec. 87.-(1) \Vhen 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 parries. with the request to file dec­
larations. if any, in writing with the Federal Court of Jus­
tice 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 inter­
ested party in an appeal on a point of law, Section 68( 1) 
shall apply mutatis mutandis. 
DE IP/N/1/DEU/TIl 
Page 26 
INDUSTRIAL PROPERIT 
AND COPYRIGHT -DECEMBER 1995 
Applicatio/l of Othcr Prnl'is;olls 
Scc. RR.-( I ) In proceedings in respect of the appeal on 
a point of lav.·. the provisions of the Code of Civil Proce­
dure regarding exclu~ion 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 nlllTatis l11utall­
dis. In the case of reinstatement. Section 91 (~) shall ap­
ply mutatis mlllandis. 
(2) As to the publicity of the proceedings. Sec­
tion 67(2) and (3) shall apply mutaris mUTallclis. 
Decision Oil Appeals 011 t1 Poillt (~r Lau' 
Sec. 89.-( 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 he hound. when 
rendering its decision. hy the facts estahlished in the de­
cision appealed from. except when admissible and sub­
stantiated grounds for an appeal on a point of lav.' are 
put forward in relation to such facts. 
(3) The decision must state the grounds on which it is 
based and shall,~e served cx njiicio upon the interested 
parties. 
(4) In the event ot 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 hound to base its decision on the legal 
opinion on which the reversal is based. 
Dl'cisioll Oil COSTS 
Sec. 90,-( I) \Vhen several persons 'lre 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 il 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 can­
celled in the Rel!ister due to surrender or non-renewal of 
the term of protection. Insofar as no such determination 
concerning the costs is made. each party shall individual­
ly meet the costs he has incurred. 
(2) If the appeal on a point of law is rejected or dis­
missed 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. 
DE INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
(,)) Costs can only be imposed on the President of the 
Patent Office if hI.! lodged the appeal on a point of law or 
made petitions in the proceedings. 
(4) In other respects. the provisions of the Code of 
Ci\'il Procedure relating to the procedure for the assess­
ment of costs and ex.ecution of decisions regarding the 
assessment of costs shall apply mUTaTis mutandis. 
Chapter 7 
Common Pro\'isions 
Reinstatement 
Sec:. 9/.-( I) Any person who. through no faull of his 
own. has been prevented from observing a time limit be­
fore the Patent Office or the Patent Court. default of 
which is detrimental to his rights according to the provi­
sions of the law. shall. on request. be reinstated. This pro­
vision shall not apply to the time limits for filing an 
opposition and paying the opposition fee. 
(:!) Reinstatement must be requested within two 
months after the removal of the impediment. 
(3) The request must state the facts upon which the 
reinstatement mav be based. These facts must be estab­
lished by prima jaric 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 long­
er be requested and the omitted act may no longer be 
completed. 
(6) A decision on the reauest shall be made by'1he au­
thority which shall decide on the action to be made good. 
(7) The decision on reinstatement shall not be appeal­
able. 
(8) If the proprietor of a trade mark is granted rein­
statement and if. in the course of the period between the 
loss of rights to the trade mark registration and the rein­
statement. third parties have placed goods on the market 
or rendered services in eoud faith with a sign identical 
with or similar to the tr'"ade mark. the proprietor of the 
trade mark shall not be entitled to assert any rights with 
regard to the said acts. 
DUT), to Tell the Truth 
Sec. 92. 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. 
GERMANY -Text 3-001. page 025 INDUSTRIAL PROPERn' 
AND COPYRIGHT -DECEMBER 1995 
Official Lall~lIage alld Lal/guage ill COUl'l 
Scc. 93. The language of the Patent Office and the 
Patent Court shall be German. In other respects. the pro­
visions of the Judiciary Law concerning the language of 
the court shall be applicable. 
Scrl'ice (~l DocumenTs 
Sec. 9-1..-( 1) For the purpose of the service of docu­
ments in proceedings before the Patent Office and the 
Patent Court. the provisions of the La .. ", on Service in 
Administrative Procedures [VerwalwlIgs:llstellllllgsge­
set:] shall apply subject to the following conditions: 
I. service upon addressees residing abroad who have 
not appointed a representative in this country (Sec­
tion 96) may also be effected by mail in accor­
dance with Sections 175 and ~ 13 of the Code of 
Civil Procedure provided that it was possible for 
the addressee to recognize the necessity of ap­
pointing a representative in this country at the lime 
of the service to be effected: 
, for the purpose of service upon holders of certifi­
cates of representation [Erlauhnisscheillinhaher] 
(Section 177 of the Ordinance on Patent Attor­
neys). Section 5(2) of the Law on Service in 
Administrali\'e Procedures shall apply mutatis 
mutandis: . 
3. documents may abo be served upon addressees for 
whom a mail box has been installed at the Patent 
Office or at the Patent Coun. 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 de­
posit 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( I) of the Law on Service in Administra­
tive Procedures shall not apply if service marks the com­
mencement of the period allowed for filing an objection 
[Erillllerung] (Section 64(~)). an appeal (Section 66(2)) 
or an appeal on a point of law (Section M5( 1 )). 
Legal Assistallce 
Sec. 95.-( I) The couns shall be required to furnish le­
gal 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 I Ordnllll~s- od er 
ZwallRsmirrel] 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. 
GERMANY -Text 3-001. page 026 IP/NIl/DEU/T/! 
Page 27 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
(3) A Board of Appeal of the Paten[ Court composed 
of three kgal members shall pronounce on the request­
made under subsection (21. Pronouncement in such case 
shall take the form of a decision. 
Domestic Representari\'e 
Sec. 91'>.-( I) The proprietor of a filed or rel!istered 
trade mark having neither a domicile nor a seat nor an 
establishment in this country may take part in proceed­
in£s before the Patent Office or the Patent Court re£ul­
at~d by this Law only if he has appointed a pa~ent 
attorney or an attorney-at-law in this country as his repre­
sentalive. 
C:!) The representative appointed under subsection (I) 
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 busi­
ness 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 pre­
mises. then the place where the representative has his do­
micile shall be relevant and. in the absence thereof. the 
place where the Patent Office has its seal. 
(..1) Subsection (I) shall apply mutatis mutandis to 
third parties participating in proceedings before the 
Patent Office or the Patent Court re-gulated by this Law. 
PART ..1 
COLLECTIVE MARKS 
Co/lecTin! Marks 
Sec. 97.-( I) Any sign capable of being protected as a 
trade mark within the meaning of Section 3 and capable 
of distinguishing the goods or services of the members of 
the proprietor of the collective mark from those of other 
undertakings according to their origin from a given enter­
prise or their geographical origin. their nature. quality or 
other properties may be registered as a collective mark. 
(2) The provisions of this Law shall apply to collec­
tive marks unle~s otherwise provided for in this pan of 
the Law. 
Proprietorship 
Sec. 98. Filed or registered collective marks may only 
be owned by associations having legal capacity including 
umbrella and head organizations having legal capacity 
and whose members are themselves associations. Legal 
DE IP IN I liD BU IT 11 
Page 28 
INDUSTRIAL PROPERTY 
AND COPYRIGI-IT' -DECEMBER 1995 
persons governed by public law have the same status as 
these associations. 
Registrability oj Indications of Geo,?raphicai 
Origin as Collective Marks 
Sec. Y9. In derogation from Section ~(~L ~o. 2. siens 
~)f indications which may serve. In trade. to desirmate the 
gt!ographical origin of the goods or services ma~' consti-
rute collective marks. . 
Restrictions on Prnrecrion: Use 
. Sec. 10~.-( ~) In addition to the restrictions of protec­
tion resulting trom Section 23. registration or an indica­
tion of geographical origin as a collective mark shall not 
t!ntitle the proprietor to prohibit a third panv from usine 
'iuch indications in the course of trade. provided such us~ 
is in accordance with the accepted principles of moralitv 
and does not contravene Section 127. . 
(2) Lse of a collective mark by at least one person 
who has authonty to do so or by tht! proprietor or the col­
It!ctive mark shall be deemed to cOnstllute use within the 
meaning of Section .26. 
Ri (?hr of Action: Dumul!es 
Sec. 101.-1 I) Lnless otherwise provided in the re!!ula­
lions gover~ing use of the collective mark. persons-who 
ha~e auth~nt~ to use the collective mark may bring an 
actlon for Infnngement of a collective mark onlv with the 
consent of the proprietor. . 
(~) The proprietor of a collective mark shall also be 
t!ntltled to claim compensation for the damaee sustained 
by persons who have authority to use the ma-rk in conse­
quence of unauthorized use of the collective mark or a 
similar sign. 
Regulations Governing Use of the Mark 
Sec. 102.-( I) The application for a collective mark 
must be accompanied by regulations governing use of the 
mark. 
(2) The regulations governine use of the mark shall at 
least specify: -
1. the name and the seat of the association. 
, the purpose and representation of the association. 
3. the conditions of membership. 
~. information on the group of persons havine author-
ity to use the collective mark. -
5. the conditions of use of the collective mark. 
6. the rights and obligations of the parties concerned 
in the event ot infringement of the collective mark. ~USTRlALPROPERTY 
LAWS AND'TRE'A TIES 
(3) If the collective mark consists of an indication of 
geographical origin. the regulations governing use of the 
mark must provide that any person whose goods or ser­
vices originate in the geographical area concerned and 
fulfill the conditions for use set out in the said regulations 
shall be authorized to become a member of the associa­
tion and shall be admitted to the group of persons who 
have authority to use the mark. 
f 4) Anyone may inspect the regulations concerning 
use of the mark. 
Examination of rhe Applicarion 
Sec. 103. In addition to refusal under Section 37. the 
application for a collective mark shall also be refused if it 
does not satisfy the requirements of Sections 97. 98 and 
102 or if the regulations governing use of the mark are 
contrary to public policy or to accepted principles of mo­
rality. unless the applicant amends the regulations con­
cerning use ot" the mark in such a way that the ground for 
refusal ceases to exist. 
Amendments of rhe Rel(u/ations Cvrerning 
Use of rhe .""Iark 
Sec. 1 Ool .-1 I) The proprietor of the collective mark 
must communicate to the Patent Office anv amendment 
to the regulations governing use of the mark. 
(2) In the case of an amendment to the regulations 
governing use of the mark. Sections 102 and 103 shall 
apply mutatis mutandis. 
Re .... ocarion 
Sec. 105.-( I) In addition to the erounds for revocation 
provided for in Section 49. the regi;tration of a collective 
mark shall upon request be cancelled on the ground of 
revocation 
1. if the proprietor of the collective mark no longer 
exists. 
, if the proprietor of the collective mark does not 
take reasonable steps to prevent the collective 
mark being wrongfully used in a manner incompat­
ible with the purpose of the association or the regu­
lations governing use of the mark. or 
3. if an amendment to the regulations governing use 
of the mark has been entered in the Regi~ter in 
breach of the provisions of Section 104(2) unless 
the proprietor of the mark funher amends the said 
regulations in such a way that the ground for can­
cellation ceases to exist. 
(2) Wrongful use within the meaning of subsection 
\ I), No. 2. shall in panicular be deemed to exist if the 
collective mark is used by persons other than those au-INDUSTRIAL PROPERTY 
AND COPYRIG/-IT -DECEMBER 1995 
thonzed to use the collective mark in a manner suited to 
Jt!celve thl! public. 
(3) The request for cancellation under subsection ( II 
... hall be filed with the Patent Office. The procedure shall 
be governed by Section 54. 
\lIl1in· Becullse nlAhso/Llle Grounds (or Refusal 
\('c. jOt) In ;Jddition lu the ground~ tor nullity pro­
\ Ided (or In S~c[lon 50. tilt! re~l:-.tr:.lll()n III a L'olleClI\t! 
rnarl-: ,hall upon request be cancelled on the ~round 1)\ 
nullity 11 it has been registered In breach of the provI\lOnS 
I)f Secllon 103. If the ground for nuilitv relates (Q thc rc!!­
ulations cuncermng use of the mark. the re2istrallon sh;11 
not be <.::.lncclled if the proprietor of the c~)llective mark 
Jmends the said rel!ulatlons In such a way that the I!rnund 
for nullity ceases to eXIst. '-
P.-\RT ~ 
PROTECTIO:-': OF \lARKS L'~DER 
THE \lADRID .-\GREE\lE:,\T CO~CER:\I'G 
THE I:\TER"ATIO~AL REGISTR.-\TIO~ OF 
\t1ARKS A;\O THE PROTOCOL 
REL.-\ TING TO THE ~tADRID AGREE:vlENT 
Chapter I 
Protection of :\1arks Under the Madrid Agreement 
Applicatiol/ of rhe Prm'isiolls of rhis Lc.Ju· 
Sl.'c, /07. The provisions of this Law shall be appll­
(~ble mlllC.1tis murandis to international re2btratlOns ot 
marks under the :vladrid A2reement Conce-rnim! the In­
ternational Reeistration of-Marks (Madrid Ae;eement) 
which are effe;ted throueh the intermediarv of the Patent 
Office or the protection ~f which extends to the territorv 
of the Federal Republic of Germanv unless otherwis~ 
provided in this Chapter or in the Madrid Agreement. 
Application for International Regisrrarion 
St'L'. /08.-( 1) The application for international rC2is­
tration under Article 3 .of the Madrid Aereement of a ;e~-
istered mark shall be filed with the Pat~nt Orrice. -
(2) If the application for international reeistration is 
filed prior to the registration of the mark. the'-application 
:;hall be deemed to have been received on the date of the 
registration ot the mark. 
(3) The application tor internallonal registration shall 
be aCl.:ompanied by a translalion or" the list ot goods and IP IN 11 ID EU IT /1 
Page 29 
INDUSTRIAL PROPERTY 
LA WS AN'I)=:1'R.B:A TIES· 
,~rv Ices III the language preSCribed fur International reg­
I"tratlun. The Iht shall be arranged In the order of the 
dasses of the lnternatlonai CbsslticJtlon of Goods and 
ServIces . 
Fus 
'iec. /09.-, 11 The appl iCJtion tor international regis­
:ratlon shall be accomoanled by a national fee as speci­
lil!d l!l the ,cheduk 1)[ t'~t!'i. If the application for 
internatlunal reglstr:lllon 1'1 filed prior to the registration 
or the m:uk. the ke shall becume due on the date of regis­
tration. I r the ft!e is not paid. the application shall be 
deemed not to have been fill!d. 
12) The international fees payable under Article 8(2) 
of the ~ladrid Agreement shall be paid directly to the 
International Bureau of the World Intellectual Property 
Orgamzation. 
Recordu' ill rill.' R£'t:lstt'l' 
Sec. /10. The date and number of the international 
regIstration of a mark regIstered ~hall be entered in the 
Reglst~r. 
SlIhseqllt'1l( Territorial Extension 
Sec. / /1.-( I) 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) Sl!clion 109(2) shall apply mutatis mutandis. 
Effect of International Registration 
Sec. 112.-( I) The international registration of a mark 
the protection of which has been extended to the territory 
uf the Federal Republic of Germany under Article 3ter of 
the ~ladrid A2reement shall have the same effect as if an 
~pplication ";r the recordal of the mark in the Register 
kept by the Patent Office had been filed and the mark had 
been re!!istered 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. 
12) The effect referred to in subsection (1) shall be 
deemed not to have accrued if the international registra­
tion ot a mark is refused protection pursuant to Sec­
tions 113 to 115. lP/NI l/DEU/TI ! 
Page 30 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -pre\';ous plIhlicalion DECDrfBER 1995) 
Examination as to Absolute Grounds for Refusal 
Sec. I J 3 .-( 1) International registrations of marks 
shall be examined as to absolute grounds for refusal un­
der Section 37 in the same way as marks in respect of 
which an application for registration has been filed. Sec­
tion 37(2) shall not apply. 
(2) Rejection of the application (Section 37( 1» shall 
be replaced by refusal of protection. 
DE Opposition 
Sec. 114.-( I) For the purpose of international regis­
trations. 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( I» against the grant of protection for international 
registrations shall start on the first day of the month fol­
lowing the month indicated on the issue of the gazette 
containing the publication of the international registra­
tion. 
(3) Cancellation of the registration (Section 43(2» 
shall be replac~? by refusal of protection. 
Revocation of Protectioll a posteriori 
Sec. 115.-(1) For the purpose of international regis­
trations 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( I) is filed. the date of regis­
tration 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 
\Vorld Intellectual Property Organization. 
Opposition and Request for Cancellation 
on the Basis' of International Registrations 
Sec. 116.-( I) If. on the basis of an international regis­
tration. 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). INDUSTRIAL PROPERTY 
LA WS AND TREA TIES 
(2) If. on the basis of an international registration, an 
action for cancellation is brought under Section 51, Sec­
tion 55(3) shall be applicable provided that the date of 
registration shall be replaced by the date specified in Sec­
tion 115(2). 
Exclusion of Claims for Non-Use 
Sec. 117. If claims within the meaning of Sections 14. 
18 and 19 are asserted because of infringement of an in­
ternational 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). 
Consent (0 the Transfer of an 
International Registration 
Sec. 118. The Patent Office shall give the Internation­
al Bureau of the \Vorld Intellectual Property Organiza­
tion the consent required under Article 9bis( 1) of the 
Madrid Aereement in the event of the transfer of an inter­
national r~gistration 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 
Application of the Provisions of this Law 
Sec. 119. The provisions of this Law shall apply muta­
tis mutandis to international registration of marks under 
the Madrid Protocol of June 27. 1989, Relating to the 
Madrid Agreement Concerning the International. Regis­
tration of Marks (Protocol Relating to the Madrid Agree­
ment) 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. 
Application for International Registration 
Sec. 120.-( I) The application. under Article 3 of the 
Protocol Relating to the Madrid Agreement, for interna­
tional registration of a mark in respect of which an appli­
cation for registration has been filed. or of a registered 
mark. shall be filed with the Patent Office. The applica­
tion 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 reeistration is to be effected Of1 
the basis of a registered ma~rk and if the application for 
GERMANY -Text 3-001, page 029 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL /996 
(Replacemenr sheet -prerious publication DECEMBER 1995) 
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 reg­
istration of the mark. 
(3) Section 108(3) shall be applicable mutatis mutan­
dis. 
Fees 
Sec. 121.-(1) The application for international regis­
tration shall be accompanied by a national fee as speci­
fied in the schedule of fees. 
(2) If the international registration is to be effected on 
the basis of a registered mark under the Madrid Agree­
ment 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 inter­
national 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 registra­
tion of the mark. the fee under subsection (1) or subsec­
tion (2) shall become due on the date of registration. If· 
the fees under subsection (I) 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 Bu­
reau of the World Intellectual Property Organization. 
Entry in the Fifes: Recordal in the Register 
Sec. 122.-(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 registra­
tion effected on the basis of a registered mark shall be 
recorded in the Register. Sentence I shall also apply if 
the international registration has been effected on the ba­
sis of an application for registration and if the application 
has lead to registration. 
Subsequent Territorial Extension 
Sec. 123.-(1) The request for subsequent territorial 
extension of the protection resulting from the internation­
al registration of a mark under Article 3/er(2) of the Pro­
tocol Relating to tQe 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 
GERMANY -Text 3-001. page 030 IP/NIl/DEU/TIl 
Page 31 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
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 re­
quest for subsequent territorial extension shall be accom­
panied by a joint national fee as specified in the schedule 
of fees. If the fee under sentence I or sentence 2 is not 
paid. the application shall be deemed not to have been 
filed. 
(3) Section 121(4) shall apply mutatis mutandis. 
Analogous Application of the Provisions Concerning 
the Effect of International Registrations 
of Marks Under the Madrid Agreement 
Sec. J 24. Sections 112 to 117 shall apply mutatis mu­
tandis to international registrations of marks the protec­
tion of which has been extended to the territory of the 
Federal Republic of Gennany under Article 3ur 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 correspond­
ing provisions of the Protocol Relating to the Madrid 
Agreeement. 
Transformation of an International Registration 
Sec. 125.-(1) Where an application under Arti­
cle 9quinquies of the Protocol Relating to .the Madrid 
Agreement for transformation of a mark cancelled under 
Article 6(4) of the Protocol Relating to the Madrid 
Agreeement 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 Arti­
cle 3(4) of the Protocol Relating to the Madrid Agree­
ment 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 Sec­
tion 6(2). 
(2) The request for transformation shall be accompa­
nied by a fee as specified in the schedule of fees. Where 
transformation is requested in respect of goods or ser­
vices coming under more than three classes of the Clas­
sification 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. 
DE IP/N/l/DEU/T/1 
Page 32 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -pre\·ious publication DECEMBER 1995) 
DE (3) The parry filing the request shall present a certifi­
cate from the International Bureau of the World Intellec­
tual 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 Repub­
lic of Germany prior to its cancellation in the Internation­
al 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. \Vhere. 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 pro­
ceedings in respect of the refusal of protection or subse­
quent revocation of protection were pending on the said 
date. the mark shall be directly registered under Sec­
tion 41 without previous examination. No opposition 
shall be admissible against registration of a mark under 
sentence 2. 
PART 6 
INDICATIONS OF GEOGRAPHICAL ORIGIN 
Chapter 1 
Protection of Indications of Geographical Origin 
Names. Indications or Signs Protected 
as Indications of Geographical Origin 
Sec. 126.-(1) For the purposes of this Law, indica­
tions of geographical origin shall be names of places. 
areas. regions or countries as well as other indications or 
signs used in the course of trade to identify the geograph­
ical origin of goods or services. 
(2) For the purposes of subsection (1), names, indica­
tions or signs of a generic nature shall not be eligible for 
protection as indications of geographical origin. Desig­
nations shall be considered to be of a generic nature 
which-although containing an indication of geographical 
origin within the meaning of subsection (1) or being de­
rived therefrom-have lost their original meaning and 
serve as names of goods or services or as designations for 
or indications of the kind. nature. type or other properties 
or characteristics of goods or services. 
Scope of Protection 
Sec. 127.-(1) Indications of geographical origin may 
not be used in ttie course of trade for goods or services 
which do not originate in the place. area, region or coun­
try designated by the indication of geographical origin if INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
the use of such names. indications or signs for goods or 
services of a different origin entails the risk of mislead­
ing as to the geographical origin of the goods and ser­
vices. 
(2) If the goods or services marked by an indication of 
geographical origin show special properties or a special 
quality, the use of such indication of geographical origin 
in the course of trade for the respective goods or services 
of the said origin shall only be permitted if the goods or 
services have those properties or that quality. 
(3) If an indication of geographical origin enjoys a 
special reputation. the use of such indication of geo­
graphical origin in the course of trade for goods or ser- I 
vices of a different origin shall not be permitted even in 
the absence of a risk of misleading as to the geographical 
origin if the use for goods or services of a different origin 
is likely to take unwarranted and unfair advantage of. or 
be detrimental to. the reputation or the distinctive charac­
ter of the indication of geographical origin. 
(4) The above subsections shall also apply where 
names, indications or signs similar to the protected indi­
cation of geographical origin are used or where the 
indication of geographical origin is used with additions. 
provided that, 
1. in the cases referred to in subsection (1). there is a 
risk of misleading as to the geographical origin in 
spite of the divergence or the additions, or 
2. in the cases referred to in subsection (3), such use 
is likely to take unfair advantage of, or be detri­
mental to. the reputation or the distinctive charac­
ter of the indication of geographical origin in spite 
of the divergence or the additions. 
Injunctive Relie/; Claim/or Damages 
Sec. 128.-(1) Persons entitled to assert claims-pursu­
ant to Section 13(2) of the Law Against Unfair Competi­
tion may claim an injunction against anyone who, in the 
course of trade. uses names, indications or signs in 
breach of Section 127. 
(2) Anyone who willfully or by negligence acts in 
breach of Section 127 shall be liable to compensation for 
damages resulting therefrom. 
(3) If the infringing act is committed in a business es­
tablishment by an employee or by an authorized person, 
the injunctive relief and, insofar as the employee or au­
thorized person acted willfully or by negligence, the 
claim for damages may also be asserted against the owner 
of the business establishment. 
Limitation 
Sec. 129. Claims under Section 128 shall come under 
the statute of limitations pursuant to Section 20. 
GERMANY -Text 3-001, page 031 INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -prel'iolls pllblicalion DECEMBER /995 J 
Chapter 2 
Protection of Geographical Indications 
and Designations of Origin Under 
Regulation (EEC) No. 2081192 
Application for Registration of a Geographical 
Indication or Designation of Origin 
Sec. 130.-(1) Applications for registration of a geo­
graphical indication or of a designation of origin in the 
register of protected designations of origin and protected 
geographical indications kept by the Commission of the 
European Communities under Council Regulation (EEC) 
No. 2081/92 of July 14, 1992, on the Protection ofGeo­
graphical Indications and Designations of Origin for 
Agricultural Products and Foodstuffs (OJ EC (Official 
Journal of the European Communities). No. L 208. p. 1) 
in its applicable version shall be filed with the Patent 
Office~ 
(2) The application shall be accompanied by a fee as 
specified in the schedule of fees. If the fee is not paid. the 
application shall be deemed not to have been filed. 
(3) If the examination of the application shows that 
the geographical indication or designation of origin filed 
for registration complies with the requirements specified 
in Regulation (EEC) No. 2081/92 and its implementing 
provisions, the Patent Office shall inform the applicant 
accordingly and transmit the application to the Federal 
Ministry of Justice. 
(4) The Federal Ministry of Justice shall transmit the 
application with the required documents to the Commis­
sion of the European Communities. 
(5) If the examination shows that the requirements for 
the registration of the filed geographical indication or 
designation of origin are not complied with. the applica­
tion shall be rejected. 
Request to Amend the Specification 
Sec. 131. Section 130 shall apply mutatis mutandis to 
requests to amend the specification of a geographical in­
dication or of a designation of origin pursuant to Article 9 
of Regulation (EEC) No. 2081/92. No fee shall be pay­
able. 
.objections 
Sec. 132.-(1) Objections under Article 7(3) of Regu­
lation (EEC) No. 2081/92 to the registration of geograph­
ical indications and designations of origin in the register 
of protected designations of origin and protected geo­
graphical indications kept by the Commission of the 
European Communities, or to amendments of the specifi-
GERMANY -Text 3-00 1, page 032 IP/N/l/DEU/T/! 
Page 33 
INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
cation of a geographical indication or designation of ori­
gin. shall be filed with the Patent Office. 
(2) A fee as specified in the schedule of fees shall be 
paid for the objection. If the fee is not paid in time~ the 
objection shall be deemed not to have been raised. 
Responsibilities in the Patent Office; Appeals 
Sec. /33.-(1) The Trade Mark Divisions set up in the 
Patent Office shall be responsible for handling applica­
tions under Sections 130 and 131 and objections under 
Section 132. 
(2) An appeal to the Federal Patent Court and an ap­
peal on a point of law to the Federal Court of Justice shall 
lie from decisions taken by the Patent Office pursuant to 
the provisions specified in this Chapter. The provisions 
in Part 3 of this Law concerning appeal proceedings be­
fore the Patent Court and proceedings on appeals on a 
point of law before the Federal Court of Justice shall ap­
ply mutatis mutandis. 
Supen'ision 
Sec, /34.-{ I) The supervision and inspection required 
under Regulation (EEC) No, 2081/92 and the prov'isions 
implementing the Regulation shall be incumbent upon 
the authorities responsible under Land (state) law. 
(2) As far as required for the supervision and inspec­
tion for the purposes of subsection (1), the agents of the 
responsible authorities may, in enterprises which produce 
or market agricultural products or foodstuffs (Sec­
tion 7(1) of the Law on Foodstuffs and Articles of Daily 
Use) or which transfer, import or export such agricultural 
products or foodstuffs within the Community, 
1. enter and inspect business premises and real prop­
erties. sales outlets and means of transport, 
2. take samples against receipt; upon request of the 
party concerned, a part of the sample or, if the sam­
ple is indivisible. a second sample shall be left 
with him under official seal, 
3. inspect and examine business records. 
4. demand information, 
during business or working hours. Such rights also ex­
tend to agricultural products or foodstuffs which are mar­
keted in public areas, in particular markets, squares, 
streets or by peddling . 
(3) Owners or managers of enterprises shall be liable 
to permit the entering and inspection of their business 
premises and real properties, sales outlets and means of 
transport, to display or have displayed the agricultural 
products or foodstuffs to be inspected in a way to enable 
the inspection in due form, to give or have given the nec­
essary assistance during inspections, to allow the taking 
DE IP/N/l/DEU/T/1 
Page 34 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replacement sheet -pre\'ious publication DECEMBER /995) 
of samples. to submit their business records and to permit 
their examination as well as (0 supply information. 
(4) If the supervision is effected during import or ex­
port. subsections t2) and (3) shall apply mutatis mutandis 
also to the person transferring. importing or exporting the 
agricultural products or foodstuffs within the Community 
on behalf of the owner of the enterprise. 
(5) A person liable to supply information may refuse 
to give information in response to questions the answer­
ing of which would make him or one of the relatives 
specified in Section 383( I). Nos. I to 3. of the Code of 
Civil Procedure liable to prosecution or proceedings un­
der the Law on Administrative Offenses. 
(6) For official acts to be performed under Article 10 
of Regulation (EEC) No. 2081/92 for inspection pur­
poses, cost-covering fees and expenses shall be charged. 
The acts liable (0 fees shall be specified by Land law. 
Injunctive Relief: Claim for Damages 
Sec. J 35 .-(1) Persons entitled to assert claims under 
Section 13(2). of the Law Against Unfair Competition 
may claim an injunction against anyone who. in 'the 
course of trade. commits acts in breach of Article 8 or 13 
of Regulation (~EC) No. 2081/92. 
(2) Section) 28(2) and (3) shall apply mutatis mutan­
dis. 
Limitation 
Sec. 136.-Claims under Section 135 shall come un­
der the statute of limitations according to Section 20. 
Chapter 3 
Authorization to Issue Legal Ordinances 
Detailed Provisions for the Protection of Individual 
Indications of Geographical Origin 
Sec. 137.-( 1) The Federal Ministry of Justice shall 
have the power to lay down by legal ordinance detailed 
provisions concerning individual indications of geo­
graphical origin in agreement with the Federal Ministry 
of Economics, the Federal Ministry of Food. Agriculture 
and Forests and the Federal Ministry of Health. and with 
the consent of the Federal Council. 
DE (2) The following may be laid down by legal ordi­
nance: 
1. the area of origin by reference to political or geo­
graphical borders: 
2. the quality or other properties for the purposes of 
Section 127(2). and their relevant circumstances. INDUSTRIAL PROPERTY 
LA WS AND TREATIES 
in particular the process or method of manufactur­
ing or producing the goods or of supplying the ser­
vices. or the quality or other properties of the basic 
materials used. such as their origif}. and 
3. the way the indication of geographical origin is 
used. 
In so doing. the existing fair practices and customs in 
using indications of geographical origin shall be taken 
into account. 
Other Provisions for the Procedure Concerning 
Applications, Requests and Oppositions 
Under Regulation (EEC) No. 2081192 
Sec. 138.-( 1) The Federal Ministry of Justice shall 
have the power to lay down by legal ordinance detailed 
provisions concerning the application. request and oppo­
sition procedures (Sections 130 to 133) without the con­
sent of the Federal Council. 
(2) The power to issue legal ordinances under subsec­
tion ( 1) may be transferred in whole or in part by the Fed­
eral Ministry of Justice to the President of the Patent 
Office by legal ordinance without the consent of the Fed­
eral Council. 
Provisions Implemenring Regulation 
(EEC) No. 2081192 
Sec. 139.-( I) The Federal Ministry of Justice shall 
have the power to lay down by legal ordinance further 
details of the protection of designations of origin and 
of geographical indications under Regulation (EEC) 
No. 2081/92 in agreement with the Federal Ministry of' 
Economics. the Federal Ministry of Food, Agricultur~ 
and Forests and the Federal Ministry of Health and with 
the consent of the Federal Council as far as required in 
consequence of Regulation (EEC) No. 2081/92 or of its 
implementing provisions issued by the Council or the 
Commission of the European Union. By legal ordinance 
under sentence 1 may be laid down in particular provi­
sions concerning 
1. the marking of the agricultural products or of the 
.. foodstuffs, 
2. the right to use the protected names. or 
3. the requirements and the procedure for supervising 
and inspecting the transfer, import or export. 
within the Com·munity. 
Ordinances under sentence 1 may also be laid down if the 
Member States are authorized to issue supplementary 
provisions under the Commmunity law provisions men­
tioned here. 
(2) The governments of the Liinder (states) shall have 
the power to transfer by means of legal ordinance the car­
rying out of the inspections required under Article 10 of 
GERMANY -Text 3-001. page 033 I;VDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
I Replacemenr .dleer -('Te\'f{}US (,uhllcation DECE.~IBER /995) 
Regulation (EEC) No. 2081/92 to approved private in­
spection bodies. or (0 involve such bodies in carrying out 
these inspections. The governments of the Liinder may 
also lay down by legal ordinance the requirements and 
procedure for the approval of private inspection bodies. 
They shall be authorized to transfer the power under sen­
tences I and 2 by legal ordinance in whole or in part to 
other authorities. 
PART 7 
PROCEDURE IN LITIGATION 
CONCERNING SIGSS 
Litigation Concerning Signs 
Sec. 140.-( I) For all actions whereby a claim arising 
out of one of the legal relationships regulated under this 
Law is asserted (litigation concerning signs). the District 
Courts [Landgerichre I shall have exclusive jurisdiction 
without regard to the value in dispute. 
(2) The governments of the LCinder shall have the 
power to designate by legal ordinance for the areas of 
several District Courts one such court to be in whole or in 
part the competent court for litigation concerning signs. 
provided that such designation serves the advancement in 
substance or the faster conclusion of the proceedings. 
The governments of the Liinder may transfer those 
powers (0 the Ministries of Justice of the Liinder. The 
Uinder may moreover transfer by agreement functions 
incumbent upon the courts of one of the Liinder in whole 
or in part to the competent court of another Land. 
(3) In cases of litigations concerning signs. the parties 
may also be represented before the court by attorneys-at­
law admitted to practice in the District Court before 
which the action. in the absence of a designation under 
subsection (2). would be heard. Sentence I shall apply 
mutatis mutandis in the case of representation before the 
Court of Appeal. 
(4) Any additional costs incurred by a party through 
arranging to be represented. as provided in subsec­
tion (3). by an attorney-at-Iaw not admitted to practice in 
the court hearing the case. shall not be refunded. 
(5) Of the costs arising from the collaboration of a 
patent attorney in litigation concerning signs. fees up to 
the amount of a full fee according to Section I 1 of the 
Federal Fee Ordinance for Attorneys-at-Iaw [Bundesge­
biihrenordnung fl~r Rechtsanwii/te] shall be refunded. as 
well as the necessary expenses of the patent attorney. 
\'enue for Claims Under this Law and 
Under the Law Against Unfair Competition 
Sec. J .. n. Claims concerning the legal relationships 
regulated under this Law and based on the provisions of 
GERi\1ANY -Tc)(t 3-001. page 034 IP/N/l/DEU/T/l 
Page 35 
ISDUSTRIAL PROPERTY 
LA WS AND TREATIES 
the Law Against Unfair Competition shall not be required 
to be asserted before the forum provided for in Section 24 
of the Law Against Unfair Competition. 
Reduction of the Value in Dispute 
Sec. I·n .-( I) If. in civil litigation whereby a claim 
arising out of one of the legal relationships regulated un­
der this Law is asserted by a law suit. a party satisfies the 
court that the awarding of the costs of the case against 
him according to the full value in dispute would consid­
erably endanger his financial position. the court may. at 
his request. order that the said party's liability to pay 
court costs be adjusted in accordance with a portion of 
the value in dispute that shall be appropriate to his finan­
cial position. 
(2) As a result of the order under subsection (1'), the 
favored party shall likewise be required to pay the fees of 
his atwrney-at-law only in accordance with that portion 
of the value in dispute. To the extent that the costs of the 
case are awarded against him or to the extent to which he 
assumes such costs. he shall be required to refund the 
court fees paid by the opposing party and the fees of the 
latter's attorney-at-Iaw only in accordance with that por­
tion of the value in dispute. To the extent that the extraju­
dicial costs are ordered to be paid by the opposing party 
or are assumed by that party. the attorney-at-law of the 
favored party may recover his fees from the opposing 
party in accordance with the value in dispute applying to 
the latter. 
(3) The request under subsection (l) may be declared 
before and recorded at the registrar's office of the court. 
It shall be presented before the substance of the case is 
heard. Thereafter. it shall only be admissible if the pre­
sumed or fixed value in dispute is subsequently increased 
by the court. Before the decision is given on the request. 
the opposing party shall be heard. 
PART 8 
PROVISIONS GOVERNING OFFENSES 
PUNISHABLE WITH IMPRISO~MENT OR FINES: 
SEIZURE ON I~lPORT OR EXPORT 
Chapter 1 
Pro .... isions GO""erning Offenses Punishable 
With Imprisonment or Fines 
Punishable Infringement of Signs 
Sec. 143.-( I) Any person who. in the course of trade. 
unlawfully 
l. uses a sign contrary to Section 14(2), No. I or 2. 
2. uses a sign with the intention of taking advantage 
of or of impairing the distinctive character or the 
DE IP/N/l/DEU/T 11 
Page 36 
INDUSTRIAL PROPERTY 
AND COPYRIGfrr -DECEMBER /995 
repute of a mark which has a reputation contrary to 
Sec [{on I~(:!). ~o. 3. 
3. affixes a sign contrary to Section l-t( -t). ~o. I. or 
oifers for sale. puts on the markeL stocks. impons 
or expons a packaging or wrapping or a means of 
mark.ing contrary to Section 1414). No. 2 or 3. inso­
far as third partIes would be prohibited from uSing 
the sign 
'clJ under Section I .. H2\. :\0. I or 2. 
I hI unQ\!r Secllon I ~I :!. \. :"0. 3. ana the act ,0; corn .. 
milled with the Imen£lon of ;.lIlowlOg: (he diS­
tinctive l:naracter nr the r~pule I){ a marK 
whIch has a reputation to be (;ll\en :lthantaee 
of or to be ImpaIred. -
J. uses a designatton or a sign contrary 10 Sec­
tion 15(2). or 
5. uses a designation or :l sign contrary to Sec­
tion 15(3) with the intention of takin2 advanla2e 
of or oi impaIring the dlstlOctl\e cha;acter or t~le 
reoute of a commercial desi gnJtion which has a 
reputation. 
,hall be punished by Imprisonment or up to three years or 
by :l fine. 
12) If the offender :lcts on a commercial basis. he ~haU 
be punIshed by impflsonment Pt' up to five ye:us or by :l 
fine. 
f 3) The attempt to (omm\( '\uch :In ofien'ie ,hall be 
punhhable. 
(-l) Where the cases referred to tn subsection (1) are 
applicable. the oHense shall only be prosecuted upon re­
quest unless in the opinion or the prosecution authority ex 
officiu intervention is required in view of the particular 
public interest in cnminal prosecution. 
(5) Objects implicated in the ot"fense may be confis­
..:ated. Secllon 74a of the Penal Code shall apply. \\ihere 
the claims to destruction reterred to in Section 18 are up­
held in proceedings under the Code of Criminal Proce­
dure with regard to the compensation of the injured pany 
(Sections 403 to 406c of the Code of Criminal Proce­
Jure I. the provisions on confiscation shall not be applica­
ble. 
16) In the case or' conviction. the sentence shall be 
published if the injured party so requests and if he has a 
legitimate interest in so dOing. The scope and nature of 
the public;}(1on shall be determined in the judgment. 
PlInishablt.? l.:'se of Indicallons of Geographicai Ori~lfl 
Sec:. I-I .. L-( \) Any person who. In the course of trade. 
unlawfully uses-an Indication or geographical origin. a 
name. an indication or a sign 
I, contrary to Sectlon I '27( \ \ or (2). ~Iso in conjunc­
tion wllh subsection t~)' or INDUSTRIAL PROPERTY 
LAWS AND TREATIES 
" with the intention of taking advantage of or of im­
pairing the reputation or the distinctive character 
of an indlcJtlon of geographical origin contrary to 
Section 127(3). also In conjunction with subsec­
tion(4). 
~hall be punished by imprisonment of up to two years or 
b:-a fine. 
(2) Any person ~ ho unlawfully uses. in the course of 
trade. a ~eogr;J.phlc:lllndlcatlon or a designation or origm 
rrotected under the k2.al provisions of the European 
Community sh:lll be pU~Jshed in the same way insofar as 
In ordmance under subsection 161 refers to this penal pro­
\ Ision in connection wllh a specific offense. 
13) The attempt re ~ommlt such an oirense ,hall be 
punishable. 
\ ~) In the case of conviction. the court shall order that 
the unlawful marking ot" the objects which are in the pos­
,ession of (he conVicted person be removed or. if this is 
not pOSSible. that the OOJects be destroyed. 
IS) If a sentence is awarded. its publication shall be 
ordered if [hiS b neC~SSJry In (he public interest. The 
'\cooe :lnd n;lture ot lhl:! publi(:lllOn shall be determined in 
the Judgment. 
d)1 The F::!der.11 \1tnlstry ot Jusllce shall have power 
to determtne b\ le2.:li urdlOance ;lnd without,the consent 
l)t the Federal 'Cou""ncll the otfenses punishable as crimi­
nal offenses under subsection 1.2) insofar as this is neces­
sarv in view of implementing the protection of 
ge~grJphical indications and designations of origi~ pro­
v Ided in legal provisions of the European Community. 
Pro\';sions GO\'uninr: Fines 
Sec. 1-15.-1 I) An administrative offense shall be 
deemed to be committed by any person who. in the course 
of trade. uses for marking goods or services, in identical 
or counterfeit form. 
1. armorial bearings. flags or other emblems of a State 
or the armorial bearings of a locality or an associa­
tion ot" commuOlties or an association of other 
communal entlties within the country within the 
meanin2 of Sectlon 8e 2). :\0. 6. 
2. official-signs and hallmarks wllhin the meaning of 
SectIOn 8(1). :--';0. 7. or 
3. other sians. seals or designations within [he mean-
ing of S~ction ~(~), :"0. 8. 
12) An admtnistrative offense shall be deemed to be 
committed by any person who. willfully or negligently. 
I. contrary (0 Section 134(3), also in conjunction 
with subsection I~). 
(cl) does not permit the entering or inspection of 
bUSiness premlses and real propenies. sales 
l)utletS or means or transporl. INDUSTRIAL PROPERTY 
~VD COPYRIGHT -DECEMBER 1995 
I h I does not displJ.y the a~rtcultural produ-':l<; or 
foodsturfs lO be inspected SO:IS (0 make I[ po~­
slble for the inspectIon [0 be carried out In dUe! 
form. 
le J fails to provide the necessary assistance in the 
l:ase of inspections. 
I J J does not permit the taking of samples. 
. t' I ooe~ not "ubmll bUSiness r~cords nr line" not 
,uDmll them In tullor oues not permll th~lr t!x.­
J m In;.l[ Ion. I~ ~ 
I! I fJils In "uoply inr"ormJlIon l)r dtJ~:'\ nOI \uppl~ 
It (orrectl~ or fully or 
~ (.·onrra\enes ~ln ordinance i,,\ued under S\!ctlon 
\ .~UI 11 prO\ Ided It refers 10 thl' rrovI'lOn ~')\t.'rn­
Ing: Itne~ In ~onnecllon \\\lh ~ "peclilc Olll!nse. 
'.~ I The aLimlnhuallve ('If!!n\\! m~y be! punt"hed h~' a 
lIne ot' up to DE~\ 5.UOO In the cases referred to In ~ub~ 
,e!ctlon I 11. Jnd by a fint! of up to DEM 20.000 in the 
.::.lses referred ro In subsecllon t 2). 
·...ll In th~ L';.he'i relerred 11) in ,ut'lscctll'n I \1. S.:c· 
: Ilm I ~~I ~ t .,hall ;,tpp[~ fll/llJIIS lIf1tfuI/Uf.\'. 
Chapfer 2 
Seizure of (ioods un Import or E"port 
St'c. [·16.-( I) Goods which unlawfully bear a mark or 
a l:ommerciJI de'>lgnJ[lon protecred by this LJ\v ... hall be! 
,ublect. upon retjut!st by the holder of the nghh ;Jnd 
..!~;'lIn';,( hl\ "'I!CUrJl~. to ,elzure by the customs Juthorltle ... 
,In Im~un \lr I!x.pon. In those cases \\here the Intrlnge­
mt!nt h ohvlous Jnd unkss C,-,uncII Reguiatlon I EECI 
\0. 38-l2/86 of December I. 19X6. Laying Do'Wn ~tea~ 
"ures to Prohibit the Release for Free Circulation of 
Counterfeit Goods (01 EC ~o. L 357. p. I) applies. Thi5 
provision shall apply in trade with other Member States 
\Jc the European Lnion as well as the other ContraClIn!! 
States of the Convention Concerning the Europe::ln Eco~ 
nomic Area only insofar as controls are carned out by the 
customs authorllies. 
12) \\there the customs ;luthorities order a !'Ieizure. 
they ,hall advise rhe person enlltled to dispose ;lnd the 
petitioner ther!!of "" ilhout delay. The ongin. I-luantity ano 
place ot' "torage of the goods_ together v. ith the name and 
.Iddress of the person entitled to dispose. shall be commu­
nJcatt!d to the petitioner. The secrecy of correspondence 
.md mar! (SeclIon I () of the Basic Law I GrunJI!t'st:r: I J 
..,hall be restricted to-that extent. The petitioner shall be 
:;iven the nppurtunny to inspect the goods , .. here \uch in­
",oe!cllon does not constitute a hreach (It' commercIal or 
[rJde secrecy. 
GER~lA;\Y -Text j·I)OI. O;.l2.e U36 IP/N/l/DEU/T/! 
Page 37 
INDUSTRIAL PROPERTY 
LA WS AND 1"RBI'.11ES 
CUlljiSCulWf1: 0ppoSlTlvn: Rt'leQse 01 Guocis Seized 
Sa. j.·J7.-1 I) Where no Opposition to the seizure is 
made. at the latest within twO weeks or servIce of the no­
tification under Section 146(2). sentence 1. the customs 
;1uthorities shall order confiscallon ot the seized goods. 
12) If the person entitled (0 dispose opposes seizure . 
the L'u\toms authort{tes "hJ.11 Jnlorm the petitioner with~ 
• .'U[ lIdJy. The pe[Jlloner shall be required 10 declare [0 
:he customs authOnlles Without delay whether he main­
l..lIns the request unl.ler S~cl\on l-lhl 1I in respect of the 
'~Ized goods. 
()) If the petitioner \~ Ithdraws his request. the cus~ 
iI)m-; ;,iuthorltle" ... hallllt't the "etzure \\t{hout delay. If the 
~l'(Jlloner maJn[alns hl~ reljue'il ;wd 'iuhmns an execu(­
.tble court dt!clslon ordering the Impoundmg of the seized 
:;oods or limitation of the right to dispose. the customs 
Juthonties shall take the necessary measures. 
'-l) Where neither at the cas~s reierred to in subsec~ 
i lIlO I.; I i" J.pplicable. the CU~lOm) authorities snail lift the 
,,':l/urt: on (he t!\ptr~ el( I\~ 0 \\ eeb alter ~ervice of (he 
1lI)[It'ic::lllOn on the petJlioner under ",ubsection (2). Where 
the rctltlllner (an ,h~)\\ that J. (oun Jeci ... lon under ~ub~ 
'~ctlon 1 _~ I. "t!ntencc 2. hJ~ been rCL\ue!'lted. but has not 
~.t:t been recel\ed. the "Clzurc ~hJll be maintained for a 
I urthcr IWI) weeb at th~ mu ... !. 
Compt'({,II('C: Rl'IIIt.'£ilCS 
Sec. 1.J8.-( 1) The request under Section 1-l6(1) shall 
be submitted to the ReQ.ional Finance Office [Ober­
jinan:dlrekrion I and be et'fective for (WO years unless a 
,horter penod of val idilY has been requested. The request 
may be repeated . 
12) The CO'i( ot official acts rc-tated 10 the request shall 
be charged to the petitioner in accordance with Sec~ 
tlon t 7~ 01 the FiscJ.t Code I Ah~Qhennrdnlln.~ I· 
(3) Seizure and confiscation may be opposed by the 
leeal remedies allowed b'r' the fixed penalty procedure 
un"der the Law on ~tino; Offenses IGeser; uber Ord~ 
1I111/~swidri~keilelll in respect or seizure ~md confisca~ 
tion. The petitioner shall be heard in the review 
proceedings. An immediate appeal ,hall lie from the 
Jecision of the LocJ.1 Court {AmtSt?l'rtrhrj. The immedi~ 
ate appeal shall be heard by the Higher Regional Coun 
I Oherlandes~erichr \. 
Dama'Us in rhe Case of L'1I)lIsfllied S"i:ure 
St'[. /.J9. Where the seizure proves 10 have been un­
justIfied from the beginning and if the petitioner has 
maintained the r~quest under Section 1-l6( I) in respect of 
the '>t!lzed \!OOlh ur has nut made a oeclaration without 
Jelay I Sect;lln I ~ 7t 21. ~~ntence 2 t. he ~hall be required to 
n.e IP IN Il/DEU/T / 1 
Page 38 
INDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL 1996 
(Replal·ement sheet -rre\'/ous puh/lcarinn DECEMBER 1995) 
compensate the damages that seizure has occasioned to 
the person entitled to dispose. 
Sei:ure Under Regulation (EEC) No. 3842186 
Sec. 150. In proceedings under the Regulation men­
tioned in Section 146( 1). Sections 146 to 149 shall apply 
mlllatis mutandis unless otherwise provided by the Regu­
lation. 
Sei:ure in the Case of Unla~\JiJI A-Iarkiflg 
With Indicallons of Geographical Origin 
Sec. J 5 J .-(1) Goods which unlawfuIly bear an indica­
tion of geographical origin protected by this Law or by 
provisions of the European Community shall be subject. 
on import. ex.port or in transit. to seizure for the purpose 
of removing the unlawful marking where the infringe­
ment is obvious. This provision shall apply in trade with 
other Member States of the European Union as well as 
the other Contracting States of the Convention Concern­
ing the European Economic Area only insofar as controls 
are carried out by the customs authorities. 
(2) The seizure shall be carried out by the customs 
authorities. The customs authorities shall also order the 
measures necessary in order to remove the unlawful 
marking. 
(3) If the orders of the customs authorities are not 
complied with or if the removal is impracticable. the cus­
toms authorities shall order confiscation of the goods. 
(4) Seizure and confiscation may be opposed by the 
legal remedies allowed by the fixed penalty procedure 
under the Law on Minor Offenses in respect of seizure 
and confiscation. An immediate appeal shall lie from the 
decision of the Local Court. The immediate appeal shall 
be heard by the Higher Regional Court. 
PART 9 
TRANSITIONAL PROVISIONS 
Application of this Law 
Sec. 152. Unless otherwise provided hereinbelow. the 
provisions of this Law shall also apply to trade marks in 
respect of which an applicaton has been filed or which 
have been registered prior to January 1. 1995. or which 
have been acquired through use in the course of trade or 
through notorieJY. and to commercial designations pro­
tected under the applicable provisions prior to January 1. 
1995. 
DE INDUSTRIAL PROPERTY 
LA WS AND TREA TIES 
Restriclions on the Assertion of 
Claims for Infringement 
Sec. 153.-(1) Where the proprietor of a trade mark 
registered prior to January 1. 1995. or a trade mark or 
commercial designation acquired prior to this date 
through use or notoriety was not entitled under the provi­
sions applicable at that time 10 any claims for infringe­
ment against the use of the trade mark. the commercial 
designation or an identical sign. the rights resulting from 
the trade mark or the commercial designation under this 
Law cannot be asserted against the continued use of the 
said trade mark. commercial designation or sign. 
(2) Section 21 shall apply to claims of the proprietor 
of a trade mark registered prior to January 1. 1995. or a 
trade mark or commercial designation acquired through 
use or notoriety prior to this date provided that the period 
of five years specified in Section 21(1) and (2) shall be­
gin on January 1. 1995. 
Rights in rem: Enforcement; 
Proceedings in Bankruptcy 
Sec. 154.-( I) Where. prior to January 1. 1995. the 
right conferred by the application for. or the registration 
of. a trade mark has become the subject of rights in rem 
or where the right conferred by the application or regis­
tration has been the subject of enforcement measures. the 
said rights or measures may be entered in the Register 
under Section 29(2). 
(2) Subsection ( I) shall apply mutatis mutandis if the 
right conferred by the application for. or registration of. a 
trade mark is implicated in proceedings in bankruptcy. 
Licensing 
Sec. 155. Section 30 shall apply to licenses granted 
prior to January I. 1995. under the right conferred by the 
application for, or the registration of a trade mark, by the 
use thereof or notoriety of a trade mark provided that the 
said licenses shall benefit from the effect of Section 30( 5) 
only insofar as the rights were transferred. or the licenses 
were granted to third parties after January 1. 1995. 
Examination of Trade Mark Applications 
as to Absolute Grounds for Refusal 
Sec. 156.-t 1) If a sign was filed prior to January 1. 
1995. which under the provisions heretofore in force was 
ex.c1uded from registration for reasons the PateOl Office 
had to take iOlo a-ccount ex officio. but which is not ex­
cluded from registration pursuant to Sections 3, 7, 8 or 10 
of this Law. the pro·visions of lhis Law shall be applied 
provided that the application shall be deemed to have 
been filed on January 1. 1995. and that. irrespective of 
GERMANY -Text 3-001. page 037 INDUSTRIAL PROPERTY 
A.ND COPYRIGHT -APRIL 1996 
, Replacement shut -/1rniollJ f1uhlic(](/()1I DECEJfBER /995) 
the original filing date and of any claimed priority. Janu­
ary I. 1995. shall be decisive for the determination of the 
seniority for the purposes of Section 6(2). 
(2) If. upon examining the trade mark application. the 
Patent Office concludes that the requirements of subsec­
tion (I) are complied with. it shall notify the applicant 
accordingly. 
(3) If the applicant notifies the Patent Office within a 
period of two months after the date of service of the noti­
fication under subsection (2) that he agrees to the post­
ponement of seniority for the purposes of subsection ( I ,. 
the application for the sign shall be further processed as 
an application for a trade mark under this Law. 
(4) If the applicant notifies the Patent Office that he 
does not agree to a postponement of the seniority for the 
purposes of subsection ( 1 ). or if he does not make a state­
ment within the period specified in subsection (3). the 
Patent Office shall reject the application. 
(5) The applicant may also make the statement under 
subsection (3) in objection proceedings. appeal proceed­
ings or proceedings on appeals on a point of law dealing 
with the rejection of the application and pending on Janu­
ary 1. 1995. Subsections (2) to (4) shall apply mutatis 
mutandis. 
PublicQtion and RegistraTion 
Sec. J 57. If the publication of an application pur­
suant to Section 5( I) of the former Trade Mark Law was 
decided prior to January 1. 1995. but the application has 
not yet been published pursuant to Section 5(2). of the 
fonner Trade Mark Law. the trade mark shall be regis­
tered pursuant to Section 41 \vithout previous publica­
tion. If the fee specified in Section 6a(2) of the former 
Trade Mark Law has already been paid for a request for 
accelerated registration filed after the decision to pub­
lish. the fee shall be refunded ex officio. 
Opposition Proceedings 
Sec. J 58.-( 1) If the application for a trade mark under 
Section 5(2) of the former Trade Mark Law or the regis­
tration of a trade mark under Section 6a(3) of the for~er 
Trade Mark Law in conjunction with Section 5(2) of the 
former Trade Mark Law was published prior to Janu­
ary I. 1995. oppositions lodged within the period speci­
fied in Section 5(4) of the former Trade Mark Law may 
be based on the grounds for opposition under Sec­
tion 5(4) of the former Trade Mark Law as well as on the 
grounds for opposition under Section 42(2). If no opposi­
tion is lodged within the period specified in Section 5(4) 
of the former Trad~ Mark Law. the trade mark shall be 
registered pursuant to Section 41. unless the trade mark 
has been registered under Section 6a( 1) of the former 
GERMANY -Text 3-001. page 038 IP/N/l/DEU/T/1 
Page 39 
I~DUSTR(AL PROPERTY 
LA WS AND TREATIES 
Trade Mark Law. Opposition under Section 42 shall not 
lie from such registration. 
(2) If opposition under Section 5(-l) of the former 
Trade Mark Law was lodged prior to January 1. 1995. to 
the registration of a trade mark published under Section 
5(2) of the former Trade Mark Law or registered under 
Section 6a( 1) of the former Trade Mark Law. or if an op­
position under subsection (1) is lodged after January I. 
1995. the grounds for opposition according to Sec­
tion 5(4). Sos. 2 and 3. of the former Trade Mark Law 
shall be further applied. provided that the opposition was 
based thereon. If the opposition was based on Sec­
tion 5( 4). No. 1. of the former Trade Mark Law. the pro­
vision of Section 42(2). ~o. I. shall apply instead of this 
provision. 
(3) If in proceedings concerning an opposition lodged 
prior to January 1. 1995. the use of the trade mark on the 
basis of which opposition was lodged has been contested 
or if use is contested in such opposition proceedings. Sec­
tion 43( 1) shall apply mutatis mutandis instead of Sec­
tion 5(7) of the former Trade Mark Law. Sentence I shall 
also apply to appeal proceedings before the Patent Court 
in cases where such proceedings are pending on Janu­
ary 1. 1995. Sentence I shall not apply to appeals on a 
point of law pending on January 1. 1995. 
(4) If the opposition is rejected. the trade mark shall 
be recorded in the Register pursuant to Section 41 unless 
the trade mark has been registered pursuant to Section 
6a( I) of the former Trade Mark Law. Opposition under 
Section 42 shall not lie from such registration. 
(5) If the opposition to an application published under 
Section 5(2) of the former Trade Mark Law is allowed. 
registration shall be refused. If the opposition to a trade 
mark registered under Section 6a( 1) of the former Trade 
Mark Law is allowed. the registration shall be cancelled 
under Section 43( 2). sentence l. 
(6) In the cases referred to in subsection (1). sentence 2. 
and subsection (4). sentence 1. the application shall not be 
rejected because of grounds for refusal to be taken into 
account ex officio. 
Division of an Application 
Sec. 159. Section 40 shall apply to the division of an 
application published prior to January 1. 1995. pursuant 
to Section 5(2) of the fonner Trade Mark Law. provided 
that the division may be declared only after the expiration 
of the time limit for lodging opposition and that the dec­
laration shall only be admissible if an opposition pending 
on the filing dale of the request would be directed after 
division only against one of. the parts of the original ap­
plication. The part of the original application not affected 
by opposition shall be registered pursuant to Section 41. 
Opposition under Section 42 shall not lie from such regis­
tration. 
DE IP IN 11IDEU IT 11 
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ISDUSTRIAL PROPERTY 
AND COPYRIGHT -APRIL /996 
(Rl!plurem~"( Jhel!l- f'Tt'\,W1U p"hhcu(lOfl OECE.HBER 19951 
Period of Protecrion and Renewal 
Sec. 160. The provisions of this Law concerning the 
period of protection and renewal of the registration (Sec­
tion 47) shall also apply to trade marks registered prior to 
January 1. 1995. provided that. if the period of protection 
under Section 9(2) of the former Trade Mark Law expires 
prior (0 January I. 1995. the provisions of Section 9(2) of 
the former Trade Mark Law shall still apply to the calcu­
lation of the time limit 'Within which the fees for the re­
newal of the period of protection of a registered trade 
mark can effectively be paid before they fall due. 
Cancellation of a Regisrered Trade Mark 
on rhe Grounds of Re\'ocat;oll 
Sec. 161.-( I) If a request for cancellation of the regis­
tration of a trade mark under Section 11 (4) of the former 
Trade Mark Law was filed with the Patent Office prior to 
January I. 1995. and if the time limit for lodging opposi­
tion (0 the cancellation. specified in Section IlC 4). sen­
tence 3. of the former Trade Mark Law has not expired on 
January 1. 1995. the time limit shall be two months. 
(2) If an action for cancellation of the registration of a 
trade mark under Section II( I). No. 3 or 4. of the former 
Trade Mark Law was instituted prior (0 January I. 1995. 
the registration shall only be cancelled if the action is al­
lowed both under the provisions heretofore in force and 
under the provisions of this Law. 
Cancellation of a Registered Trade Mark 
Because of Absolute Grounds for Refusal 
Sec. J 62 .-( I) If the proprietor of a trade mark was no­
tified prior to January I. 1995. that the registration of the 
trade mark is to be cancelled under Section 10(2). No. 2. 
of the former Trade Mark Law. and if the time limit for 
lodging opposition to the cancellation specified in Sec­
tion 10(3). sentence 2. of the former Trade Mark Law has 
not expired on January I. 1995, this time limit shall be 
two months. 
DE INDUSTRIAL PROPERTY 
LA WS AND TREA TIES 
(2) If proceedings for cancellation of the registration 
of a trade mark because of the existence of absolute 
grounds for refusal under Section 10(2). No. 2. of the 
former Trade Mark Law were instituted ex officio prior to 
January 1. 1995. or if a request for cancellation under that 
provision was filed prior to that date. the registration 
shall only be cancelled if the trade mark is not protectable 
under the provisions heretOfore in force or under the 
provisions of this La ..... This shall also apply to pro­
ct!edings instituted aher January I. 1995. under SeC­
tion 54 in view of the cancellation of the registration of a 
trade mark recorded prior to January I. 1995. 
Cancellation of a Registered Trade Mark 
Due to Earlier Rights 
Sec. 163.-( I) If an action for cancellation of the regis­
tration of a trade mark was instituted prior to January I. 
1995. on the ground of an earlier application under Sec­
tion Il( 1). No. 1. of the former Trade Mark Law. or on 
the ground of any other earlier right. the registration 
shall. unless otherwise provided in subsection (2). only 
be cancelled if the action is allowed under the provisions 
heretofore in force as well as under the provisions of this 
Law. This shall also apply to an action instituted after 
January l. 1995. under Section 55 in view of the cancel­
lation of the registration of a trade mark recorded prior to 
January 1. 1995. 
(2) Section 51 (2). sentences 1 and 2. shall not apply to 
the cases referred to in subsection ( I). sentence 1. In the 
cases referred to ill subsection (I), sentence 2. Sec­
tion 51(2). sentences I and 2. shall apply provided that 
the time limit of five years shall commence on January I. 
1995. 
Objecrion and Direct Appeal 
Sec. 164. The provisions of (his Law shall also apply 
to objections raised prior (0 January I. 1995. provided 
that the lime limits of six months and 10 months specified 
in Section 66(3). sentences I and 2, shall commence on 
January 1. 1995. 
GERMANY -Text 3-001. page 039 