Cancelling a trademark
Cancelling a trademark.
A trademark which has been successfully entered in the trademarks register can be removed for a number of reasons. Whether an application to the German Patent and Trademark Office or to the court needs to be made, depends on the reason for cancelling the trademark.
Trademarks can be cancelled based on the following grounds:
1) Revocation – an application can be made to cancel a trademark where it has remained unused (§ 49 Trademark Act)
2) Impediments to protection (§ 54 Trademark Act)
3) Existence of older rights (§ 55 Trademark Act)
The procedure for cancelling a trademark as a result of the existence of older rights takes place at the German Patent and Trademark Office. The trademark office can act on its own initiative or an application can be made, for which a fee of €300.00 is payable.
If you wish to use the German flag as a trademark for your black, red and gold textiles you may well encounter an impediment to obtaining protection. Paragraph 8 sub-paragraph 2 no. 6 states that the following trademarks are excluded from receiving protection: “[those] which contain state coats of arms, state flags or other sovereign state symbols or coats of arms of a domestic locality or of a domestic municipal or other local authority association”
Where the proprietor of a trademark objects to an application for cancellation made to the German Patent and Trademark Office on the grounds of revocation or the existence of an older right, the applicant is informed that the application must instead be made to the court (§ 54 sub-paragraph 4 Trademark Act).
For example, should you wish to use the trademark “Maggi” to represent a spice paste, you will most likely encounter objections from the proprietors of the older trademark “Maggi”, which is already used to describe a wide ride of spice products. In this case the registered trademark owned by Nestlé would be a barrier to registering the newer trademark.
If you need to make an application to have a trademark cancelled or if an application has been made to cancel a trademark you own, we are available to offer legal advice on how to proceed.
Would you like to register a trademark? Do you have general questions about trademark law? We are here to help.
German lawyer Kilian Kost and the expert team at WILDE BEUGER SOLMECKE are available to answer your questions. Call us on 0221 / 951 563 0 (Beratung bundesweit).