More information:

http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20090126.html


09.12.2004 - Extension of the provisional regulations for opposition proceedings before the Federal Patent Court until June 30, 2006

Opposition proceedings against German patents will continue to take place before the Federal Patent Court - the time limit for this provision was extended from December 31, 2004 until June 30, 2006. Originally, § 147 (3) of the German Patent Law (PatG) had stipulated that the Federal Patent Court was to rule on all oppositions filed by December 31, 2004. This provisional regulation has now been extended until June 30, 2006 (BGBl I, No. 66, p. 3232). Legislators assume that by this date new regulations regarding opposition proceedings will be in force.


Federal Patent Court confirms permissibility of provisional trademark application as called for by DTS!

With its decision of July 8th, 2003 the 33rd Senate of the Federal Patent Court confirmed the permissibility of "provisional trademark applications", a means conceived by DTS for securing a filing date for trademark applications. The decision finally put an end to the ongoing discussion between the trademark division of the German Patent and Trademark Office (GPTO) and DTS as to the acceptability of provisional trademark applications.

In contrast to patent applications, no earlier rights are searched for or even reported where German trademark applications are concerned. On the contrary, the German trademark system leaves it to the applicant to settle disputes with owners of colliding trademarks in opposition proceedings or even before the courts. In other jurisdictions, such as the Community Trademark System, the applicant is informed about earlier rights; in the US, the USPTO even cites earlier rights in the registration proceedings.

Therefore, it can be both risky and expensive to register a trademark in Germany without having carried out an accurate search for earlier rights. As German case law interprets an application for registration of a trademark as a sign or hint of intended use of this trademark for the goods and services applied for, the owner of earlier rights is even in a position to start a court action against the applicant.

However, an accurate search is usually not possible at the time of application since it usually takes about four to five weeks until the data in the searchable databases is brought up-to-date. This four to five week time gap can make all the difference: It is surprising how many filing dates differ by only a few days ...

Further, an applicant may want to provisionally register different signs allowing him the flexibility to decide which application is to be registered and used in the end.

Consequently, DTS conceived an instrument for German trademark applications called provisional application. Herein, a trademark application is filed with the broadest list of goods and services possible, i.e. "all possible goods and services, classes 01 to 45". No official fees are paid at the time of application; the term for paying the official fees is three months from the date of filing. Within this period of time all databases are usually brought up-to-date, reflecting all applications filed on or before the filing date in question so that a reliable search for earlier rights may now be carried out. Before expiry of the three-months-term, a precise list of goods and services is filed and the fees for the relevant classes are paid.

Thus, it is possible to avoid both conflicts with earlier rights and unnecessary costs. If conflicting earlier rights are found it is possible to abandon the application without having incurred the costs of an entire application.

The GPTO disliked this procedure since it meant more work for the Examiner - who would have to look at the file twice. Thus, the GPTO rejected a provisional application on the grounds of an incomplete list of goods and services and therefore not being entitled to a filing date. DTS argued that there could be no more specific a list of goods and services as the one used in the provisional application. Any third party examining the application can be sure that there is not a single item of goods or services not included in the application.

Since the GPTO did not follow this line of argumentation, the case was forwarded to the Federal Patent Court (FPC). The 33rd Senate ruled that a provisional application is indeed entitled to a filing date since it is unambiguous and unquestionable which goods and services are included in the application - and that is all goods and services.

As a result, the FPC ruled that the provisional application fulfills all requirements for the allocation of a filing date and therefore is a suitable means to apply for trademark rights in Germany in a legally secure and cost effective way (more information: marken@dts-law.com or from the author +49-89-219996-0). Robert Schnekenbühl.