Cancellation of a German or European trademark

1. For what reasons can a German trademark be cancelled?

There are actually two types of procedure that come under the generic term of ‘trademark cancellation proceedings’. The rights of the proprietor of an German or EU trade mark can be revoked and a trade mark can be declared invalid. The difference is that revocation applies as from the date of the request, whereas a declaration of invalidity removes the registration from the EU trade mark Register with retroactive effect.

A German or EU trademark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in connection with the goods or services in respect of which it is registered. Further, a German or EU trademark shall be liable to be declared invalid (a) if it is identical with an earlier trademark, and the goods or services for which the trademark is applied for or is registered are identical with the goods or services for which the earlier trademark is protected; or (b) if because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trademark. Further a registered trademark may be declared invalid in case of other prior rights, such as company names or domain names. For more info, please contact one of our European trademark attorneys in Munich, Germany.

Depending on the ground of cancellation, the request for cancellation must either be filed with the GPTO or with a competent trademark court in Germany. Contrary, the EUIPO handles both types of trademark cancellation proceedings.

2. What are the costs of trademark cancellation proceedings?

Trademark litigation proceedings are held before a public court, wherein the court fees and attorney fees are calculated depending on the amount in dispute. The underlying party has to bear the cost of the proceedings, including the cost of the other party. The amount in dispute is typically set to about € 50,000 or € 100,000 € by the court. Based on a value of € 50,000, the cost risk for the first instance (District Court) is approximately € 14,000 and for the second instance (Court of Appeal) around € 16,000. In case of a value of € 100,000, the cost risk will be about € 19,000 and € 22,000 for the first and second instance, respectively.

If you have any questions about trademark cancellation proceedings, please do not hesitate to contact us. Our German patent attorneys and trademark attorneys in Munich will be happy to advise you.