deletion request at DPMA
The request for deletion due to a claim, can happen for the following reasons:
The filing of a deletion request is a scale charge of EURO 300, -. In order for the request to be considered, the fee must be paid. However, nothing prevents the DPMA to carry out the deletion procedure even if the fee is not paid, (Paragraph 50, Clause 3, Trademark Law.)
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There are different kinds of deletion requests. There is the request for deletion of a trademark due to renouncement, expiry and absolute protection obstacles. In addition a request for deletion is possible because of a registration of the trademark in bad faith.
According to Paragraphs 64, 44, 43, Clause 1, Trademark Regulations, one can only place a revocation request in writing using the forms provided by the DPMA office.
The requests for deletion because of expiry and the request for deletion because of absolute protection obstacles can be placed by anyone because it is a public proceeding. For the deletion request due to renouncement, the consent of the trademark owner must be obtained.
One can request a deletion if the absolute protection obstacles, (Paragraphs 3, 7 and 8, Trademark Law) are specified in Paragraph 50, Trademark Law. Paragraph 50, Clause 2 and 3, Trademark Law, limits the possibility of asserting the claim of absolute protection obstacles through a deletion request. According to Paragraph 50, Clause 2, NR. 1, Trademark Law, the deletion can only be demanded, if the protection obstacle still exists at the time of the decision over the request for deletion.
From the deletion request, actual changes are seized, which make a later registration possible. In particular, trademarks that became synonomouse with the product itself, (Paragraph 8, Clause 3, Trademark Law) and only became registered afterward, even though, according to Paragraph 8, Clause 2, NRS. 1-3, Trademark Law, they have characteristics that would not allow a registration. These trademarks cannot be deleted by a deletion request.
In case the deletion request is based on one of the protection obstacles, (Paragraph 8, Clause 2, NRS. 1-3, Trademark Law) the entry can only be deleted if the request for deletion is placed within ten years from the day of the entry. For a deletion due to a registration in bad faith, there is no temporal limitation.
The term 'in bad faith' is to be understood as an immoral acquisition of the trademark laws. Reference points for a use in bad faith are present mostly if to the applicant is aware that third parties use the brand, either as its own brand (without formal protection), or for example in a descriptive way. Especially with new technical brands that became famous, which under certain circumstances the DPMA is not aware of. The registration of such brands can be seen as monopolizing the market.
Additional unfairness criteria can also result from a previous contractual relationship of the parties and from the registration of a multiplicity of obstructing brands.
The fact that the registration takes place in knowledge of the describing character of the trademark, does not alone justify 'in bad faith'. With the establishment of the overall view of the abusive trademark request, the above criteria can support the meaning. Several deletion reasons can be made cumulatively valid.
deletion claim at DPMA
- The trademark was not used in accordance with Paragraph 26, Trademark Law.
- The trademark was developed after registration into a brand that is so strong that it becomes synonymous with the product.
- The trademark was developed after the registration into a deceptive trademark.
- The owner of the trademark no longer fulfills the necessary conditions concerning Paragraph 7, Trademark Law.
deletion request - filing & procedures
The DPMA informs the trademark owner about the deletion request. The trademark owner can then oppose the request for deletion. This leads to the execution of the deletion procedure in court, (Paragraph 54, Trademark Law.) If the trademark owner does not oppose the deletion request within the set period, the trademark is deleted without special examination.
An objection can be permitted against the decision of the DPMA. If the deletion request is withdrawn, the procedure cannot simply continue as an official deletion procedure. However, after conclusion of the filing procedure, the DPMA has the discretion to decide whether it will continue with the deletion procedure. The decision in the official deletion procedure arises between the parties because of the final legal verdict. It is still possible for a third party to later apply for a deletion request.
community trademark law
Against community trademarks, which collide with older community trademarks, (or older rights of national trademarks) request for declaration of nullity can be placed with the office for harmonization for the domestic market (OAMI).
After 5 years of tolerating a not-in-bad faith registered community trademark, the claim on declaration of nullity from older trademark rights is lost. Counteraction is possible in an infringement suit, (article 52 GMVO.)
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