deletion suit
A deletion suit can be heard before the ordinary courts, for the reasons of rights violations, stated in Paragraph 49, Trademark Law, or due to the existence of older rights in accordance with Paragraph 51, Trademark Law.
The claims can be in general, forced through deletion requests at the DPMA, (Paragraph 53, Trademark Law) however, if the trademark owner opposes the deletion, the procedure will still go before the ordinary courts, (Paragraph 53, Clause 4, Trademark Law.)
It is always advisable, therefore, to make the reasons for the claim legally valid because of the pre-procedure tactics of the trademark owner in case he defends himself against the deletion request. A deletion request through the DPMA, only means that time is lost unnecessarily.
The official deletion procedure is appropriate if one does not expect an objection from the trademark owner, for example, if in the meantime he stopped has stopped his activities. If the deletion request is rejected then it becomes invalid due to the existence of older rights, (Paragraph 51, Trademark Law.) It is only then that it is possible for the deletion suit to go before the ordinary courts, assuming that the opposition period with the DPMA already expired.
Paragraph 49, Trademark Law, outlines the following reasons for a claim:
- The non-use of the trademark, (Paragraph 49, Trademark Law.)
- The transformation into a common designation due to the attributive behavior of the trademark owner, (Paragraph 49, Clause 2, NR. 2, Trademark Law.)
- The deceptive use of the trademark with the approval of the owner, (Paragraph 49, Clause 2, NR. 2, Trademark Law.)
- The conditions for ownership cease to apply, (Paragraph 49, Clause 2, NR. 3, Trademark Law.)
The most common reason for a claim, however, is the non-use of a trademark.
A deletion because of a claim for rights, is known as a so called "Popularklage", that is, everyone can raise a claim. It depends neither on a competition relationship between the parties, nor on an intended or actual use of the trademark that is being disputed by the plaintiff. It is also insignificant whether there is an interest of the public in the deletion of the trademark due to the fact that there was an obvious possibility for deception through that trademark.
Deletion suits due to a claim or because of the existence of older rights have to be against the registered owner, or his legal successor, (Paragraph 55, Clause 1, Trademark Law.) In addition to that suit, a claim against a non-registered trademark owner, is permissible and advisable.
The deletion suit due to the existence of older rights is justified if the trademark was not used within the last five years, or not used to a sufficient extent. Also, next to that 5-year non-usage period after licensing, every other continuing or still continuous 5-year period in which the trademark was not used, comes into consideration. The plaintiff of the deletion suit is responsible for providing the evidence for the non-use of the trademark. The plaintiff meets his responsibility by stating in detail, with which means he tried to acquire the goods and/or services marked by the trademark in dispute.
The regional courts are exclusively responsible for deletion suits. The question of which regional court is responsible, depends on jurisdiction. With foreign trademark owners, who do not have a domestic area of jurisdiction, the suit can be held in the jurisdiction area of the domestic representative of the trademark owner, (Paragraph 36, Clause 3, Trademark Law.) If there is no domestic representative, the regional court, Munich I, is responsible, since the seat of the DPMA is there.
The request for the claim is directed toward consent into the deletion. When the verdict is final, the consent of the trademark owner is fictitious.
If the trademark is deleted due to a claim, the deletion retroacts only to the time of the raising of the suit, (Paragraph 52, Clause 1, Sentence 1, Trademark Law.) In practice, however, this is an exception, since on the one hand the claim can be raised against the violator without deleting the trademark and on the other hand, the assertion in Paragraph 51, Clause 1, Sentence 2, Trademark Law, does not affect third parties.
It is permitted to lodge an appeal against the decision of the regional court in a deletion suit.
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