Key differences - What US companies should know about German and EU trademark law

Many companies in the U.S. do business in Germany and other member states of the European Union. Therefore, it is important that their trademarks are protected in Germany and the EU as well. A lack of trademark protection or inadequate protection can lead to many problems and can be very costly. In comparison, the costs for a German or EU trademark application are low. Below, we briefly outline the key differences between U.S. trademark law on the one hand and German and EU trademark law on the other.

1. Obtaining trademark rights

In the U.S., mere use in commerce is sufficient to establish trademark rights. EU and German trademark law follow a different approach. In general, a trademark must be registered. A trademark right acquired through use is a rather rare exception. Trademark protection through use requires that the mark has become established in trade, which is the case if a significant proportion of the relevant public is aware of the mark. The required minimum threshold is determined on a case-by-case basis. According to German case law, a degree of recognition among between 20% and 25% of the relevant consumers in Germany is necessary if the sign is distinctive.

2. Prerequisites for a trademark application

Unlike in the U.S., a filed German or EU trademark application does not need to be in use at the time of filing, and the applicant does not need to have a bona fide intention to use the mark. No declaration of use or any other declaration is required. This provides much greater flexibility at the time of filing. Since no intention to use in good faith is required, the applicant may also list goods for which only a vague possibility of use exists (e.g., if the applicant is considering expanding the product portfolio in a few years). An applicant does not need to indicate or know exactly how they will use the trademark at the time of filing or during examination. They have a period of five years in which they must begin using the trademark in a manner that preserves their rights.

3. Language for the list of goods and services

U.S. trademark practice requires very detailed and specific language for the list of goods and services, whereas for a German or EU trademark application, a much broader description is generally permissible. In general, class headings are sufficient. The EUIPO and the German PTO also accept a specification of a class heading using the term “especially.” This is understood as a non-exhaustive list covered by the broader class heading. In general, there is no need to limit a class heading or a broad term by using the term “namely,” as is often required by the US PTO.

Once again, this provides flexibility for the applicant. By using class headings or other general terms, it is possible to cover a broader range of products and to account for future expansions of a product portfolio as early as the filing date. Using broad language may make it unnecessary to refile trademarks in the future if the applicant expands its product portfolio.

Given the varying practices regarding the permissible wording of the list of goods and services, it may be advisable to file a separate national German or EU trademark application even if a U.S. application already exists. Of course, the existing U.S. trademark application could serve as the basis for an international registration designating Germany or the EU; however, such an international registration would be limited to the (narrow) U.S. description of goods and services. By filing a separate national German or EU trademark application, the applicant can obtain broader protection. This approach does not result in a loss of the priority right. Provided that the broader national German or EU trademark application is filed within the six-month priority period, the priority of the US trademark application can be claimed. The US priority then applies only to the overlapping portion, while a new priority date is established for the portion extending beyond the scope of the US trademark application.

4. Examination procedure

The examination procedure also differs to some extent. The EUIPO and the German Patent and Trademark Office (PTO) examine only absolute grounds for refusal and do not consider prior third-party rights. As a result, it is possible that the EUIPO or the German PTO might register a trademark even if there is an identical prior registration. Given this, it is clear that conducting a trademark availability search prior to filing an application is of increased importance.

5. Genuine Use

EU trademarks and German trademarks must be used. If a trademark is not put to genuine use within a period of five years from the date of registration in the register, it may be canceled. However, unlike in the U.S., EUIPO and the German Patent and Trademark Office do not automatically examine whether there is genuine use after the end of the grace period. There is no need to file declarations of use or to provide samples of use. This becomes necessary only if a third party requests revocation due to lack of use or if, in opposition proceedings, the owner of the conflicting trademark raises the allegation of non-use.

If evidence of use can be established only for some of the goods and services covered by the registration, the registration will be canceled only with respect to the unused goods and services. The failure to remove the unused goods and services will not affect the registration as a whole if it was used for at least one good or service covered by the registration.

As a result of this practice, it is possible for a trademark owner to maintain a registration covering a very broad range of goods and services, even though there has been no use for a very long time. In general, the lack of use can be remedied and the risk of cancellation can be avoided if the trademark owner begins use prior to a request for revocation. This is another reason why it may be advisable for a U.S. applicant to use broader and more general language for the list of goods and services selected for its U.S. trademark application.

Please contact us if you would like to learn more about trademarks in Germany and the EU.