BGH changes tune on trademark forfeiture

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In a judgment from January 14, 2021, the Bundesgerichtshof (BGH) – Germany’s Federal Supreme Court – overruled its own legal precedent on the forfeiture of trademarks (Az.: I ZR 40/20) in finding that failure to make use of a trademark means forfeiting trademark protection.

According to Section 49 of the German Trademark Act (Markengesetz, MarkenG), the registration of a trademark will be declared invalid and cancelled in response to a request to this end if the mark has not been used over a continuous period of five years. We at the commercial law firm MTR Rechtsanwälte can report that the BGH recently ruled that for the purposes of a legal action to have a trademark declared invalid, the determining factor is the date on which formal notice of the action was served. The court held that the duty of disclosure and burden of proof regarding the forfeiture of a trademark lie not with the plaintiff; rather, it is the proprietor of the trademark who must prove genuine use of the mark. This marks a departure from the Bundesgerichtshof’s case-law to date, which was no longer consistent with EU law.

The case concerned a trademark that had been registered by a wine merchant for sparkling wines. A competitor submitted a request to the German Patent and Trademark Office to have the mark cancelled on the basis that it was not being used. The action was dismissed by the Landgericht (LG) München, the Regional Court of Munich. The appeal before the Oberlandesgericht (OLG) München – the Higher Regional Court of Munich – was also unsuccessful, the OLG having considered the preconditions for declaring a trademark invalid not to have been met. The plaintiff was said to have failed to prove that the mark was not being used, with the trademark proprietor bearing merely a secondary duty of disclosure that it had successfully discharged.

However, the BGH took a different view on the matter, referring the proceedings back to the OLG München. The issue of whether the trademark had not been used for five years was said to be informed by the date on which legal action was taken, i.e. the date formal notice of the action was served. In a departure from its previous rulings, the BGH held that the period following the filing of the action until the conclusion of the oral hearing is no longer relevant. The court went on to state that if the action is preceded by a request submitted to the German Patent and Trademark Office to have the mark cancelled, the date on which the request was received is decisive provided the action for cancellation is brought within three months of the party submitting the request having been informed of the trademark proprietor’s objection.

The BGH concluded that the duty of disclosure and burden of proof lie not with the plaintiff but with the proprietor of the trademark when it comes to the use or non-use of a mark.

Lawyers with experience in the field of trademark law can provide counsel.

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