Attacking Protective Rights

Attacking Protective Rights

We examine your possibilities to attack protective rights

If when carrying on your commercial activity you are hindered or blocked by valid protective rights of third parties, we examine your possibilities to attack or get around these protective rights, or to negotiate a contractual agreement with the other party.

Pursuant to the results of this examination we establish together with you a further strategy for optimally implementing your interests. For attacking an existing protective right with the aim of eliminating the same or limiting the scope of protection, the following applies.

Patents

A granted patent can be attacked by means of an opposition or nullity suit, on the basis of lack of novelty, lack of inventive step, unlawful usurpation of an invention, or inadmissible broadening of the subject-matter of a patent. The outcome of an opposition or nullity proceeding is the revocation of the attacked patent or the maintenance of the attacked patent in a restricted scope or in its entirety. In the case of revocation the proprietor of the protective right will lose retroactively all rights deriving from the patent. Each party can lodge an appeal against the decision.

Opposition can only be filed within a 9-month opposition period commencing from the publication of the grant. This takes place at the office of grant (e.g. German Patent and Trademark Office, European Patent Office). The costs of an opposition procedure as an administrative procedure are relatively low, since normally each party bears its own costs. These are independent of the value of the matter in dispute. If the opposition deadline period expired, only a nullity suit filed with the competent court, e.g. Federal Patent Court, is still possible. Here the losing party bears all costs (court and attorney fees). These costs are dependent on the value of the matter in dispute.

Trademarks

A trademark can be attacked from the date of publication by means of an opposition, an action for annulment, cancellation action due to expiration or annulment. An attack is not possible between publication of the application and advertisement of the registration. Opposition can only be lodged within a 3-month opposition period commencing from the advertisement of the registration. Opposition is filed with the Patent Office when claiming the opposition reason that one’s own trademark is an earlier trademark. This is the case when one’s own trademark claims a priority, is identical or confusingly similar and covers identical or similar goods or services. The opposition procedure is an administrative procedure, during which each party normally bears its own costs. A request for cancellation due to renunciation or consent of the trademark proprietor can basically be made as of publication. If the required consent of the trademark proprietor does not take place voluntarily, a legal action for consent to the cancellation must be lodged with the competent District Court.

For a successful legal action one’s trademark must be older than the attacked trademark and used within the last five years in Germany. A request for cancellation due to expiration can basically be filed as of registration. A condition for this request is that the trademark to be attacked has not been used for the last five years. The cancellation is lodged with the Patent Office. If the proprietor raises an objection against the cancellation a procedure before the District Court will follow, whereby the losing party bears all costs. A request for cancellation due to annulment can be made as of registration of the trademark. Grounds for cancellation are lack of registrability (lacking distinctiveness or the need to preserve availability), absence of legal capacity of the proprietor or bad faith of the proprietor at the time of filing. We will advise, represent and support you in all matters in connection with opposition and cancellation proceedings before the German Patent and Trademark Office, the European Union Intellectual Property Office, the District Court as well as the Federal Patent Court.

Designs

A design cannot be attacked during formal filing proceedings. It is kept secret until registration. Cancellation can be requested for a registered design, e.g. with the German Patent and Trademark Office for a design registered in the Design Register. For this purpose it must be proven that the proprietor of the design relinquishes his design or consents to the cancellation.
A legal action for consent to the cancellation can be lodged with the competent District Court if consent is not voluntary. Cancellation grounds are lack of registrability, e.g. lack of novelty, lack of individual character, no design, exclusion from design protection, and non-entitlement of the proprietor to file the design. The losing party bears all costs. We will advise, represent and support you in all matters in connection with cancellation proceedings before the German Patent and Trademark Office, as well as the District Courts and higher Regional Courts.