Trademark protection is only granted if the registered trademark is actually used. Otherwise, any third party can apply to the competent court to cancel the trademark due to non-use. Trademark protection then expires.
Decisive: Use of the trademark within five years until the action is filed
The registration of a trademark is only revoked and canceled if it has not been used for an uninterrupted period of five years. This applies under both German and European trademark law (see Section 49 MarkenG and Art. 12 of EU Regulation No. 2008/95).
However, this so-called five-year period does not depend on any period of time since the registration of the trademark. Rather, the decisive factor for determining whether the five-year grace period for use has expired is the date on which the action for cancellation was filed. This was recently decided by the Federal Court of Justice (judgment of January 14, 2021, case reference: I ZR 40/20).
Previously, case law was based on the period up to the end of the oral hearing. As a result, trademark owners regularly had more time to seriously use their trademark and thus maintain its protection. However, as this no longer corresponds to an interpretation of trademark law in line with EU law, the BGH has now abandoned this case law.
Burden of proof for the use of the trademark now lies with the trademark owner
The highest German civil court has also commented on the burden of proof. Specifically, it concerns the distribution of the burden of proof for the genuine use of the challenged trademark within the relevant five-year period.
Previously, this burden of proof lay with the plaintiff, i.e. the party seeking the cancellation of the trademark in court. As this understanding no longer corresponds to an interpretation of German trademark law that is in line with EU law, the BGH has now placed this burden of proof on the defendant trademark owner in its decision.
The Federal Court of Justice thus makes a comprehensive statement on trademark use in a ruling and abandons large parts of its previous case law for reasons of EU law. It remains to be seen what effect this new understanding will have in practice. In any case, the rights of trademark owners are likely to have been significantly weakened.
