4.2: Difference to relative grounds for refusal

Search the content

Table of Contents

In addition to these absolute grounds for refusal based on public interest, relative grounds for refusal can also conflict with the registration of a trade mark. These are conflicting rights of individual third parties that could prevent the use of the trade mark - such as earlier trade marks, names or similar rights. The purpose of absolute and relative grounds for refusal therefore differs.[1]The legal basis for relative grounds for refusal are Art. 5 TMD, Art. 8 EUTMR and Section 9 MarkenG. Unlike absolute grounds for refusal, relative grounds for refusal are not examined ex officio in the registration procedure.[2] Rather, the owner of the infringed right must actively assert his rights in opposition or invalidity proceedings.[3] A detailed description of relative grounds for refusal is therefore provided in the context of the treatment of the scope of protection of the relevant rights.[4]

Footnotes

  1. CJEU C-20/14 of 22 October 2015 BGW Beratungs-Gesellschaft Wirtschaft, ref. 23 ff.

    ↩

  2. Section 37 (4) MarkenG is an exception in this respect with regard to well-known trade marks; an official examination still takes place in some cases abroad (including in Europe).

    ↩

  3. For opposition proceedings and invalidity proceedings before the EUIPO, Section 28.2; for opposition proceedings before the DPMA, Section 29.3; for infringement proceedings before ordinary courts, Section 31.2.

    ↩

  4. On the trade mark Section 10, Section 11, Section 12 and Section 13; on the business names Section 18 and Section 20; on names Section 21.3.

    ↩