Challenging Older Trademarks: The Non-Use Defense

One of the most powerful strategic tools available to trade mark applicants and defendants in Germany is the non-use defence (Einrede der Nichtbenutzung). Under German law, a registered trade mark must be put to genuine use within five years of registration, and the failure to do so exposes the mark to challenge. This provision prevents the register from being cluttered with “deadwood” marks that are registered but never commercially exploited — and it provides applicants with a vital weapon when an older, potentially unused mark stands in their way.

The Five-Year Grace Period

Under Section 26 MarkenG, a trade mark must be put to genuine use in Germany for the goods or services for which it is registered within five years of the date of registration. If an opposition is filed against the registration, this five-year period does not begin to run until the final decision on the opposition is reached. After the grace period expires, the mark becomes vulnerable to challenge for non-use.

The use must be genuine — meaning real commercial use in Germany, not token or symbolic use designed solely to maintain the registration. The mark must be used on or in connection with the goods or services for which it is registered, in a manner consistent with its essential function as an indicator of commercial origin.

The Non-Use Defence in Opposition Proceedings

The non-use defence is a particularly valuable tool in opposition proceedings. When an owner of an earlier mark files an opposition against a new registration, the applicant can demand proof of use if the earlier mark has been registered for more than five years. Under Section 43(1) MarkenG, if the applicant raises the non-use objection (Nichtbenutzungseinrede), the opponent must demonstrate that the earlier mark has been genuinely used in Germany within the five years preceding the filing of the opposition, or that there are proper reasons for non-use.

If the opponent cannot prove genuine use, the opposition fails — regardless of how similar the marks are. The earlier mark’s rights are effectively neutralised for the purposes of the opposition.

What Constitutes Genuine Use

Genuine use requires real commercial activity in the German market. The following factors are relevant:

• Territorial scope: The use must be in Germany. Use exclusively outside Germany does not satisfy the requirement for a German national mark.
• Nature of use: The mark must be used as a trade mark — as a source identifier, not merely as a decorative or descriptive element.
• Goods or services: Use must be for the specific goods or services for which the mark is registered. Use on different goods does not maintain the registration for the goods not covered.
• Volume: There is no fixed minimum volume. The assessment is qualitative, not quantitative. Even modest commercial activity may qualify, provided it is genuine and not merely symbolic. Conversely, a single sale or an isolated transaction may be insufficient.
• Form of use: The mark must be used in the form as registered, or in a form that does not alter its distinctive character. Minor variations (such as small typographic changes) are generally acceptable, but significant alterations may not qualify.

Revocation for Non-Use

Beyond the opposition context, any person may apply to have a registered mark revoked for non-use if it has not been genuinely used in Germany for an uninterrupted period of five years. Since May 2020, revocation proceedings for non-use can be filed directly with the DPMA — previously, such applications had to be brought before the civil courts. The DPMA procedure is significantly more cost-effective, with a fee of only €400.

In revocation proceedings, the burden of proof lies with the trade mark owner. If the owner does not respond within two months of receiving the DPMA’s notification, the mark is declared revoked. If the owner objects, the DPMA conducts full proceedings.

Proper Reasons for Non-Use

The trade mark owner may defend against a non-use challenge by demonstrating proper reasons for non-use (berechtigte Gründe). These are circumstances beyond the owner’s control that prevented genuine use — such as regulatory approvals that delayed product launch, import restrictions, or force majeure events. However, commercial decisions (such as choosing not to enter the German market or delaying product development) do not qualify as proper reasons.

Strategic Recommendations

• Raise the non-use defence early: In opposition proceedings, check immediately whether the opposing mark has been registered for more than five years. If so, demand proof of use as a first step.
• Investigate before filing: If a potentially conflicting earlier mark appears in your clearance search, check whether it is actively used in Germany. If it appears dormant, a non-use challenge may clear the path.
• Maintain your own use records: Keep organised evidence of your mark’s genuine use in Germany — invoices, advertising materials, product photographs, and distribution records. You may need to prove use defensively.
• Use the DPMA revocation procedure: Since 2020, filing a revocation for non-use with the DPMA is a cost-effective alternative to court proceedings. Consider it as a clearance tool before or alongside your own application.
• Do not let your own marks go unused: The five-year grace period is strict. If you register a mark in Germany, ensure genuine commercial use begins within the grace period to protect against third-party challenges.

Key Takeaway

The non-use defence is a powerful tool for clearing the path to registration and defending against oppositions based on dormant marks. If an earlier mark has been registered for more than five years without genuine commercial use in Germany, its owner cannot rely on it to block a new application. For applicants and brand owners alike, understanding the use requirement is essential for both offensive and defensive trade mark strategy in Germany.