Patentanwalt Dr. Betram Rapp

by Dipl.-Phys. Dr. Bertram Rapp

Patent attorney Dr. Bertram Rapp, Charrier Rapp & Liebau

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“When is it worth keeping?”

B4B readers ask, our industry experts from the region answer: Many people pay the renewal fees for an industrial property right year after year, even though it has not been used for a long time. Does that make sense? Our patent expert, Dr. Bertram Rapp from CHARRIER RAPP & LIEBAU, knows.

Whether an industrial property right, whether it is a patent, a design or a trademark, should be maintained by paying the renewal fee is not primarily a question of one’s own use of the property right, but should be based on whether competitors can be kept at bay with this property right. In many cases, it is therefore worthwhile to maintain an industrial property right even if one does not use it oneself. After all, an IP right is not a prerequisite for one’s own use, but serves to be able to exclude competitors.

A trademark should be maintained in any case as long as the commercial traffic, i.e. the customers, sees in this trademark a reference to the origin of the own company. Even a trademark that is no longer used can still be highly indicative of origin. Just think of past well-known brands such as Simca for cars, Ernte23 for cigarettes or PanAm for an airline. If such a trademark were to be abandoned, there would be a risk that a competitor would apply for it himself and profit from the still existing good reputation, which should be avoided as long as possible.

On the other hand, the Trademark Act provides that a registered trademark becomes ready for cancellation, i.e. can be cancelled at the request of a third party, if it has not been used for a period of more than five years. Such trademarks are no more than pseudo rights. Although they are entered in the register, they can be canceled at any time upon request. Thus, if the trademark has been unused for more than five years, it could be cancelled at any time even after renewal.

However, even in this case, renewal should be considered if it is intended, or at least cannot be ruled out, that the trademark will be used again in the future. As soon as use is resumed, the condition of being ready for cancellation is cured and the trademark is again legally valid.

As a result, one will tend to let rather unimportant trademarks lapse once they have been registered for a product that no longer exists, while trademarks with a great history and reputation will tend to be renewed even if they are currently no longer used.

Yours, Bertram Rapp

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