A couple of minutes ago I was called in by a KSNH paralegal to assist her in filing an application for a national German trade mark application utilising the new DPMAdirektWeb facility which is available to the public since November 12, 2013. She had just arrived at a step where the items of the list of goods and services are to be entered. To her surprise there was no visible option just to enter free text. The user appeared to be forced to select from a picklist drawn from a lager database of goods and services already known to the DPMA from earlier applications. And, it turned out that the specific item the client wanted to see within the list of goods and services was not available in the picklist offered by the new website.

I couldn’t believe that the new filing system is crippled that way and immediately called a DPMA hotline number indicated on the DPMAdirektWeb page. To my surprise the lady at the other end of the line confirmed that it is not possible to enter arbitrary text into the list of goods and services.

Well, is such action of the DPMA really within the bounds of applicable law?

As far as I know neither German Trade Mark Act nor Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 do comprise any provision allowing Offices to hinder applicants to file trade mark applications covering goods and/or services which are new to the respective internal database of acceptable items.

It is just that Offices like to streamline their internal processes by preferring to deal with pre-approved lists of goods and/or services only.

The German Patent and Trade Mark Office (DPMA) is one of many administrative agencies of the Federal Republic of Germany. Its task is to implement the law, not to create new law.

I have not yet bothered to obtain an Official statement of the DPMA concerning this matter. But I would not be very much surprised if they argue that any applicant insisting on using an individually worded list of goods and services still may refer to a paper-based way of filing the application. However, doing so comes with EUR 10,– extra costs for Official application fees. And, yes, we patent attorneys usually can switch to the DPMAdirekt on-line filing facilities which have ownership of a smartcard as a prerequisite.

But I prefer to see this as a matter of principle: If the law allows to file individually worded lists of goods and services, every filing facility should support such kind of freedom.

I can see that DPMA might strongly feel encouraged by the bad example given by OHIM to proceed on a way of nudging applicants to follow paths where the interest of the respective administrative agency to have smooth, fast and cheap internal workflows is fostered at maximum at the expense of the applicant’s interest to have a trade mark perfectly tailored to its needs. However, OHIM at least allows free text in lists of goods and services – although the current as well as the future OHIM on-line web filing TM facility (operative from December 02, 2013 onwards) both have plenty of nag-screens warning the user when departing from the path of virtue which requires to stick to the internal database of pre-approved items.

About The Author

Axel H. Horns

German & European Patent, Trade Mark & Design Attorney

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