Die Emanzipation des Markenrechts Entwicklung und Abschaffung des Akzessorietätsgrundsatzes

The Principle of Accessority (PoA), i.e. the rule that trademarks can only be transferred in combination with the business entity for which a trademark has been registered, dates back to the Markenschutzgesetz of 1874 (Trademark Act). According to Sec. 1 of the TMA (1874) only such business entities were able to seek trademark protection which had filed their firm at the local commercial register. Consequently the accessority or linkage between a trademark and a firm was mainly due to administrative reasons. However, the PoA was also believed to provide for an indication of the origin of goods, increase market transparency and therefore serve the interests of the buying public. Following the establishment of the Reichspatentamt (Federal Patent and Trademark Office) in 1877, it became possible to register industrial property rights such as patents and trademarks at a central office. The former scepticism that a central register might be too bureaucratic was overcome. When reforming the TMA in 1894 German legislature was nevertheless convinced that the PoA should prevail. Meanwhile academia justified the PoA as being a result of the theory of personal rights (Theorie der Individual- und Persönlichkeitsrechte). Contrastingly, the courts continued to justify the PoA as a method by which consumers were protected against confusion as regards the origin of goods. Although based on disputable assumptions, both justifications remained unchallenged for the time being. If a justification due to the theory of personal rights was taken seriously, the trademark should have been linked to the individual owner of a business (natural person) and not to the business entity (legal person). The courts' reasoning was not convincing, too. It remained unclear whether the notion of »indicating the origin« (so-called Herkunftsfunktion) referred to a producer's factory as such or even to a geographical provenance. In the late 1920's the idea of abandoning the PoA emerged. Initiated by discussions in international trade committees, German academia started to elaborate on the concept. Hermann Isay convincingly argued in favour of abolishing the PoA. However, his pledge was rejected by the majority. In 1936 the legislature was convinced that a transfer of a trademark was tolerable as long as a part of the business entity changed hands simultaneously. The acceptance of such a partial transfer was in accordance with the requirements set out in the Paris Convention for the Protection of Industrial Property (as revised in 1934). Although the PoA was upheld in the German Trademark Act of 1936, it nevertheless lost its significance. The courts interpreted Sec. 8 TMA (1936) in a broad manner. It sufficed to transfer a list of costumers, recipes or a production manual in order to prove that the business entity had partially been transferred. It was not until the forum for reforming trademark law shifted to the European Economic Community (EC) that the PoA was entirely abandoned. According to the European Trademark Directive, the EC-Member States were not legally obliged to abandon the PoA. However, in 1994 no reasonable justification for upholding the PoA could be given. Not only international companies, which had an eminent interest in being able to transfer trademarks within the different units of an enterprise, were in favour of abolishing the principle. Moreover the German Re-Unification accelerated the process. According to the trademark law of the German Democratic Republic (East-Germany), trademarks could be transferred independently from a business entity. After Re-Unification the owners of trademarks which were registered in the Federal Republic of Germany (West-Germany) would have been disadvantaged if the PoA was to be applied to their trademarks. Following the abandoning of the PoA in Sec. 7 of the Markenschutzgesetz (1995) it becomes apparent that Hermann Isay (1929) was correct when he stressed that German trademark law does not legall