TRADEMARK PROTECTION
The object of protection under trademark law are signs for products and services. The purpose of trademark protection is to prevent the unhindered adoption of such a sign. Trademarks are mainly used for the advertising and marketing activities of a company, whereby the value of a trademark can be very high if it is used extensively and for a long time, and may even determine a substantial part of the company value.
Important areas of protection are covered by the registered German trademark, the European Union trademark and the Intermational Registered Trademark.
Detailed information on the most important protective rights can be found in a bundled form in our information brochure.
Brand, logo, name, trademark?
You have developed a great brand idea or a business concept? You want to found a company or offer a product? In these and many other constellations, brand protection can be important for you.
We will discuss with you all the options available for the registration of a trademark. In doing so, we will show you which words, figurative elements or other characteristics are eligible for trademark protection and how you can achieve the best possible protection.
By the way: not everyone needs a registered trademark, and there are costs for its acquisition. Sometimes it is also sufficient to simply use a trademark.
Searching - avoiding collisions
Registration does not protect against trouble! Since the German Patent and Trademark Office does not examine a newly applied for trademark for collisions with older trademarks, at least not during the registration procedure, it may happen that despite the registration of your trademark, your use of it may infringe on earlier rights and therefore you may be sued for infringement, for example.
We therefore strongly advise you to search for earlier marks before applying for and using a trademark. For this purpose, we will first clarify with you the desired areas of protection and then coordinate the search areas. In a trademark search, we not only take into account identical earlier trademarks, but also, and above all, the earlier rights that lie in the area of similarity, which may be more difficult to find, but can nevertheless lead to serious conflicts. A trademark infringement can also occur if the opposing trademarks are not identical, but can still be confused.
Register trademarks CORRECTLY
Anyone can fill out a registration form. Yes, you certainly do not need our professional help for this.
But even the question of whether to apply for a word mark, a figurative mark or a combined word and figurative mark can in many cases only be answered correctly if you know the limits of the absolute grounds for refusal, the resulting protective effects and many other subtleties of trademark law.
Even before filing the application, we will examine your trademark with regard to absolute grounds for refusal, agree with you on the future uses and the appropriate trademark form, and develop a suitable list of goods and services for which the trademark is to provide protection. It should also be taken into account that the scope of protection of the trademark cannot be extended without loss of seniority once the application has been filed with the Patent Office. Similar to a patent, the application represents an unalterable line which ultimately defines the protection for the next 10 years (or longer).
Obtaining registration of the trademark
In registration proceedings before the competent patent and trademark offices, we act as the applicant's representative. We comment on possible decisions of the Office and show you options for the correct procedure in order to achieve a registration with an optimal scope of protection in these cases as well. If necessary, we also make use of legal remedies such as reminders, appeals or legal proceedings before the competent courts in order to obtain registration of your trademark and thus protection.
Conduct opposition proceedings
vIn both German and European trademark proceedings, third parties can file an opposition against the registration of a new trademark. This is usually the simplest means of enforcing an older trademark against a younger identical or confusingly similar trademark.
If an opposition is filed, this is followed by a procedure in which it is decided whether there is a likelihood of confusion between the opposing marks or whether both marks may coexist.
In such proceedings, we support you either in enforcing your older trademark or in defending your younger trademark against the opposition. Of course, we will advise you in advance on the prospects of success of the proceedings and, if necessary, conduct out-of-court settlement negotiations on your behalf in order to end the opposition proceedings quickly and cost-effectively by way of an agreement.
Conduct cancellation proceedings / cancellation actions
Trademarks remain attackable even after the expiry of the opposition period, for example if they have been wrongly registered or if they are not used in a way that preserves rights. On the one hand, this can lead to your own trademark being attacked if necessary, but on the other hand, it also provides you with opportunities if you feel unjustifiably affected by a third-party trademark.
Conduct infringement proceedings
Property rights are only valuable if they generate an economic benefit. Therefore, we regularly advise our clients to acquire property rights where at least the potential for such use is apparent. This goes hand in hand with the enforcement of an industrial property right against third parties, if necessary also in court, if they use the object of protection without authorisation.
Prior to a legal enforcement, which we already regard as the final resort due to the always remaining risks, there is always the attempt to achieve compliance with the property right by way of an agreement. Disputes concerning industrial property rights therefore often begin with a reference to the industrial property right or a warning. In many cases, the claims of the property right owner can be enforced in this way. If necessary, a license agreement can also result from which both sides benefit.
Of course, we also represent you in reverse constellations, because there are always cases in which property right owners unjustifiably demand the omission of business activities which, on closer inspection, do not encroach upon the scope of protection of the property right asserted.
Property rights Wiki
Frequently asked questions about trademark protection
Trademarks in the broader sense of § 1 MarkenG include not only registered trademarks but also signs acquired through use and geographical indications of source. Finally, in addition to the classic trademarks, there are numerous other trademark rights (e.g. company names, business insignia, domain names, software titles) which can lead to collisions.
According to § 3 MarkenG all signs which are capable of distinguishing the goods or services of one company from those of other companies are protectable as trademarks.
In particular the following are eligible for trademark protection
- words, names, letters, numbers
- Illustrations, colours, sound signs
- three-dimensional designs
The most important criterion for the eligibility for a trade mark is its ability to identify goods and/or services in such a way that they can be distinguished from similar goods/services of other undertakings. Although this criterion appears at first sight to be simple, understandable and manageable, there is extensive case law on the problem of trade mark eligibility, which must be taken into account when assessing whether a sign is eligible for trade mark protection or not.
Signs which are not suitable for distinguishing the designated goods/services from similar goods/services of other companies are excluded from trademark protection.
For example, a smooth descriptive word which only describes the product itself or one of its characteristics in a generally valid way cannot be registered as a trademark. Instead, a fantacy word will generally be protectable.
Excluded from trademark protection are in particular signs which:
- are caused by the nature of the wait itself
- are necessary only in order to obtain a technical result
- give substantial value to the designated goods
The easiest way to obtain trademark protection for a sign is to register it as a German trademark in the register kept by the German Patent and Trademark Office or as a European Union trademark in the register kept by the European Intellectual Property Office (EUIPO).
Although trademark protection can also result from a protracted, extensive use of the sign in the course of trade, but only to the extent that the sign has acquired a reputation as a trademark within the circles involved. The path to a trademark resulting from use is therefore much longer, more costly and more risky.
The registration of a German trade mark in the register kept at the DPMA is the result of a formal procedure, which starts with a formal request. If the formal and substantive requirements for protection of the trade mark are met, the trade mark is registered and published.
Within a period of three months after publication, any third party may object to the new registration on the basis of an earlier trade mark. If an opposition is filed, a procedure follows in which it is decided whether there is a likelihood of confusion between the conflicting signs or whether both marks may coexist.
If the new trademark is not challenged by an opposition or if the opposition is rejected so that the trademark remains registered, an industrial property right is available which is initially valid for a period of 10 years. After this period of protection has expired, the trademark can be renewed for 10 years by paying a fee.
It has been possible to apply for a European Union trademark (initially called a Community trademark) since 1996. This means that, if the procedure is successfully completed, a uniform trademark is obtained which is valid in all member states of the European Union. In contrast to the IR trademark, which consists of several largely independent national parts, there is thus a single trademark which is valid in several states.
Today, many small and medium-sized enterprises also make use of this option of Europe-wide trademark protection, which is inexpensive compared to several national applications, as they too do not want to do without the protection of often valuable word marks and logos in cross-border trade.
With the accession of the European Union to the PMMA, a bridge has now been built to the system of internationally registered trademarks. Thus, a Union trademark or a corresponding application can serve as a basis for filing an International Registration (IR trademark). At the same time, it has also become easier for foreign companies to obtain trademark protection in the EU. For example, a company from the USA can acquire an International Registered Trademark based on a US trademark application and designate individual countries such as Australia or Germany as the scope of protection, or apply for registration of a Union trademark in order to obtain trademark protection in all EU countries.
In order to obtain trademark protection in other countries, it is possible to acquire a so-called International Registered Trademark (IR Trademark) parallel to the respective national procedure. Starting from a basic national trademark, protection can be extended to the member countries of the Madrid Agreement (MMA) through a joint application procedure. The respective national portions of these IR trademarks are largely subject to national regulations, whereby the framework conditions are specified by the MMA. The agreement was extended by a protocol (PMMA) several years ago, so that trademark protection is currently available for more than 100 countries.
Here you can find the current list of member states.
Trademark law grants far-reaching rights of prohibition which the owner can exercise against third parties. Third parties can be prohibited with the trademark:
- to use an identical sign for identical goods/services,
- to use an identical or similar sign for identical or similar goods/services where there is a likelihood of confusion.
In particular, third parties are prohibited:
- to affix the protected sign to goods, packaging or advertising material,
- offering, putting on the market or stocking goods under the sign,
- to offer or provide services under the sign,
- import/export goods under the sign,
- to use the sign in business documents or in advertising.
Apart from the clear case that identical signs are used for identical goods, it is necessary for the enforcement of an injunction that the conflicting signs are confusingly similar.
YES. As an intangible property right, a trademark can be traded in the same way as other economic goods. But this was not always the case:
When, more than 100 years ago, a law for the protection of trademarks (formerly called "Warenzeichen") was created for the first time in Germany, the protection of such signs which were directly intended to identify and distinguish goods in question was the main focus. Only since 1979 has it been possible in Germany to also place services under trademark protection.
In the course of the German reunification, the previously valid link of the trademark to a business operation that did not only exist in appearance was also abolished in German Federal Law, in accordance with the regulations applicable in the GDR as well as in many other European states. Thus, what had actually long since taken place in practice was implemented in the legal system. Nowadays, the public rarely associates a trademark directly with a concretely defined business or enterprise. Rather, the function of the trademark is mainly to act as a sign of quality or as an indication of a company or an origin of the goods/services which is not specifically known.
The new Trademark Act, which has been in force since 1995, has made further adjustments to the legal regulations, so that today the free transfer of a trademark and even the division of a trademark into individual "partial trademarks", which protect different goods/services, is possible. The largely free tradability of a trademark increases its value. It is therefore common practice today for banks and investors to value a well-established and legally secured trademark in monetary terms and to accept it, for example, as collateral for a loan.