Trademark protection
Trademarks have existed for a long time all over the world. They make it easier for customers and consumers to get their bearings in the market in order to purchase products and services. A particular trademark is usually also associated with quality features, such as good value for money, a positive corporate policy, sustainability, a progressive image, or other important values.
A well-known trademark is a huge asset for the owner and is a major factor for their position in the market.
Trademarks are mainly used to indicate the origin of a company’s goods and services and at the same time to distinguish them from the offerings of competitors.
The marks eligible for protection include words, letters, numbers, images, colors, holograms, multimedia marks, or sounds, as well as combinations of these elements.
According to the applicable laws and guidelines, a word mark does not require a graphic design or color. It consists of characters such as letters, numbers, and selected special characters. A word mark can consist of one or more words or even a single letter. If the word mark is registered at the German Patent and Trademark Office, it is represented using a uniform printing process; however, trademark protection extends to all forms of print and typefaces. This also includes different spellings or combinations of upper/lower case letters.
If a trademark contains elements that are not permitted for or covered by a word mark, this trademark may be a combination mark or a pictorial mark. This applies, for example, if the applicant claims a particular font design, color, font arrangement, or even a combination of graphic elements for the registration of their sequence of characters, in other words if it is a certain visual impression that is decisive.
For combination marks, the following variations are possible:
- Words and/or characters in a specific font and spelling
- Combination of letters/characters and graphic elements
- Multi-line arrangement or blocked words (spaces between letters)
The period of validity for a registered trademark is generally ten years. This protection period can be extended for a further ten years for a fee. If the trademark is not extended, it is cancelled by the Trademark Office. If other trademark owners successfully file opposition or cancellation proceedings, the trademark protection also expires.
It should also be noted that the trademark must be used in the class to which it is assigned, otherwise there is a risk of trademark cancellation. This only applies, however, outside the five-year grace period for use after a trademark has been registered.
Trademark application
Trademark protection has not been the privilege of large companies for some time now: associations, interest groups, or private individuals can also become trademark owners. Depending on the region in which you wish to protect your trademark, you must file an application with the German Patent and Trademark Office (DPMA) or the European Union Intellectual Property Office (EUIPO, until 2016 “Office for Harmonization in the Internal Market” (OHIM)). Anyone can do this.
You can also apply for international protection on the basis of a base mark with the World Intellectual Property Organization (WIPO).
The costs for registering a trademark in the trademark register vary – depending on whether it is a German or a European Union trademark.
The German Patent and Trademark Office currently charges 300 euros for a German trademark application and registration or 290 euros for electronic applications. This fee includes a class fee of up to three classes of goods and services. If a trademark applicant wishes to register the trademark for additional classes, they must pay an additional fee of 100 euros for each additional class when filing the application. The classes represent the areas claimed for the trademark and therefore essentially determine the scope of the trademark’s protection. The list of goods and services is the starting point for the assignment of the trademark to a class and its registration. A uniform classification database – which can be found on the German Patent and Trademark Office’s website – is helpful when searching for and classifying goods and services and creates the basis for higher legal certainty and more transparency.
It takes around ten to twelve months from filing the application at the German Patent and Trademark Office to the trademark being entered in the register. You can speed up the examination of the trademark application by paying an acceleration fee of 200 euros. A decision on the application must then be made within six months, provided that the applicant cooperates.
The extension fees for up to three classes are 750 euros (260 euros for each additional class) and are payable at the end of the ten-year term of protection.
For the application and registration of EU trademarks, the EUIPO charges an application fee of 850 euros. The fee covers the registration of the trademark in only one class. The fee for the second class of goods and services is 50 euros, and for each extra class an additional fee of 150 euros is charged. The geographical scope of a registered EU trademark is the entire European Union single market.
Before applying for a trademark, it is a good idea to obtain expert and professional legal advice and, above all, to conduct a preliminary search to make sure the trademark you are applying for is not already being used in a similar form or that it is not inadmissible. If a trademark cannot be registered and the Trademark Office refuses registration, any fees already paid will not be refunded.
In addition, owners of an older trademark can file an opposition after publication of the new trademark registration if they believe their own trademark rights have been infringed. There is a very high risk of expensive warning notices, as in many cases the trademark rights of small and medium-sized companies are not known, which can lead to collisions between new applications and existing rights. Such checks are not generally carried out by the authorities when a trademark application is filed. Trademark owners who believe their rights have been infringed will mostly issue a warning notice for a trademark infringement but can also (in serious cases) assert their right to a preliminary injunction.
Competent authorities for the trademark application:
- German Patent and Trademark Office (DPMA) – responsible for national trademark applications in Germany
- European Union Intellectual Property Office (EUIPO) – entry in the register valid for all European Union member states
- An international registration (IR) can be applied for at the World Intellectual Property Organization (WIPO) on the basis of a base mark. This is valid in all signatory states of the Madrid Agreement on trademarks.
Litigation
To successfully take action against trademark infringements or even product piracy, you need to comprehensively protect your intellectual property and industrial property rights beforehand. If your own ideas and developments are not fully protected, they can be imitated by counterfeiters and these cannot be prosecuted, except for where there are additional indications of unfair competition.
Depending on the specific content to be protected, the legislator provides for many industrial property rights to protect intellectual property and enforce existing claims in this context. Of particular importance here are trademark and design rights, patent and utility model rights, as well as copyrights, which grant their respective right holders the right to prohibit use by unauthorized third parties.
In addition to the possibility of a lawsuit under civil and criminal law, a warning notice, and an application for a preliminary injunction, there is also the possibility of a border confiscation to remove pirate copies or counterfeit products from circulation and destroy them quickly and inexpensively. Border confiscations are carried out by customs where there is a suspected infringement of third-party IP rights. A confiscation may concern both import and export goods.
Research
Before applying for a trademark, a comprehensive and intensive trademark search should always be conducted to determine whether the trademark can be registered at all and to make sure it does not conflict with the rights of other trademark owners. You should determine in advance which list of goods and services (classes) the registration is for and in which countries the trademark protection should apply.
A free search you conduct yourself using search engines or the database of the German Patent and Trademark Office or the international authorities may provide information on strong similarities with existing trademarks, but ultimately does not replace a search by experts and specialists and an assessment in the event of similarities and overlaps.
Our expertise
We’ll support you with the development, registration, and pursuit of your intellectual property rights (IP). Moreover, we’ll advise you strategically on the systematic set-up, management, and maintenance of a patent portfolio, the design of IP management for your operation, and due-diligence processes. We’ll represent you in all matters relating to intellectual property rights and associated areas of law before courts and authorities. This includes defending and enforcing your intellectual property right.
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