Protecting trademarks in Germany – interesting facts about the German trademark application
The German Patent and Trademark Office (DPMA) is responsible for the national German trademark application or the protection of a German trademark. The website of the DPMA with further information can be found here. The scope of protection of a national German trademark is limited to the Federal Republic of Germany.
What can be protected as a trademark
In principle, all signs, in particular words, including personal names, illustrations, letters, numbers, sound signs, three-dimensional designs including the shape of a product or its packaging and other presentations, including colors or color combinations, which are capable of distinguishing the goods or services of one enterprise from those of other enterprises may be protected as trademarks in Germany. Forms of trademarks are for example the word mark, the figurative mark, the word/figurative mark, the 3D mark or the sound mark.
Difference trademark/ patent
Often the trademark is confused with a patent and people ask whether it is possible to patent the name or to patent a trademark. This is understandable in that the German trademark is registered at the German Patent and Trademark Office. However, the term trademark patenting is not quite correct. The difference between a patent and a trademark is fundamentally different. The difference between a trademark and a patent is that a patent protects a technical invention. A trademark, on the other hand, serves to distinguish goods or services of one company from those of another. The trademark is therefore an indication of origin, the patent protects its technical invention.
Advantages of a trademark registration
If you are thinking about filing a trademark application, you have certainly already considered whether you absolutely need a trademark or whether a trademark makes sense for you. In addition to the registered trademark, there is also, for example, the company logo, which is already created through use and does not require registration.
However, only a trademark application can effectively protect a product name. In addition, you can license a registered trademark, but not a company logo. Trademarks can also be easily transferred, sold or traded. With a trademark you obtain additional and often more far-reaching protection than, for example, with a company trademark. A trademark also conveys reputation and professionalism. And finally, it is your product brand or corporate brand which, as a recognition factor, forms an essential asset component of your company value. (Intellectual property) With a trademark you can effectively protect your product names, logos, company names, company emblems against imitators, provided that you observe the important points in the trademark application.
Trademark registration by attorney at law or patent attorney
The question often comes up: Do I need a lawyer or a patent attorney for the trademark application? Basically no. But, the registration of a trademark involves various traps and the devil is in the details, as can be seen from this compilation of information. On the one hand, it must be ensured that the new trademark to be applied for does not infringe already existing trademarks or other signs. In addition, the trademark must be applied for in the correct form, is it worthwhile to apply for a word/figurative trademark, or should it be better to apply for a word trademark? Which figurative elements are useful for a word/figurative mark and which are even prohibited? Which goods/services are required? These are all questions which you as an applicant should clarify with a competent lawyer. In addition, the attorney will advise you on the dangers of trademark infringement and other risks of a trademark application.
Unfortunately, in the case of trademark applications made by private applicants themselves, it often happens that the trademark application is rejected by the relevant trademark office, for example because the chosen designation is not sufficiently distinctive. In this regard, you should know that the application fees are not refunded and are therefore lost if the trademark is not registered or, for example, is cancelled in the course of opposition proceedings. The application fees will not be refunded, not even by the DPMA.
Protecting a company name as a trademark
The separate protection of a company name by a trademark makes sense and offers some advantages. Read more about this under Protecting Company Names.
Trademark application, Important registration requirement – Distinctive character
A decisive prerequisite for the protection of a trademark is its distinctiveness for the goods and services to be protected. While the word “Apple”, for example, would be rejected as purely descriptive without further additions for “apples”, it is certainly distinctive for computers or telephones. If one adds further alienating word elements of the type “AppleZ” or “Appletizer”, a registration for fresh fruit, for example, would also be considered.
By combining it with graphic elements, a descriptive designation can be protected as a trademark element (e.g. as a word/figurative mark or figurative mark). However, it is questionable to what extent rights against the use of the descriptive word without or with other graphic elements by others can be derived from this. If the required distinctive character is lacking, registration of the trademark cannot be considered. In this case, we are talking about absolute grounds for refusal.
The lack of distinctiveness is part of the absolute grounds for refusal. Cf. § 8 MarkenG
In the case of word/figurative marks, for example, it must be ensured that no figurative elements such as national flags, national emblems, etc. are used. In the case of word marks, no defamatory terms (i.e. swear words) may be used.
The degree to which a trademark can be protected plays an important role in the scope of protection of a trademark. Trademark applicants should make sure that the trademark contains a word element that is as protectable as possible.
No violation of earlier trademarks or trademark rights (relative grounds for refusal of protection)
It is also important that the sign to be applied for does not violate earlier trademark rights or other trademark rights. For this purpose, it is recommended to conduct a trademark or company name search before each trademark application. In any case, a professional similarity search should be carried out in advance. Within the trademark search, all relevant older identical and similar rights which oppose the registration should be searched for.
Already applied for or registered trademarks are among the relative grounds for refusal of protection. (§ 9 MarkenG)
Definition of the goods/services/classes to be protected
With the German trademark application, the applicant for a trademark must indicate for which goods or services the registration is to be made. All goods and services are divided into so-called classes. In total there are 45 classes. The following tool offers a very good search possibility:
Thus, it must be examined in advance for which goods/services the trademark will later be required. The definition of the goods/services/classes should be very well planned, because a subsequent extension is not possible. Once the need for the goods/services has been determined, a list of goods/services is formulated. The applicant then defines concrete classes. The Trademark Office will check in the course of the application whether the goods/services belong to the respective classes. If goods/services have been assigned to the wrong class or if goods/services cannot be assigned to a specific class, the Trademark Office objects to the application and gives the applicant the opportunity to rectify the situation.
No subsequent extension of the list of goods/services after filing the trademark application
Once the trademark application has been filed, the list of products in the application in question can only be limited, no new classes/goods/services can be added. An extension of the list of products could only be achieved with a new additional trademark application.
A subsequent reduction of the goods/services/classes, however, is possible without further ado. So please note that the first application should already cover as many goods/services as possible. Otherwise, a new additional trademark application may have to be filed. If your main focus is on services, you will also need a service mark. For example, if you have a mail order business and sell pants, the trademark must be applied for the services of the mail order business and not for pants!
Applicant is responsible for the examination of existing prior rights
The German Patent and Trademark Office does not take any pre-existing rights into account in the trademark application process. In order to evaluate the risk of collisions with already protected marks, the applicant must take action himself. For this purpose, a trademark search should always be carried out. The extent of the search depends on the type and purpose of the trademark. In any case, any identical and similar trademarks should be searched for. Since trademarks can also collide with other types of signs such as company names, domain names or work titles (e.g. film, TV), an appropriate additional search can be useful. In order to carry out the correct risk and cost/benefit assessment in this case, cooperation with an experienced trademark lawyer is recommended.
Good tools for a free trademark search:
Accelerated examination of the application
With the application for a trademark, an accelerated examination of the application can be requested. For this purpose, the Trademark Office charges a separate fee of 200.00 EUR.
Costs of the trademark application/ official fees
What fees does the DPMA charge for a trademark application:
Welche Gebühren berechnet das DPMA für eine Markenanmeldung:
|filing fee (including fee for uo to 3 classes)
|electronic filing fee (including fee for up to 3 classes)
|additional costs for each class from the fourth class)
|filing fee for collectiv trademark
|fee for accelerated examination
It should be noted that the DPMA does not start the examination of the trademark application until the fees have been paid; if the fees are not paid within 3 months after the application has been filed, the application for registration of a trademark is considered withdrawn. The application fees must therefore be paid as soon as possible, but at the latest within the 3-month period.
German trademark registration, procedure after application
During the application process, the German Patent and Trademark Office examines the protectability of the applied trademark and the submitted list of goods/services. However, the Office will only take action once the fees have been paid. If the fees are not paid on time, the trademark application is forfeited.
If the trademark is registered, a 3-month opposition period begins from the publication of the registration. Within this opposition period, holders of earlier trademark rights can file an opposition against the registration of the trademark. After expiry of the opposition period, trademarks can also be attacked by way of cancellation. In addition, civil injunctive relief can be claimed against the trademark owner even after the opposition period has expired.
Opposition against the registration of a trademark
If an opposition is filed against the registration of a German trademark, the Trademark Office examines whether the newly applied for trademark infringes the rights of the opposing trademark or the trademark right. The opposition requires the payment of a fee. If the fee is not paid in time, the opposition is not validly filed. In principle, no reasons need to be given for an opposition. Nor is the applicant or owner of the newly filed trademark forced to submit a written reply. However, it is advisable for the opponent to file a statement of grounds for the opposition.
If the applicant or owner of the newly registered trademark wishes to defend himself against the opposition, he should also submit a written response. It should be noted that, for example, a so-called objection of use (defence of lack of use of the earlier opposition mark) must be submitted in writing. If an objection of use has been raised, the opponent has to prove that he has used his trademark in a way that preserves the rights of the opponent for all relevant goods/services/classes. If a trademark is cancelled in the course of opposition proceedings, the remaining application fee will not be refunded.
Parallel to the opposition, warning letters may also flutter into the house. If foreign trademark rights are infringed, a claim for injunction under civil law can also be asserted for a German trademark application.
Term of protection of the trademark
The protection period of a trademark is 10 years, but can be extended at will before expiry. The extension periods must be observed. If renewal is pending, it is important that the renewal fees are paid in time within the applicable period.
Risks of a German trademark application
By applying for a German trademark, a so-called first-time use risk for the use of a trademark is established. What does this mean? If the newly applied for trademark infringes upon earlier trademark rights of third parties, the latter can take action against the application with a warning and request the applicant to cease and desist. If the warning is justified, the trademark applicant does not have to make a cease-and-desist declaration subject to penalty.
It is sufficient that the applicant himself actively withdraws the application or renounces the trademark and thus has the trademark deleted. It is not sufficient, however, if the trademark application is only cancelled at the instigation of the trademark office or the Federal Patent Court (BPatG). A so-called actus contrarius is required from the trademark owner.
Our recommendation for a German trademark application
Take care of an efficient trademark protection in time. The official application procedure takes some time and can take several months. In addition, filed oppositions can lead to long opposition proceedings. It is therefore advisable to apply for trademark protection as early as possible and not, for example, shortly before a product launch.
International trademark application
Often a trademark protection in Germany is not sufficient. Then the question arises, how and by which means one can best obtain international trademark protection. There are several possibilities for this.
A trademark can be protected abroad as in Germany (foreign trademark) because each country has its own trademark register (Belgium, Netherlands, Luxembourg (BeNeLux) have a common trademark register. The scope of protection of a foreign trademark then extends to the respective protected country.
Union Trademarks for european trademark protection
There is also the Union trademark, which is valid for all EU countries at a reasonable price. Please note that the Union trademark is not valid for all European countries. The Union trademark is registered for protection at the EUIPO. Strictly speaking, the Union trademark does not offer complete European trademark protection: Switzerland, Norway or Turkey, for example, are not included. From 2021, a separate trademark application will also have to be filed for Great Britain.
In addition, international trademark protection can be obtained via an IR trademark. WIPO is responsible for the protection of the IR trademark. A basic trademark is required for the IR trademark. A German trademark, for example, is ideally suited for this purpose.
Trademark after the application
If the trademark application was successful and the trademark is registered, the trademark requires further maintenance. On the one hand, care must be taken to ensure that the trademark is used in a way that preserves its rights within the grace period for use, namely for all registered goods or services. For example, if you have applied for the trademark for jeans sports bags, the trademark must be used in a way that preserves the rights for both goods.
In addition, the trademark applicant/trademark owner is obliged to defend his trademark himself against infringing applications of confusing trademarks, i.e. to carry out trademark monitoring. The German Patent and Trademark Office and also the EUIPO do not check, for example, when filing a trademark application, whether the trademark to be applied for collides with already protected trademarks.
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