What is a trademark?
A trademark is a name, a company name, a term, a logo or a combination of these that identifies a company, goods or services. The purpose of trademarks is to symbolise an origin that you associate with certain contents, such as quality, price merits and others.
A trademark constitutes a monopolist right; similarly to ownership of an article of property, the trademark owner can proceed with his trademark almost exclusively as he pleases, which means that he can for instance exploit the trademark himself, he can sell it or license it to single or multiple third parties.
How does a trademark comes into being?
German trademarks are usually created by entering them in the trademark register kept at the German Patent and Trademark Office. This is not, however, the only possibility. In certain cases, trademark protection can come into being by means of exploitation of a name, namely in that moment when this name has become so popular that it recognised by a considerable number of people in an addressed target group who see the name as a trademark of a certain enterprise.
How much does a trademark registration costs?
The German Patent and Trademark Office presently charges € 300 for the application for a trademark combined with an entry in the trademark register for three classes of goods/services for a typical trademark. Trademarks are always entered for particular goods or services, which are divided into 45 classes.
The official registration fee includes trademark protection for 10 years. This sum does not, however, include pre-application costs, such as possible research costs, as well as post-registration costs, such as European and international registration.
Is it possible to “reserve” a trademark before actually exploiting it?
It is not obligatory to exploit a trademark immediately; it can therefore be “reserved” by means of registration. It is only when five years have passed that a third party can object to the so called “non-exploitation”.
The same laws can be derived in the first five years of such “reservation” as in the case of immediate exploitation.
What are the advantages of a trademark registration?
A registered trademark is attested in the form of a certificate for the trademark owner and results in an almost monopolist trademark protection in favour of the owner in the area applied for. The existence of a trademark right can be proven to a large degree by means of a certificate.
A registered trademark can turn out to be extremely important when registering or preserving a domain name in the internet. Contrary to trademark registration, domain registration under private law does not guarantee any exclusive rights.
Moreover, a trademark offers recognition among competitors. Usually, the trademark register is consulted when looking for a new name in order to avoid a name similar to one that has already been registered. Furthermore, a trademark can safeguard a company name. At entering a company name the commercial register examines merely locally whether such a name has already been entered. Even an enquiry directed at a local Chamber of Trade and Industry does not result in an examination on a nationwide level. It can therefore be sensible to secure a company name by means of a trademark.
Apart from these protective and informative functions, trademarks also offer protection against counterfeit merchandise concerning services and goods.
When shall a trademark be registered?
You should apply for a trademark as soon as possible since the day of the application decides since when a trademark protection begins.
Is a trademark search necessary prior to applying for a trademark?
The filing of an application for entry in the register of trademarks is only recommended after completion of a trademark search. If there already is a similar or identical trademark for similar goods or services, a later application would usually be unnecessary. In addition, the original owner of a trademark can demand the release of a trademark by means of a caution at a fine.
Are there any possible hindrances to entry?
The Trademark Act specifies a number of entry hindrances. Thus, descriptive names and generic concepts (such as “computer”) cannot be registered. The same applies to certain general names, since they must be kept available or because they cannot be distinguished from one another. For example, “company consulting” for the service known in German as “Unternehmensberatung” would have to be kept available.
What is trademark licensing?
The owner of a trademark can “lease” his trademark, i.e. “license” it for a licence fee. Contrary to e.g. a rented flat, a trademark can be licensed as a right to as many interested parties as the owner wishes. Being a monopolist, the trademark owner can place numerous conditions, which would normally not be allowed. This results from the fact that a trademark is desired as a monopoly.
How is a trademark entered?
Filling in and handing in an application for a trademark registration to the German Patent and Trademark Office of leads to entering a trademark by the Trademark Office following the examination concerning certain protection hindrances. The German Trademark Act describes a number of reasons for the rejection of trademark applications. Therefore, it is important to make every possible effort to handle the trademark application professionally.
What does the German Patent and Trademark Office examine?
The Patent and Trademark Office examines first of all absolute and relative protection hindrances, apart from the formal examination of the application, i.e. whether all statements comply with the legal requirements and whether all fees have been paid. If no such hindrances have been stated and if the formal examination has been successfully completed, a trademark is entered into the trademark registry and published in the official journal. Within three months’ period, third parties can raise an “objection” to the trademark entry. Usually three to twelve months pass from the day of filing an application until the trademark is entered. The examination is completed within six months in the case of the so called summary examination, requiring additional fees.
How much does it cost to maintain a registered trademark?
A registered trademark is protected for a period of ten years starting from the day of registration without any additional charges. Each trademark can successively be extended by further ten year periods. If it turns out after ten years that a trademark should be mainained, an extension fee has to be paid to the Patent and Trademark Office.
How is the representation of the trademark and its form indicated?
The application must contain the representation of the trademark. Otherwise the application will not be considered effective and will not secure the seniority of the filing date. With one application, you can only apply for one trademark. Once the application has been filed, the trademark applied for, may no longer be altered. The trademark for which protection is sought must therefore be reproduced in the application in exactly the same way as it is to be protected in the future. If the position of the trademark desired by the applicant does not result automatically from the illustration, the “top” or “bottom” of each representation must be indicated by a corresponding note.
If the application concerns a three-dimensional design as a trademark (three-dimensional trademark), it is possible to file up to six different views of the trademark (each four times). All views must be listed on one sheet with above. The illustration must sufficiently identify the object of protection and present completely in all essential characteristics.
If a sound is to be applied for as a trademark (sound mark), in addition to a graphic representation of the trademark (representation by a stave), a sound representation of the trademark (on a diskette, compact cassette or CD) must also be attached to the application.
Which forms of trademark exists?
Word marks (Sec. 7 Trade Mark Regulation) are trade marks consisting of words, letters, numerals or other characters which can be represented by the usual typeface used by the DPMA.
Figurative marks (Sec. 8 Trade Mark Regulation) are pictures, figurative elements or illustrations (without word elements).
Word and figurative marks consist of a combination of word and figurative elements, or of words that are graphically designed. They form a subset of the figurative mark.
Three-dimensional trademarks (§ 9 MarkenV) are objective trademarks, i.e. they consist of a three-dimensional design.
Sound marks (Sec. 11 MarkenV) are acoustic, audible marks consisting of tones, for example a short melody.
Tracer thread marks (Sec. 10 Trademark Ordinance) are usually coloured stripes or threads attached to certain products (usually cables, wires or hoses).
Another form of trademark (§ 12 MarkenV) is involved if the trademark cannot be assigned to any of the aforementioned forms of trademark. For example, a colour mark consisting of a contourless colour or a combination of several colours is a recognised other form of trade mark.
What must always be considered in the list of goods and services?
A trade mark application must in any event contain a list of the goods and services which are to be identified by the trade mark applied for. Once the application has been filed, the list of goods and services can no longer be extended. Restrictions, however, are possible at any time.
The scope of protection of a trademark depends on the goods and services for which it is protected. All goods and services are divided into 45 classes according to the “International Classification of Goods and Services for the Purposes of the Registration of Marks”. The amount of the fee to be paid for the application depends on the number of classes claimed.
The goods and services to be identified by the trade mark must be named literally on the form – the indication of mere class numbers (such as “12, 22, 36”) is insufficient. The goods and services must be specified precisely so that they can be clearly assigned to the correct class of goods or services and the scope of protection of the trademark can be clearly defined in a later dispute. For example, general terms such as “accessories” or “systems” are not sufficiently defined. If indefinite terms are used, the application procedure, which typically lasts 3 to 12 months, can be considerably delayed.
The DPMA’s search engine for goods and services also offers good help in drawing up a list of goods and services (http://www.dpma.de/suche/wdsuche/suchen.html), which, in addition to the terms used in the classification and the alphabetical list of the international classification, contains numerous other terms whose registration is accepted in principle by the DPMA in this form, also offers good help in drawing up the list of goods and services.
Attention: Each additionally claimed class of goods or services increases the probability that owners of earlier trademarks will file an opposition against the registration of the trademark. In addition, the Trademark Act provides for an obligation to use all claimed goods and services. This means that the trademark must actually be used in the course of trade for all goods and services claimed in order to maintain the right to it. Nevertheless, it is a difficult individual question as to the scope of the list. According to the recommendation of the Patent Office, when formulating the list of goods/services you should only orientate yourself on the actual circumstances of your business orientation, your business planning or your other thematic orientation, regardless of whether less than the three classes covered by the application fee are claimed as a result. This recommendation may normally – from the Office’s point of view – seem reasonable; for applicants for signs, however, completely different tactical considerations may also have to be brought to the fore.
What does examination of the application for absolute grounds for refusal mean?
Further processing of the trade mark application will only take place after payment of the application fee and, if applicable, the class fees (Sec. 5 (1) Patent Costs Law). Thereafter it is examined whether the application fulfils the formal application requirements and whether there are so-called absolute grounds for refusal (Sections 36, 37 Trade Mark Law).
The DPMA does not examine whether similar or identical marks have already been registered. Proprietors of earlier trade marks may only oppose the registration after the trade mark has been registered.
Furthermore, it is examined whether absolute grounds for refusal within the meaning of Sec. 8 Trade Mark Law preclude the trade mark. Accordingly, signs or indications which merely describe the goods or services claimed according to their nature, quality or other characteristics and features are excluded from registration. If an absolute ground for refusal is established, the applicant will be informed of this in a notice of objection. If the ground for refusal persists even after the opinion has been taken into account, an official in the higher or higher grade of the civil service or a comparable employee may, depending on the allocation of duties, issue a decision rejecting the application as examiner. If a decision has been taken by a member of the upper grade of the civil service or a comparable employee, a reminder may be lodged against that decision, on which a member of the upper grade of the civil service or a comparable employee will then decide as a reminder examiner. An appeal may be lodged with the Federal Patent Court against the decision of a higher civil servant. The period for filing the reminder and the appeal shall be one month from the date of delivery of the order.
If all formal requirements are met, the fees paid and no absolute ground for refusal is found, the trademark applied for is entered in the register and the entry published in the Trademark Gazette. The trademark owner receives a certificate of registration as well as a certificate of the other information entered in the register.
What trademark owners can do against new trademarks (opposition)?
Following the publication of the registration of the trade mark, proprietors of earlier trade marks which have been applied for or registered may, within a period of three months, oppose the registration of the trade mark (Sec. 42 Trade Mark Law).
If one or more oppositions are received, the DPMA informs the proprietor of the challenged trade mark, who is then given the opportunity to submit his observations. After both the opponent and the proprietor of the challenged trade mark have had the opportunity to submit observations, an official of the higher civil service or a comparable employee or a civil servant of the higher civil service decides on the opposition, depending on the allocation of duties. The opposition is upheld and the later mark cancelled if there is a likelihood of confusion on the part of the public due to the identity or similarity of the opposing mark with the registered mark and the identity or similarity of the goods and services covered by the two marks (Sec. 9 (1) No. 2 Trade Mark Law). Otherwise the opposition will be rejected.
The decision is again subject to a reminder or appeal to the Federal Patent Court (see above).
In order to rule out oppositions as far as possible, it must be established before filing a trade mark application whether identical or similar trade marks have already been registered. Such a search also requires a legal assessment.
Attention: Any information from the offices that such a trademark does not yet exist is not sufficient in any case. This is because a similarity search must be carried out; pure identity searches may at best develop significance in the trademark search.
In addition, the registered trade mark may be cancelled at the request of third parties in proceedings before the DPMA due to revocation (Sections 49, 53 Trade Mark Law) or due to invalidity due to absolute grounds for refusal (Sections 50, 54 Trade Mark Law). In addition, the registered trade mark may be cancelled after the conclusion of cancellation proceedings before the ordinary courts for revocation or for the existence of earlier rights (Sections 49, 51, 55 Trade Mark Law).
What does it cost to maintain the registered trademark?
For a period of 10 years from the date of application, no further official fees will be charged. A trademark can be renewed as often as desired for a further 10 years. If it turns out after 10 years that the trademark is to be maintained, a renewal fee must be paid to the Patent and Trademark Office.
What value does a trademark have?
The value of a trademark cannot be generally determined. In principle, a registered, distinctive brand is all the more valuable the more it has established itself on the market with the target group. Newly registered trademarks can, for example, be included in a balance sheet as an asset, whereby this value initially includes the costs of registration including any ancillary costs. There are no upper limits to the value of a trademark.
What do we need to protect your claim under trademark law?
In addition to the exact reproduction of the claim, we require the indication of the services to be rendered with the trademark in order to formulate the list of goods and services. Please also let us know who is to become the owner of the trademark. You can do this by form, e-mail, fax or letter.