Trademark lawFAQ on trademarks and trademark law 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 come into being?German trademarks are usually created by entering them in the trademark register kept at the German Patent and Trademark Office. 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 cost?The German Patent and Trademark Office presently charges € 300 for the application for a trademark combined with an entry in the trademark register. 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 legal fees. Who prevails when two parties have chosen the same trademark?Generally speaking, the party that has first registered a name as a trademark for goods or services has “better rights”. The day of the registration is decisive here. From the day a trademark is registered, its owner has the exclusive right to exploit the name for the entered goods or services within the whole area of the Federal Republic of Germany. 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 from such “reservation” as in the case of immediate exploitation. Need trademarks to be registered?In most cases, it is necessary to register a trademark in order to assert the rights to a name and to exploit other advantages of a trademark. It is not obligatory, though. 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 of the whole Federal Republic of Germany. 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 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 should 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 “a waste of money”. In addition, the original owner of a trademark can demand the release of a trademark by means of a caution at a fine. A “simple” search among trademarks effective in Germany (German trademarks, European Community trademarks and international trademarks with Germany being the country of destination) brings about costs – in case of a similarity search – amounting to approx. € 200. Not only do results of such a search answer the question if a similar trademark has already been registered, they also offer an overview of similar registered trademarks. Trademark search is usually conducted by specialised companies, such as ideahelp or Compumark NV. 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 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. What value does a trademark have?The value of a trademark cannot be estimated generally. Basically, the more established a registered trademark is within the market target group, the more valuable it is. Newly registered trademarks can be included as an asset in the financial statement, but initially only to the amount of the registration fees including all additional costs. There are no limits for the value of a trademark What information do we need to register a trademark?Name and address of the party wanting to register a trademark who will later be the trademark owner. In the case of foreign enterprises you also need to know under which jurisdiction the enterprise was founded. The exact sign, logo, etc., which should be registered (a single word, a combination of word/picture or other – as soon as the registration has been forwarded to the Trademark Office no alternations can be made, therefore it is necessary to indicate the sign exactly). The goods or services that should be connected to the trademark. Trademark attorney in germany acting for Europe german trademark office trade mark agent trademark attorney patent attorney trademark check trademark search trademark scan german trademark lawyer germany trademarks register trademark in Germany file trademark application Trademark law trademark rights trademark trademarks trademark protection likelihood of confusion danger of confusion the need to keep a mark free for the trade distinctiveness Community trademark Community trademarks IR-trademark European trademark EU-trademark symbol mark trade name trademark attorney trademark trademark registration at the DPMA German Patent and Trademark Office at the OHIM and at the WIPO title of a work title protection firm company protection company logo legal dispute jurisdiction period of protection protective rights industrial property protection notorious registered application processing nullity procedure application procedure lawyer before the Patent Office in Munich for clients in Germany Europe and worldwide attorney-at-law trademark law name protection trademark act concerning trademark law entering of a trademark in the trademark register owner of a trademark trademark registration Madrid Agreement Protocol to Madrid Agreement trademark agreement trademark office German Patent and Trademark Office ohim WIPO attorney attorney-at-law Hanover Community Trade Mark Registration colour-trademark word mark picture mark word-picture mark trademark brand Trade Mark Law trademark trademarks law office attorney Hanover priority business designation infringement claim intellectual property nullity industrial property protection IP law law patent Patents patent protection patent search mark search name company Trade Mark EU Europe Hanover Lower Saxony registration right lawyer patent attorney attorney-at-law lawyer lawyer brand branding trademark design logo trademark sign confusion trademark adovocat trademark law implementing regulation trademark costs portfolio trademark agent trademark agency production comic right trademark law trademark act trademark implementing regulation protectable signs application area protected marks and other signs requirements contents and grounds for refusal and business symbols transfer of licences and trademarks marks business symbols; precedence seniority of a trademark as a trademark protectable signs trademark protection precedence seniority of a trademark requirements fort he protection of a trademark to enter in a register ownership grounds for refusal registered trademarks entered into the registry relative well-known earlier mark the scope of protection infringement exclusive right of the owner of a mark; statement of claim exclusive right of the owner claim for nonfeasance; statement of claim representation of a registered trademark claims against agents or other representing parties information claim protection limitation statute of limitations forfeiture of a right forfeiture of rights binding effect of trademark registration use of names and descriptive data spare parts shop exhaustion forfeiture of rights due to the insufficient use of a trademark trade mark use trademark transfer of a right legal ownership; deliveries to the owner physical rights compulsory enforcement; bankruptcy proceedings licences registered trademarks registration procedure registration requirements day of registration; registration claim; publication of registration foreign priority examination of grounds for refusal absolute grounds for accelerated patent examination withdrawal of the application modification of an application correction of an application registration objection objection of nullity insufficient use of a trademark decision on objection correction; division; duration of protection prolongation modification register publication duration of protection prolongation relinquishment expiration and nullity; nullity proceedings expiration nullity due to absolute grounds for refusal nullity due to existence of older rights effects of nullity due to expiration or nullity cancellation by the Patent Office due to expiration cancellation procedures before the Patent Office on absolute grounds for refusal cancellation procedures before ordinary courts general rules concerning proceedings before the Patent Office jurisdiction Patent Office justification objection expert opinion court hearing investigation; hearings; wording decisions; communication of the possibility of appeal access to the files; access to the register proceedings costs and charges recollection proceedings before the Patent Office appeal; proceedings in open court participation of the president of the Patent Office oral debate decision on objection costs of the objection proceedings; preparation of an oral debate taking of evidence wording judicial finding of fact; legal hearing delivery of the decision; delivery; justification correction representation; power of attorney application of further regulations; invalidity; access to the files proceedings before the Patent Office legal complaint correction of the complaint; grounds for complaint more participants application of further regulations decision on legal complaint award of costs common regulations duty to tell the truth official language und deliveries legal assistance collective trademarks ownership registrability of geographical indications of origin as collective trademarks limitations of protection; use right to sue; recompense for damage regulation governing use of the marks lawyer attorney-at-law nullity Community trademarks protection of trademarks according to application of rules of this act IR application costs entry in the register subsequent extension of protection effect of international registration absolute grounds for refusal of protection examination of the absolute grounds for refusal objection subsequent refusal to protection objection and application for cancellation on grounds of an internationally registered trademark exclusion from rights due to lack of utilisation of transferred trademarks with international registration trademark protection according to the protocol of the madrid trademark agreement application law on competition lawyer law Hanover Hannover regulation of this act IR-application fees note for the file; entry in the register subsequent extension of protection Adequate application of the regulations regarding the effect of According to the Madrid Agreement concerning the International Registration of Marks Trademark Agreement internationally registered marks transformance of an international registration Community trademarks application of Community trademarks at the Patent Office application of these regulations subsequent trademark subsequently declared void transformation of community trademarks community trademark courts; community trademark litigation informing the comission territorial jurisdiction of the community trademark courts insolvency procedure geographical indications of origin indications of origin protection of indications of origin names protected as geographical indications of origin data or signs scope of protection; claim for damages expiration protection geographical indications of origin according to the regulation (EWG) Nr 2081/92 application for the registration of a geographical indication of origin Application for altering specifications opposition proceedings responsibilities within the patent office jurisdiction; appeal monitoring right to forbearance; claim for damages expiration authorisation to create regulations protection of individual geographical indications of origin other regulations relating to the procedure of application and objection according to the regulation litigation protocol trademark infringement filing a trademark registration EU-trademark IR-trademark OHIM EPO European Patent Office German Patent and Trademark Office Trademark Act trademark guideline trademark law trademark infringement warning notice interim injunction: Trademark Act industrial property protection infringement of a trademark warning notice title title protection right to a name trademarks registered trademarks used trademarks known trademarks company symbols firm lawyer multimedia trademark trademarks competition warning notice company symbols HTML law attorney-at-law trademark trademark law infringement of a trademark right to a name warning notice interim injunction word mark picture mark domain names trademark slogan ad trademark branding mark communication advertising trademarks law office law offices solicitor solicitors barrister barristers counsel law firm law firms lawyer attorney-at-law avocat avocats advokatur abogado abogados bufete de abogados despacho de abogados estudio jurídico estudio jurídico patent germany german eurpean europe trademark attorney attorneys lawyer lawyers trademarks investment law office law offices law firm law firms attorney-at-law law office abogado avocat abogados avocats bureau d'avocats estudio juridico bufete de abogados avvocato Trademark Act attorney-at-law lawyers attorneys-at-law Berlin Munich Cologne Hamburg Hanover trademark trade name passing off competition law germany german attorney trademark agent trademark agents |
|
| 
