What is a trademark?
According to Trademark legislation (MarkenG) a trade mark can comprise signs, in particular words, names, letters, numbers, colours, a phrase, sound, smell, logo, shape, picture, 3 D design , aspects of packaging, colours and colour arrangements groupings or any combination of these. A trade mark is a unique way of identifying a product or service to distinguish it from its competitors.
A Trade Mark can be a word, letter, number, symbol, shape, logo, design, scent or phrase which a trader or service provider uses to distinguish their goods or services within the marketplace.
What type of trademarks exists?
Trademarks are classed into words, pictures, combination of word and picture, 3-D-trademarks, contour less colour signs, as well as sound and scent trademarks.
In existence are national trademarks, European Union trademarks and International registrations all depending on operational areas.
The national (German) trade mark applications or the European equivalent must be filed with the German patent and Trademark authority situated in Munich, or else at the department of domestic ip services in Alicante, Spain. There are two ways to achieve trade mark protection. Either individual applications can be lodged directly with each country or, an application can be made through the Madrid Protocol where a single international application can be filed in any number of the member countries. Applications for international trade marks using the Madrid Protocol must be based on an existing domestic trade mark application or registration.
When registered for Germany only, trademark protection is not guaranteed elsewhere. However when registered on a European level as described above; the trademark protection is valid for all EU member countries. Furthermore, The International registration is based on the domestic listing. This registration is guaranteed because of the Madrid protocol and its worldwide members and any members that signed on after the protocol has taken effect.
International Trade Marks
If you export your goods or services internationally or are planning to do any form of business overseas, you should consider registering your brand as a Trade Mark.
It is customary that overseas businesses register their brands as Trade Marks in Germany, so it makes sense that German businesses follow suit by protecting their Trade Marks internationally.
I am experienced in filing applications via the Madrid Protocol. The Protocol is an international treaty allowing a Trade Mark owner to register a Trade Mark in any country which has signed the treaty using an “international application”. Over sixty countries have become “Contracting Parties” to the Protocol.
I can also provide you with strategic advice on protecting your brand in overseas jurisdictions.
A word brand is a certain word term, which contains both abstract and concrete concepts. Distinctiveness in the sense § 8 Abs 2 NR 1 MarkenG is the concrete suitability of a brand which is used as a distinction means for goods or services of a business in relation to other existing businesses to be understood and recognised on a regular basis. The smallest distinctiveness is sufficient (prevailing case law/ jurisdiction, see. BGH GRUR 1995, 408, 409 – PROTECH; BGH GRUR 1999, 1089, 1091 – YES; BGH GRUR 1999, 1093, 1094 – FOR YOU; BGH GRUR 2002, 816, 817 – BONUSES II). A word brand possesses however no distinctiveness, if a commonly known word can be assigned to describe the content of the meaning for the goods or services in question and is a word within the German language or a well-known foreign language word that is commonly used and understood widely., (see. BGH a.a.O.).
A picture sign or commonly known as logo is an abstract and concrete trademark with strong distinctiveness legally registered with the German Patent and Trademark registration board.
Distinctiveness of § 8 sec. 2 no. 1 MarkenG is according to prevailing case law in the Federal law court the concrete suitability and adequacy of a commonly known distinction means for that in speech of standing or to be interpreted services of a business vis-à-vis such of business other (cf. BGH, Beschl v. 5.12.2002 – I ZB 19/00, GRUR 2003, 342 f.s = WRP 2003, 519 – Winnetou, m.w.N.). Because only the lack of each distinction power establishes an entry hindrance, a generous standard is to be based on, i.e. each, yet so slight distinction sufficed, to overcome protection barrier. The Federal courts’ criteria test takes into account the symbol itself and if it only reflects the core of the produce on offer then the core of that is not sufficient enough to constitute an effective picture / logo trademark. The sign simply existing as a geometric form or simple commercial graphic (strokes, points or circles), § 8 Abs. 2 Nr. 1 MarkenG. sec. Distinction power is actively missing (cf. BGH, Beschl v. 5.11.1998 – I ZB 12/96, GRUR 1999, 495 = WRP 1999, 526 – labels; Beschl v. 26.10.2000 – I ZB 3/98, GRUR 2001, 239 f.s = WRP 2001, 31 – toothpaste cord). As far as the elements of a picture sign represent only and solely the commonly known typical features or simple decorative formation for goods on hand which the general public is accustomed itself to through frequent use. The signs describing content lacks the concrete suitability of a trademark picture brand or logo. (cf. BGH GRUR 1999, 495 – labels; BGH, Beschl v. 8.12.1999 – I ZB 25/97, GRUR 2000, 502, 503 = WRP 2000, 520 – St. Pauli Girl; Beschl v. 16.11.2000 – I ZB 36/98, GRUR 2001, 734, 735 = WRP 2001, 690 – jeans pants pocket). However, when the picture sign has additional attributes, characters, and properties that extend beyond the products core typical look, the distinction power cannot be denied (BGH GRUR 2001, 239, 240 – toothpaste cord).
A word and picture mark is the combination of a word and a picture component, whereby it concerns an on-going combination of elements of text and diagram. Contrary to the word mark word and picture marks can be legally protected as a word component word of a picture mark by means of word a picture mark, which are not accessible to the trademark protection due to the lack in distinctiveness. The trademark protection of a word / picture mark extends however always to the entire word and picture component.
A 3-D-Mark has an in-built strong protection because of its significant shape. Three-dimensional shapes, designs and characteristics are however excluded from registration, in so far as when the product design in itself constitutes the overall value. The reason for a very close interpretation of the registration exclusions stems from the consideration that three-dimensional shapes and designs attain a suitable protection by registering a design patent instead. However design patents – different to marks – can not randomly be extended, often exist the interest to occur the temporal stipulation of a time limit of the patent right as for the model/the shaping a protection is attained over a three-dimensional mark.
Contour less colours are monopolised colours not shapes of colours. An abstract colour carries a concrete and unique distinctiveness which enables the business to differentiate itself. The intention is to recognise its goods / services on offer from its competition / competitions.
Contour less colour trade marks help consumers to recognise the origin or source of the goods or services being offered. Having a Trade Mark allows consumers to identify with your goods and services. A Trade Mark can also become a signifier of the quality of the goods and services on offer.
Such distinctive colour can generally be registered with the German Patent and Trademark authority as mentioned before. (Cadbury’s purple is an excellent example of a contour less trademark colour.) The colour has to be graphically illustrated. This graphic illustration is only valid if it complies with the following attributes and consistency rules: clear, unique, complete, accessible, named, on-going and objective. Trademark colours are classified by International Colour Classification systems (RAL, HKS, and PANTONE).
A Sound Mark (Trademark) can generally be registered with the German Patent and Trademark Authority in Munich as mentioned earlier. Suitable sound trademarks need to function in the same way as other trademarks. Products and services of a business need to be distinctively different from its market competitors and enhance or create such distinctiveness. The registered sound mark must be however graphically representable. Graphic representation is only given if it complies with the following attributes and consistency rules: clear, unique, complete, accessible, named, on-going and objective.
Hence the sound mark has to be in usual musical notation. The application additionally has to submit an acoustic rendition of the submitted sound mark.
An Aroma / Scent / Smell (Trademark) can generally be registered with the German Patent and Trademark Authority in Munich. Suitable aroma trademarks need to function in the same way as other trademarks. Products and services of a business need to be distinctively different from its market competitors and enhance or create such distinctiveness. The registered aroma trade mark must be however graphically representable. Graphic representation is only given if it complies with the following attributes and consistency rules: clear, unique, complete, accessible, named, on-going and objective. See. Urteil des EuGH v. 12. Dezember 2002, Az. C-273/00).
An Aroma / Scent or smell needs to be graphically described. However this is not 100% accurate. Depositing an Aroma sample does not constitute Article 2. Hence an Aroma sample lacks stability and continuity.
When the aroma signifier lacks a chemical formula or a word description, the criteria for registration are not met. This combinations is not sufficient enough for graphic representation and to constitute a proper aroma sample and stipulate an appropriate registration entry.
How is a trademark created?
Trademark protection evolves in different ways. However, Trademark protection will provide you with a true asset.
All trademarks can generally be registered with the German Patent and Trademark Authority in Munich. According to the same legislation but § 4 Nr. 2 MarkenG the plain use of a distinctive sign stipulates a trademark if recognised generally by 25-30%. When the sign is not distinctive but recognised by 60% the trademark is protected. However, according to the Mutual Parisian agreement if a trademark has gained notoriety it is equal to a general recognition overall.
Is a trademark relevant to my business and or myself?
Unless you have a trademark, you do not own your business name.
A trademark is intended to help distinguishing the goods and services of one company from other identical or similar products or services of the competitors on the market. Therefore a trademark is always connected to certain goods and services. It is the most powerful instrument in business competition. It has role in advertisement and in indicating quality. The novelty of mark is not a condition for registration, but no similar trademark should be present on the same market and the sign should be distinctive. In case of successful registration the trademark provides exclusive right for the holder to use the mark in the territory of the European Union. There is no limitation on the number of times of CTM renewals.
Let’s look at the following scenario.
A consumer purchases a certain type of tomato soup and has managed to locate a very pleasing one indeed. The consumer wishes to purchase exactly the same soup again. Imagine if all tins of tomato soup from different manufacturer where just placed on supermarket shelves without any significant brand logo. The consumer would not be able to ever locate its preferred item ever again, only by chance of course.
Only the brand distinctive wrap on the specific tins allows the consumer to buy exactly the same brand again and over and over again. Brand power guides the consumer to its favourite want instead of satisfying only a specific need. The brand therefore is an incredible important marketing tool. The brand power signifies reoccurring and dependable quality, this is valid for both goods and services.
The following advantages are provided by a trademark:
- The trademark helps to identify the origin of products and services.
- The trademark creates an exclusive link between the products/services and a trademark owner. This means a guarantee for consumers regarding the constant quality of products/services identified by the trademark.
- In this respect it is a powerful marketing instrument.
The legal protection arises from the fact of registration. However, in some countries, under certain restrictive conditions marks without registration are given a certain level of legal protection as well.
By registering a trademark, the owner has the exclusive rights to use and dispose over the trademark in connection with its products and services. On the other hand it means that the owner has the right to claim legal protection against any other entities using similar or identical marks on similar or identical goods/services without the authorization of the trademark owner.
What is the scope of trademark protection?
According to § 14 Abs. 1 MarkenG the registration of a trademark guarantees exclusive ownership protected by the trademark protection laws.
The followings are generally required: clear presentation of the mark, list of goods/services in relation to the mark is intended to be used, power of attorney for your representative.
Trademarks ensure protection in connection with economic activities particularly with certain goods and services. The scope of protection is rather wide. Not only identical but also similar marks may lead to an infringement if used in respect of similar or identical goods. In many countries well-known trademarks enjoy a special position. They are entitled to protection against similar or identical marks even if the goods and services in concern are different, supposing that the user of the mark would benefit from the reputation of the well-known trademark.
The different goods and services are classified into 45 classes based upon an international agreement applied in 78 countries. All European countries use this classification. The classification involves 34 classes of goods and 11 classes of services. It is strongly recommended to prepare the list of goods thoroughly since there is an obligation to use the trademark in connection with the list of goods after 5 years of registration and also because the more classes are indicated the more the registration costs.
According to § 18 MarkenG as well as §§ 823, 1004 BGB is a third party obliged that uses the registered trademark unlawfully to destroy all relevant marketing and advertising materials. This includes in particular brochure, catalogues, business stationary and all other advertising materials.
What are the absolute and relative grounds for refusal?
These grounds are related to refusal of trademark registration. Absolute grounds refer to the incapability of marks to be distinctive, graphically presented, or being deceptive for consumers in connection with the goods and services or against the public order. Relative grounds are in connection with earlier trademark and other rights. Most national offices carry out search for earlier trademarks however it is not “examined” and not taken account at granting.
In many countries there is an opportunity provided for earlier trademark holders to step up against a registration of a later conflicting trademark during the registration procedure. Usually a certain period is given to file an opposition after the publication of the trademark application. The assistance of a qualified trademark attorney is essential to overcome any possible difficulty.
What is an invalidation procedure?
A Trademark can be cancelled from the register in case
- the trademark did not comply with the legal requirements at granting or
- there is a conflict with an earlier trademark or
- the trademark was not used after the grace period of time. It has the effect of ceasing legal protection.
Level of research before a new trademark can be registered.
Do trademarks have to be researched in relation to already existing trademarks before commercial use? Where and why do I have to look?
It is suggested to choose a mark that best fits both the products and services and the profile of the company in concern. Once a mark is chosen it is advisable to complete a similarity search in the targeted country. It is intended to exclude possible conflicts with earlier trademarks, bearing in mind that the holders of mentioned trademarks may hinder the registration of the trademark.
Research is essential. In fact it is mandatory. Existing trademarks of all kinds have to be researched and investigated, because unless you have a trademark, you do not own your business name.
The extend of the research must include domestic, the European and the wider international markets.
The following criteria need to be established before proceeding any further:
- the new trademark is not identical to an existing one that is already in use.
- trademark protection applies to the specific word/logo/aroma
- by registering the trademark no domestic or international laws are broken.
Neither the registration office in Germany nor the European Department in Spain conduct a solid research into existing trademarks.
Hence you need to do this yourself by engaging the services of an effective and competent attorney.
However starting point on an individual basis is of course the internet. Typing in words into Google or any other search engines will give you an initial idea about existing trademarks. Said this, however, it is not enough. The registry offices and their respective data basis need to be researched. This has to be done by a specialised attorney, like myself. This will give you peace of mind and pre-empt costly legal action and subsequently fees.
This measure is pivotal to insure that existing trademarks do not compete or interfere with the one you are intending to use and register.
Doing this reasearch by an attorney safeguards businesses selling products and services internationally, or getting products made and importing them worldwide.
Even though you think it’s enough, registering a business name does not mean you own that name. Under the law, if someone else has a trademark that is similar to your business name, they can stop your business. You only own your name with a trademark.
I give you the right advice and ask the right questions. Work is undertaken based on your instructions.
I search, draft, and manage your Trademark application to the point of acceptance by the Trade Marks Office.
I consistently get trademarks accepted, by giving you the right advice.
Can proprietors of commercial labels / companies legally pursue me and my trademark?
Stop Trading Letters and Trademark Oppositions
In many countries there is an opportunity provided for earlier trademark holders to step up against a registration of a later conflicting trademark during the registration procedure. Usually a certain period is given to file an opposition after the publication of the trademark application. The assistance of a qualified trademark attorney is essential to overcome the possible difficulty.
Are others using your trademark? Are you being threatened? Either way, there are definite steps you can take now to protect your business.
If you have received a stop trading letter, or have others using your trademark, the situation can be assessed and this will provide you with you clear advice on your rights and options available.
IP Services ascertains the status of your statutory and common law trademarks, and proceeds then to advice on the best course of action. The benefits of my services are clear. Trademarks are like domain names — once they’re gone, they can be difficult to recover. Opposing a trademark can regain your name. But there are ways to stop others from using your name, and oppositions are one way to do this.
Oppositions often entail expert knowledge in both filing for an opposition, and compiling and presenting your case before a Trade Marks Examiner.
I have the expertise to present and argue your case effectively.
When trademark protection expires. – How long does the trademark protection last and what is the territory of protection?
Trademark protection endures for 10 years. It can be renewed with 10-year terms. Trademarks are entitled to protection on the territory of the country or international organization (European Union – Community Trade Mark) the registration is applied for.
How long does a trademark registration take, what is the process and how to fasten it?
An application to the German Patent and Trademark Authority in Munich must include the following: Appropriate identification of the applicant, representation of the trade mark, Description of the goods and/or services to which it will apply.
Please note that Applications are examined in order of filing, to see if they meet the requirements of the § 32 Abs. 2 MarkenG as desribed above.The period of time taken between filing and examination of applications can vary considerably ( on average 4-6 months ) due to significant fluctuations in the number of applications lodged at any given time. If your trade mark is accepted for registration, the details of the application will be advertised in the Official Trademarks Registry. For 3 months after the advertisement date, anyone who believes that your trade mark should not be registered may oppose its registration. If no opposition is filed against your application, or if opposition is unsuccessful, your trade mark will be registered when you pay the registration fee. An additional fee of € 200 can hasten the process. Your trade mark will be registered from the date you filed your application, not from the date it was examined or accepted.<
What to do when registration is denied and an objection is filed? Trademark Litigation.
Objection has to be filed within 3 months. The appeal needs to be filed in a written format.
The danger or likelihood of confusion is examined in relation to all goods/services in question.
Nevertheless a trademark can be revoked at any given time. Reasons to invalidate a trademark according to §52 ff. 2MarkenG result in the forfeiture of the trademark.
Any breach of the exclusive rights legally provided to the trademark holder constitutes an infringement. Accordingly the trademark holder is entitled to make a claim against anyone who uses similar or identical mark in connection with similar or identical goods and services without authorization. The legal steps that can be taken against such persons vary and determined by state laws. Generally
- declaration of infringement,
- an injunction to cease infringement,
- surrender of enrichment,
- compensation for damages can be requested. A petition for temporary measures may be filed in most countries, within a specified time period.
There are times when only litigation can solve the issue. There are times when a business needs to take action to stop others from using its name and benefiting from its reputation. At those times, taking the matter to court often gets the desired results. But to do so, you need a team who have can work with barristers in the most efficient way to get the result required.
Trademark registration costs.
Costs vary according to the extend of the research. DPMA charges an n initial flat rate of €300. Additional fees are charged if the trademark needs to cover a broader range of categorise and classes.
For the European registration the following fee guideline applies: €850 for an initial registration. Additional fees are charged if the trademark needs to cover a broader range of categorise and classes.
Registration fees with the WIPO vary according to classes and countries.
When trademark protection expires. Renewal is mandatory.
Trademark protection endures for 10 years. It can be renewed with 10-year terms. However the DPMA does not automatically remind trademark holders. At the latest, the trademark owner must renew validity on the very last day of the trademark expiry date. This can be done as often as possible. Fees apply.
The European Union – Community Trade Mark Registration office on the other hand as well as the WIPO will remind trademark holders/owners of the timely expiry date.
Registration with the WIPO. Domestic registration proceeds international registration.
The major international system for facilitating the registration of trademarks in multiple jurisdictions is commonly known as the “Madrid system”. Madrid provides a centrally administered system for securing trademark registrations in member jurisdictions by extending the protection of an “international registration” obtained through the World Intellectual Property Organization. This international registration is in turn based upon an application or registration obtained by a trade mark applicant in its home jurisdiction.
The primary advantage of the Madrid system is that it allows a trademark owner to obtain trademark protection in many jurisdictions by filing one application in one jurisdiction with one set of fees, and make any changes (e.g. changes of name or address) and renew registration across all applicable jurisdictions through a single administrative process. Furthermore, the “coverage” of the international registration may be extended to additional member jurisdictions at any time.
Maintaining trademark rights. Is there an obligation to use the registered trademark?
Trademarks rights must be maintained through actual lawful use of the trademark. These rights will cease if a mark is not actively used for a period of time, normally 5 years in most jurisdictions. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of “non-use”. It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation. An owner can at any time commence action for infringement against a third party as long as it had not previously notified the third party of its discontent following third party use and then failed to take action within a reasonable period of time (called acquiescence). The owner can always reserve the right to take legal action until a court decides that the third party had gained notoriety which the owner ‘must’ have been aware of. It will be for the third party to prove their use of the mark is substantial as it is the onus of a company using a mark to check they are not infringing previously registered rights. All jurisdictions with a mature trademark registration system provide a mechanism for removal in the event of such non use, which is usually a period of either three or five years. Failure to use a trademark for this period of time, aside from the corresponding impact on product quality, will result in abandonment of the mark, whereby any party may use the mark.
Trademarks are the most cost effective way for businesses to protect their name, products and reputation anywhere. By not getting a trademark in a country where you are active or plan to be active, you are leaving your business out in the open.
Every country has their own rules to manage and register trademarks, and I work within those rules to file your trademark to protect your business best.
International trademarks have to be applied for in the country itself, and there is no such thing as a global trademark. I manage international applications across a wide range of countries.
Why do I need a Trademark Attorney?
Because that way you will end up with an asset. Trademarks are involved, complicated and tricky. Only if you’ve been trained in the law and done thousands of trademarks you will know as much as I do. My experience means you get the best on your side and make sure that the result is a good one. Almost every day, I see horror stories. Don’t let these happen to you. My services are cost effective and I always get the job done.