Trademark Law

Trademarks 

A trademark identifies your goods or services so that your buyers or customers can distinguish your goods or services from those of another company. As the familiarity of your trademark and the awareness of the quality of the goods and services offered under the trademark grows, so does the risk of third parties copying your trademark or at least identifying goods or services with a mark similar to your mark. Trademark protection gives you the opportunity to take action against such copycats. 

Trademark Protection

A registered trademark grants the proprietor the right to prohibit third parties from using the trademark for the protected goods and/or services for an unlimited period of time (upon payment of corresponding extension fees).

Trademark protection is determined based on the trademark as well as on the goods and/or services registered. Consequently, a trademark application must include a reproduction of the trademark, typically indicating the type of trademark intended to be registered as well as information for which goods and/or services registration is applied for. There are different types of trademarks, such as word marks, picture marks, color marks, three-dimensional marks, sound marks, tactile marks, olfactory marks, taste marks and similar marks that appeal to human senses.

In most cases, various renderings of the trademark are conceivable, for example in grey scales or in color, as a simple word mark or picture mark or as a combined word/picture mark. We advise our clients in selecting the respective type of trademark and consult with clients when drafting the lists of goods and services.

The Path to a Registered Trademark

In order to obtain a trademark with effective protection in Germany, a German trademark application must be filed with the German Patent and Trademark Office (GPTO) or a Community trademark application (CTM application) must be filed with the European Union Intellectual Property Office (EUIPO). The GPTO and the EUIPO both review whether there are any obstacles to registration. However, when examining a trademark application, neither the GPTO nor the EUIPO review whether any older identical or similar marks exist.

Trademark protection is limited by territory. For protection across Europe, in most cases we recommend that our clients file a CTM application with the EUIPO.

The protection afforded by a German trademark or a Community trademark may be extended to many different countries through an international registration with the World Intellectual Property Organization (WIPO).

Our attorneys are authorized to represent clients at the GPTO, the EUIPO and the WIPO. For national applications in other European countries and countries outside of Europe, we have been working for many years together with selected foreign attorneys in all the important countries across the globe.

Protection Requirements – Trademark Registrability and Types of Marks

As basic requirement for protection of a trademark is the mark’s capability  of being represented graphically. Qithout a doubt this is a given for the best known and most common types of marks, namely word marks, picture marks or combined word and picture marks. However, other types of marks, especially abstract color marks, sound marks (jingles), three-dimensional marks or slogans can be represented graphically and thus can in principle be registered as a trademark.

Protection Requirements – Grounds for Refusal of Registration (Absolute Grounds for Refusal of Protection)

Prior to registration, the GPTO and EUIPO as well as most other national agencies check whether absolute grounds for refusal speak against a registration of the mark. The official review for absolute grounds for refusal of protection is intended to prevent the monopolization of certain signs.

If the existence of grounds for refusing registration is officially cited, most of the time this relates to a lack of any distinctive character or the use of descriptive information (requirement to be kept free for the public).

Since the absolute grounds for the refusal of protection must be examined in close connection with the goods and/or services listed in the trademark application, we discuss with our clients in advance which aspects of a trademark application must be taken into account and which measures can be taken to avoid objections, especially by appropriately selecting the type of mark or by appropriately drafting the list of goods and/or services. 

Protection Requirements – Collision with Third Party Prior Rights (Relative Grounds for Refusal of Protection)

Older third party protected rights, in particular third party trademark rights, which conflict with the ability to register a mark or with the validity of an already registered mark, are referred to as relative grounds for refusal.  

If the trademarks as well as the goods or services identified by this mark are identical (double identity), the earlier trademark or trademark application clearly conflicts with the newer trademark or trademark application.

However, the examination of relative grounds for refusal of protection is not limited to facts involving double identity. In fact, in most cases it must be examined whether the risk of confusion exists for consumers and customers, including the risk that the trademarks are consciously linked with one another due to the identity or similarity of trademarks or the identity or similarity of the goods or services identified with this trademark. With well-known trademarks the scope of protection may even extend to goods and services outside the sphere of similarity of the goods and services registered for the known trademark. 

Neither the GPTO nor the EUIPO officially examine the relative grounds for refusal of protection in the registration process. Though the EUIPO does send search reports regarding potentially relevant earlier Community trademarks, it does not take any action itself as a result of the reports. Proprietors of earlier trademarks, however, may file an opposition immediately after the GPTO has registered a trademark or the EUIPO has published a Community trademark. By contrast, in other countries the respective national agencies definitely do check for any earlier rights already in the registration process.

Opposition Proceedings

Proprietors of earlier rights may file an opposition after a German trademark has been entered into the GPTO register or after the EUIPO has published a Community trademark. 

If an opposition has been admissibly filed, it is officially checked and decided in the opposition proceedings whether there is any risk of confusion between the trademarks in question, on which the opposition is based, and the challenged trademark or trademark application. If the competent office confirms the risk of confusion, the registration of the younger trademark is cancelled (GPTO) or the application is rejected (EUIPO).

We represent our clients both in active opposition proceedings, in which action is taken against younger trademarks or trademark applications, as well as in passive opposition proceedings against the trademarks or trademark applications of our clients. At the same time, we discuss also with our clients the possibility of whether litigious proceedings can be resolved cost-effectively or avoided altogether through delimitation agreements. 

Opposition proceedings are subject to a deadline. However, if the deadline is missed, it is still possible to challenge the trademark in nullity proceedings.

We conduct collision monitoring for our clients in order to be able to react in a timely manner to third party trademark applications or registrations.

Priority

If the relevant application is a first application, within a priority period of six months starting with the date of application the priority of this first application can be claimed for subsequent applications worldwide in virtually all economically relevant countries. This means that the subsequent application receives the same priority as the first application.

Searches

It is regularly concluded already from a trademark application that the trademark will be used or is intended in the near future for the goods or services to be registered. A trademark application that infringes an older trademark of a third party may therefore result in the proprietor of the earlier trademark asserting a claim of injunctive relief on the grounds of trademark infringement, because already filing a trademark application may constitute a risk of first infringement for a trademark infringement.

Since the GPTO, the EUIPO and many other countries do not conduct an examination of whether older identical or similar marks exist, the registration of one’s own trademark may not therefore be misconstrued as any indication or guarantee that the trademark proprietor may legally use the trademark free of risk. Despite the registration of a trademark, earlier registered third party marks may exist that conflict with the use of the trademark.

Trademark infringement does not only occur in cases where the earlier trademark of a third party has a mark identical to the younger mark and relates to identical goods and/or services. Trademark infringement may also occur if a court makes the assessment that the trademarks and the goods and/or services respectively in question are so similar that the consumer could confuse them or could also become confused simply because of this. With well-known trademarks this could result in a scope of protection that extends beyond the similarity of goods and/or services.

In addition to earlier registered marks, even other protective rights could conflict with the use of one’s own trademark. This especially includes corporate trademarks like company names and other business signs known in trade, working titles such as names of publications, audio-visual media or software products and trademarks acquired by use.

Before starting use of a trademark and before filing a trademark application we urgently advise our clients to conduct a search. Depending on the case, in the simplest scenario such a search may be limited to a trademark identity search restricted to searching identical trademarks. The more important the risk-free own use of the mark is, the more urgently we recommend searches extending beyond the mark identity search. We also offer to conduct or coordinate trademark similarity searches or company searches for our clients. The trademark similarity searches search for trademark rights whose trademarks only have legally insignificant deviations from the sought trademark. The company search searches in official registries on trademarks for identical or similar company names that are registered for the relevant field of activity.

Monitoring

Not only can similar third party trademark applications have a detrimental impact on marketing but also result in diluting the trademark and thus weakening one’s own trademark. Therefore we also offer our clients collision monitoring.

As part of collision monitoring, specific countries or worldwide reviews are conducted at regular intervals, including checking official publication databases for newly registered third party trademarks or new trademark applications. The monitoring is carried out either comprehensively for all classes or only for certain classes of the Nice Classification, according to which goods and services of currently a total of 45 classes are categorized. We review the hits found and check them for relevancy. You are notified of relevant hits.

Trademark Infringement

Many years of experience, professionalism and assertiveness have contributed to our successful handling of infringement disputes at home and abroad, especially in defending or enforcing our clients’ existing trademark rights. In all matters involving industrial property rights, we defend our clients against infringements or against third party attacks. In the corresponding civil proceedings, we cooperate domestically with highly specialized law firms that exclusively handle disputes relating to industrial property rights.

For decades we have been collaborating successfully with selected law firms abroad that offer outstanding professional competence for the respective matter at hand.

Use to Maintain Rights

In many countries, the validity of a trademark is linked to the trademark being used by the proprietor itself or by a licensee. If the trademark is not being used in a legally valid scope and there are no justified grounds for this, it results in the trademark being vulnerable to cancellation.

In some countries, particularly in the USA, the use must be regularly confirmed or proven in writing. In other countries, proof must only be submitted if a request for cancellation is filed on the grounds that it has lapsed or the objection of lack of use is lodged in opposition proceedings.

We advise our clients specifically with regard to the products and the case to ensure the trademark is used in a manner that maintains the rights. In general we recommend taking the following into consideration:

A trademark should in principle always be used in the form registered with the Office. A trademark registered for goods should –whenever possible- should be affixed directly to the product or on the good’s packaging. If this is not possible, it should at least be ensured that the wholesale unit is labeled as a whole during the distribution of goods, for example by using images of the trademark applied to pallet or by printing the trademark on bags, cartons or the like.

A trademark registered for services should if possible be used when mentioning the service in writing in connection with advertising, preparing offers, providing and invoicing the service. At the same time, a clear classification should be possible as to which service is mentioned with the trademark.

The trademark must be used in the registered form. Any deviating use may still be considered as permitted as long as the characterizing nature of the trademark is not changed. Apart from that, uses in any form deviating from the registration may result in cessation of the use that maintains the trademark rights and the trademark is vulnerable to cancellation. We will discuss specific features of national trademark rights outside of Europe on a case-by-case basis and advise you accordingly in this regard.