Trademark Law

What is a trademark?

Trademarks are identification markings for goods or services. The foremost purpose of the marking is to indicate a product’s or service’s provenance and to distinguish it from goods manufactured or provided by other companies. Trademarks can come in different versions: word marks, figurative marks or a combination of both are the most common. But trademarks can just as well be three-dimensional designs, colors, sounds, and even smells.

Trademarks can stand for an individual product as well as for an entire product line or even a company. One possible trademark strategy might consist of using an umbrella brand such as a company as well as individual product trademarks for certain groups of products or single products.

Trademarks are part of a company’s intellectual property. Not only are they used to distinguish a product or product line from that of a competitor, but also to increase a company’s or a product’s level of recognition and to enhance its image. They may help to achieve higher sales prices, to boost customer loyalty, and to easily introduce a follow-up product. The importance of a trademark as an instrument of modern marketing politics cannot be estimated highly enough.

Not only are trademarks representative of a company’s values, but they are also important company assets, and as such, trademarks can be sold, licensed or used to secure a loan.

What needs to be observed when registering a trademark?

Searches

The process of registering and using a trademark should always begin with a search. Above all, the objective of a search for older, identical trademarks or trademarks likely to lead to confusion is the avoidance of legal disputes with the owners of such older trademarks. Furthermore, such a search can help to determine the registrability of a trademark.

Suitability of a Trademark

A trademark has several economic functions. It can identify a product with specific characteristics and thereby guarantee a particular quality. Moreover, the trademark communicates certain values which can be decisive to compel a customer to purchase this product. For this reason, a trademark is only protectable if it possesses a distinctive character. This means that the mark needs to be creative enough not to be considered a mere description of the goods to be protected. A mark will also not be registered by the patent and trademark office if, for example, the term used belongs to the public domain.

List of Goods and Services

Every trademark registered is protected for a certain market sector, as trademarks are not registered abstractly. This means that you need to specify for which goods and services you are applying to have your trademark registered. The basis for this specification is a internationally uniform classification system.

What needs to be considered in this respect is that the larger the number of classes chosen, the higher the costs and the probability for conflicts with other trademark owners.

Scope of Protection

Just as a specification of the exact goods and services for which a company seeks trademark protection is needed, the scope of protection is limited to the countries specified. In addition to registering a national trademark, e.g., in Germany, you can apply for a so-called Union Trademark to protect your trademark in the entire EU, and you can also register your trademark internationally. This means that a national trademark is extended to the member states of the Madrid Trademarks Agreement, also called Madrid Protocol, e.g., the USA or Japan.

 

Duration and Use

When the initial registration term of 10 years expires, every nationally or internationally registered trademark can be extended by another 10 years against payment of the respective extension fee.

However, it is important to observe that a trademark must be earnestly used within five years from its registration. If this is not the case, the trademark may be cancelled.

Once a trademark has been registered, the sign ® – ”Registered Trademark“ – can be used, but the use of this sign is not mandatory.

 

What needs to be done in case of an infringement of trademark rights?

Monitoring

It is the owner’s responsibility to protect a registered trademark against violations. The patent and trademark offices do not check whether a newly registered trademark is likely to be confused with an already existing trademark.

Therefore, an effective trademark protection must be based on a monitoring system for new trademarks or new registrations from competing companies. The trademark monitoring will allow to promptly take action against any infringement, thus facilitating the assertion of one’s rights.

Measures

If a third party registers a trademark likely to lead to confusion, prompt measures need to be taken to protect one’s own trademark. The first step is usually a letter to the other party informing them of the infringement; if a mutual agreement, e.g., by entering into a trademark differentiation agreement, cannot be reached, opposition must be filed.

In cases where the aforementioned measures do not lead to a solution or where the legal recourse of register law does not suffice, court proceedings must be initiated. This can be done through a preliminary injunction or through proceedings in the main action.

 

What is the Cost of Trademark Protection?

The cost of trademark searches can differ depending on the individual case; however, the cost of a first online search usually does not exceed a few hundred Euros.

The protection of a trademark in Germany can be realized at a cost of approx. €1,000.00, including registration fees. Trademark protection for the European Union amounts to approx. €2,000.00, including registration fees. The cost of an international registration starts at around €1,500.00 in addition to the local fees for the countries chosen.

All in all, the cost of an appropriate trademark protection depends highly on the individual case and, above all, on the scope of the desired protection with regards to the countries as well as the classes of goods and services chosen. We will gladly give you an individual quote upon request.

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