Trademarks

1. What is a Trademark?

The fundamental function of a trademark lies in identifying products of an enterprise from those of other enterprises.

Accordingly, signs that are suitable to distinguish goods or services of a particular enterprise from those of another enterprise are eligible for trademark protection. A trademark may for example be a word mark, a figurative mark, a combined word / figurative mark, a color mark or a three-dimensional (shape) mark. This enumeration however is not exclusive.

Trademark protection arises through registration in the trademark register by the German Patent and Trademark Office. A fundamental requirement for the registrability of a trademark herein is that the trademark can be represented graphically. In addition, it is possible to acquire a trademark protection – without registration – through intensive use and a wide recognition resulting therefrom.

A trademark is always applied for in connection with particular goods and/or services.

2. Requirements for Protection and Registration Procedure

There are a number of so called absolute grounds for refusal for which a trademark application is examined by the German Patent and Trademark Office prior to registration. For example, a trademark must be distinctive, i.e. it must in a concrete manner be suitable to distinguish the particular goods and services of an enterprise from those of other enterprises. A trademark must not be descriptive for the goods and services the trademark is applied for, and it neither must be misleading.

The German Patent and Trademark Office does not check whether the trademark collides with other, older trademarks.

If the German Patent and Trademark Office, in an office action, objects the trademark application because of absolute grounds of a refusal, the applicant has the possibility to state his opinion and to respond. If the grounds for refusal can be overcome, for example by limiting the list of goods and services, the trademark is registered. Otherwise, the trademark application is refused. This decision may be appealed.

After its registration claims on the basis of the trademark may be asserted against third parties.

Within three months after the publication of the registration owners of older trademarks may oppose the registration of the trademark. The German Patent and Trademark Office decides over the opposition. Against the decision of the German Patent and Trademark Office as legal remedies the commemoration (in certain cases) or the appeal to the German Federal Patent Court and, possibly, also the appeal to the German Supreme Court are permissible.

The term of protection of a registered trademark is 10 years and may be renewed for further 10-year periods as often as desired.

We refer in this regard also to the  detailed information of the German Patent and Trademark Office .

3. Trademark Applications outside of Germany

In principle it is possible to obtain a (national) trademark protection almost in any country of the world.

For the EU there is the possibility to apply for a Community trademark effective throughout the entire European Union. The procedure is very similar to the procedure before the German Patent and Trademark Office.

There also is the possibility to have a national trademark internationally registered (so called IR marks) and to extend, in this way, the protection for the trademark to a number of different countries.

4. Trademark Infringement

The owner of a trademark may enforce his trademark against third parties which, without authorization, commercially use an identical or similar sign for identical or similar goods or services. The trademark may be enforced by legal action, in urgent cases also by requesting a preliminary injunction. A cease-and-desist letter, in general, is sent first, but is not a must.

A trademark allows its owner to bar third parties from using identical or similar signs for identical or similar goods or services. Also, indemnification can be sought by way of a legal action, not however by way of a preliminary injunction.