1. What is a protectable trade mark?
According to Section 1 MarkenG (Trade Mark Act), trade marks, business designations and indications of source are eligible for protection.
2. Types of trade marks
There are, among others, the following types of trade marks:
- Word mark: Adidas
- Figurative mark: Adidas stripes
- Figurative/word mark: Puma with Puma figure
- Shape mark: 9-volt block battery
- Shape mark with word elements: Toblerone packaging
- Sound mark: Telecom blade mark
- Colour mark: Telekom magenta
- Hologram mark: PLANTE SYSTEM FRANCE
- Position mark: special arrangement of stripes on a shoe
- Multimedia mark: combination of figurative mark / shape mark and a sound mark
3. Business name
The business name is also protected under Section 5 MarkenG. The prerequisite for protection is a so-called “distinctive character”. The designation must designate a certain enterprise and distinguish itself from others. It must also not be purely descriptive, which is the case, for example, with industry or technical terms. “Furniture shop” exclusively designates the activity of the enterprise and is therefore descriptive. In contrast, the business designation “Möbel Schüning” has distinctive character and is thus eligible for protection.
Examples of descriptive terms / lack of distinctiveness:
- “Bro-Secco” for alcoholic beverages.
- Good mood drops
Descriptive terms may, however, be distinctive in exceptional cases if they have a so-called “reputation”. A term may have a high reputation if significant parts of the public (customers, business partners) are able to associate the term with it.
The protection of a business designation begins with its use and applies independently of a trade mark registration. Use exists when the business activity is started, e.g. via an online shop or a retail shop.
4. Work title
So-called work titles are also protected under Section 5 (1) MarkenG.
- printed matter (“Tagesspiegel”)
- Film works (“Star Wars”)
- sound works (“Giraffenaffen 4-Winterzeit”)
- stage works or other comparable works.
- Geographical indications of source
- Geographical indications of source are protected under Section 1 No. 3 MarkenG:
- Names of places (Warsteiner)
- Names of regions (Spreewälder)
- Names of regions (Mecklenburger)
- Names of countries (Made in Germany)
5. Reasons for filing a trade mark application
There are various reasons for filing a trade mark application. A trade mark is registered primarily to protect against unwanted takeovers of the company or product name. In this way, the trademark owner can also influence competition. Furthermore, a trade mark represents an intangible asset.
6. Trademark application procedure
6.1. Examination: Descriptive terms?
Before filing a trade mark application, one should first check whether the term is descriptive. The same applies here as to business designations. Descriptive terms cannot be protected and therefore cannot be applied for as trade marks. There is a so-called absolute ground for refusal under § 8 MarkenG. This problem occurs regularly in practice. What could be more obvious than a company name that reflects one’s own business activity? If you do not want to change the name, the only way to register it is often a word and figurative mark. But here, too, there are a few things to bear in mind, for example, a special lettering is usually not enough, additional graphic elements are required. One should also be aware that such a trademark protection is rather weak via detours.
6.2. Examination: Likelihood of confusion?
Before filing a trade mark application, one should always research whether there are identical or similar trade marks. This is referred to as the “likelihood of confusion”.
The likelihood of confusion has two elements:
- Similarity of the trade mark terms
- Similarity of goods/services
The similarity of the trade mark terms looks at whether the terms are visually (i.e. from the spelling), phonetically and conceptually similar.
Examples of similarity of trade mark terms:
- Typeface for word signs: Evian / Revian
- Sound for word characters: Crunchips / ran chips
- Figurative sign: 3 stripes by Adidas / 2 stripes
- Examples of similarity Goods / services:
- Wine / other alcoholic beverages
- Financial services / real estate services
- Further cases of likelihood of confusion: “Sky” vs. “Skype” as well as “Neuro-Vibolex” vs. “Neuro-Fibraflex”.
A Google search is not enough to find identical or similar terms. This is where professional research services can help. They have access to sources that are not so easily accessible (e.g. national trade mark and company registers). They also check variations of the trademark term that one would not necessarily come up with oneself. This is because a similarity of the terms is sufficient for a likelihood of confusion.
6.3. List of goods and services
Already during the examination of the likelihood of confusion it should be clear which goods and services are applied for a trade mark. It is recommended to classify them according to the so-called “Nice Classification”, as this is the basis on which the application to the trade mark office must be filed later. For example, when applying for a trade mark, you cannot simply use the term “records & CDs”, but must choose the term “sound carriers” from class 09. The Nice Classification consists of 45 different classes.
As soon as the trade mark is filed, the corresponding fee must be paid. For an electronic application, the basic fee for three classes at the German Patent and Trade Mark Office is 290 euros, for a paper application 300 euros. Each additional class costs 100 euros.
The fees for a European trade mark are considerably higher. At the European Union Intellectual Property Office, the basic fee for one class is 850 euros. The fee for the second class of goods and services is 50 euros, and from the third class it costs 150 euros per class.
If the examination by the Trademark Office is positive, the trade mark is registered. The owner then receives a corresponding official certificate, which is often framed. Unfortunately, however, the time of trembling begins for the trade mark owner. This is because every other owner of an identical/similar trade mark or business designation has the opportunity to file an opposition against the trade mark application within three months after publication of the registration.
The opposition is justified if an earlier trade mark is identical or similar to the trade mark applied for with regard to the name as well as the goods / services. The principles on likelihood of confusion apply here (see above).
After receipt of the opposition, the Trade Mark Office examines whether the opposition is wholly or partially well-founded. For example, the opposition may only be partially well-founded if there is no likelihood of confusion in all classes of goods and services.
If the examination of the opposition shows that the trade mark is to be cancelled for the goods/services for which it is registered, the registration shall be cancelled.
If the trade mark registration cannot be cancelled, the opposition is rejected.
Alternatively, the trade mark applicant can withdraw his trade mark application in whole or in part during the entire procedure (possibly cost advantages). This can make sense if not too much has been invested in the trade mark and one is afraid of prolonged legal uncertainty. However, one should then be aware that the trademark may no longer be used at all. This may mean cancellation of domains and destruction of company signs/letterheads.
8. Duration of protection
Protection lasts for ten years from the date of registration, retroactive to the date of application. The retroactive effect is quite reassuring if an examination procedure should take longer.
But beware: The ten-year term of protection is dependent on the trade mark actually being used in the protected goods and services. If the trade mark is not used in certain areas, someone (e.g. a competitor) can file a so-called “cancellation action” with the trade mark office after five years. If the office comes to the conclusion that the trade mark was not used in individual areas, the protection expires. For this reason, when filing a trade mark application, care should be taken to ensure that only the goods and services in question are really protected.
Trade mark protection can always be renewed for 10 years. The costs at the DPMA are currently 750 euros.
9. International trade mark application
There is no “world trade mark” that is automatically valid for all countries, but you have to apply for trade mark protection for each individual country. Registration in an international register (“IR trade mark”) is possible under the Madrid Agreement Concerning the International Registration of Marks (MMA) or the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (PMMA). The application can be filed through the German Patent and Trade Mark Office, which then forwards it to the World Intellectual Property Organization (WIPO) based in Geneva.
The prerequisite for international registration is a national or European trade mark (so-called “basic trade mark”).
The term of protection is 10 years for the MMA and 20 years for the PMMA.