Lawyer for trademark law

Law firm for trademark law in Kerpen, Cologne and Witten

Intellectual Property | Strong Partner for Trademark Law, Competition Law & Copyright Law

General overview of trademark law

Law firm for trademark law in Kerpen, Cologne and Witten

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German trademark law is very diverse. For example, it regulates in more detail the entire process of trademark application, trademark registration, enforcement, and even the expiration of a trademark. Among other things, German trademark law regulates approaches to solving legal problems in and out of court. Trademarks in general are nowadays an important part of entrepreneurial activity and offer incredibly high marketing value. The brand itself is therefore an important component of external communication to the customer and serves as a marketing tool.

For this reason, it is equally important to protect one's own brand. It reflects the image of a product and its quality, respectively it helps the customer with a certain recognition value. The protection of the brand is therefore important to protect against possible misuse. The trademark itself is eligible for protection. This includes the name and or the logo of the; in each case individually or also together.

Trademark law is very extensive and in the overall view it can only ever be advantageous to consult legal counsel in order to eliminate potential conflicts surrounding trademark protection and avoid taking any wrong steps.

Sense and purpose of trademark protection

Lawyer for trademark law | Sense and purpose of trademark protection

The purpose behind the protection of a trademark is the rights that you, as the owner, have to your trademark from the time of application. The most important right to the trademark is the sole and exclusive right to mark the goods and or services with his trademark. Thus, it is given that no one else offers an identical product or service or one that is open to confusion, § 14 MarkenG. If this right is infringed by a third party, then the owner of the trademark is entitled to claims against the infringer.

These include cease and desist from using the trademark and possibly justified damages. Furthermore, the trademark owner can grant licenses from his trademark. This can generate a certain amount of revenue if rights are sold to another company to use the goods or services under the trademark. The trademark owner is also entitled to sell the trademark.

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Requirement of trademark protection

Lawyer for trademark law | Prerequisite for trademark protection

The most common type of protection to prevent misuse or theft is the registration of the trademark as a word and or figurative mark. Therefore, in the field of word marks, terms, letters or even numbers in combination are registrable. Well-known trademarks are for example: Mercedes-Benz, Adidas or Samsung. Not only the trademark itself, but also associated slogans can be protected, as long as they have their own distinctiveness and are part of the trademark.

In the field of figurative marks, signs or logos are protected. If it is only a pure logo without writing, it remains a figurative mark. However, as soon as the logo also contains a letter or other sign, it is advisable to register it as a word/figurative mark. An example of a word/figurative mark is Coca-Cola. The Coca-Cola logo with the curved line above and below the lettering is familiar to everyone and creates an enormous recognition value with customers.

A prerequisite for the protection of all signs is that they are suitable for distinguishing the company's goods or services from those of other companies. It must also be possible to represent these signs graphically. However, it is always important to ensure that no existing rights are infringed before registering a trademark, regardless of whether it is a word or figurative mark. It is therefore always advisable to carry out a trademark search, or to have a Lawyer for trademark law to commission a meaningful trademark search. In doing so, you significantly avoid the risk of infringement if an already existing trademark appears to be similar or even identical. We are happy to be your suitable contact for trademark searches even before a trademark application is filed.

Section 8 of the Trademark Act regulates what is not protectable under any circumstances. This is also referred to as absolute grounds for refusal.

§ 8 - Absolute grounds for refusal

Lawyer for trademark law | § 8 - Absolute grounds for refusal of protection

(1) Signs eligible for protection as a trademark within the meaning of § 3 shall be excluded from registration if they are not capable of being represented in the register in such a way that the competent authorities and the public can clearly and unambiguously determine the subject matter of the protection.

(2) Trademarks shall be excluded from registration,

1. which are devoid of any distinctive character for the goods or services.

2. which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended value, geographical origin, time of production of the goods or of rendering of the services, or other characteristics of the goods or services,

3. […]

Section 8 is not presented here in its entirety. However, the first example mentioned is lack of distinctiveness. These are signs which are devoid of distinctive character. Accordingly, they are only purely descriptive. This is the case when it makes a product indistinguishable, for example, with regard to its operational origin. Thus, descriptive words such as "fresh asparagus" are not protectable in that sense, since it is solely a description of the asparagus. The situation is different if the description can also give rise to a separate trademark. Thus, the abbreviation or description "Diesel" is possible both as a name for a fuel, which is not registrable, and as a trademark for clothing.

Likewise, Section 8 of the German Trademark Act regulates a need to keep a mark free. The use of a sign must therefore remain possible for the general public for the purpose of description. It must therefore be a purely descriptive designation. However, abbreviations for certain products or nicknames may be worthy of protection. For example, the abbreviation or name "Silberpfeil" (Silver Arrow) for a Mercedes-Benz W 125. Not registrable and thus completely excluded are signs of international organizations, official test marks, all sovereign signs, signs contrary to public order and morality and/or deceptive signs.

Since this is only a small sample of what and which trademark or designation is registrable, the help of an experienced Lawyer for trademark law for industrial property protection is indispensable. The registration of a trademark is always an individual case and cannot be generalized.

Business designations

Lawyer for Trademark Law | Business Names

Business designations are to be distinguished from a trademark. In other words, business designations are company trademarks. In more detail, § 5 MarkenG regulates which business designations are worthy of protection and which are not.
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§ 5 - Business designations

Lawyer for trademark law | § 5 - Business designations

(1) Business identifiers and work titles shall be protected as business designations.

(2) Business identifiers are signs which are used in the course of business as a name, a company name or as a special designation of a business or an enterprise. The special designation of a business operation shall be deemed to be equivalent to such business insignia and other signs intended to distinguish the business operation from other business operations, which are deemed to be indications of the business operation within the circles of the public concerned.

(3) Work titles are the names or special designations of printed matter, cinematographic works, sound works, stage works or other comparable works.

Thus, it remains to be stated that within the scope of business designations, names of individuals and legal entities such as companies, firms as they are entered in the commercial register, fancy designations or abbreviations of the firm as a name, the Internet address or also called domain, a work title and/or logos and business signs are eligible for protection as long as they have a reputation (awareness on the market). If, however, these are descriptive terms, protection does not apply.

Business designations are nevertheless different from trademarks and the protection through a registration as a trademark. As soon as a business designation exists, it already enjoys protection without being entered in the trademark register. The protection is already given when it is used for the first time. However, this use must have been in the course of trade. In most cases, this first use occurs when a name is entered in the commercial register.

Another difference between business names and trademarks is the scope of their territorial validity. When a trademark is registered, either nationally or internationally, the protection under trademark law relates to the same territory. The scope of business designations is limited in terms of territory.

Normally, the protection of business names extends to the entire territory of the Federal Republic of Germany. However, should it be the case that the company's activity is limited to only a certain area or region, then the protection also applies only to this. Certain factors that play a role here are the domicile of the company, the domiciles of the customers and business partners and or the distribution area of actively existing advertising measures.

As an example, the locally small retailer or regional service provider can be mentioned here. If the retailer has several locations, the scope of protection of the business name is then logically extended. An extension of the scope of protection is also given if the provider offers his goods or services via the Internet. Then, in case of doubt, it is again a business designation protected throughout Germany.

The trademark application

Lawyer for trademark law | The trademark application

The owner of a trademark can be any natural or legal person. In addition, there are partnerships with legal capacity and civil law companies, as long as they have at least one partner authorized to represent them or have them registered. The direct management of a business operation is not mandatory. Theoretically, anyone can register the trademark themselves. This does not necessarily require a Lawyer for trademark law, who is in charge of the registration process. However, this is always advisable.

Lawyer for trademark law with a specialization in trademark law is the perfect companion if the trademark owner is not sure whether his trademark infringes an older or still existing right. It is also possible that the trademark office itself raises objections to a registration or application. It is possible and quite conceivable that an owner of an earlier right raises an objection with the Trademark Office and thus prevents the registration in the Trademark Register. The commissioned Lawyer for trademark law can minimize this risk even before filing an application by conducting a meaningful trademark search.

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Conditions for filing a trademark application

Lawyer for trademark law | Conditions for trademark application

Responsible for the registration in the German area of validity is the DPMA; the German Patent and Trademark Officewith its registered office in Munich. An application is required for a trademark to be included in the register. An application in the online procedure is also possible. Mandatory information is required for the application. Among other things, the applicant must provide his own data and that of the trademark he wishes to have registered. This includes the name, the wording for figurative marks and graphic representations.

In addition, there is a list of goods and services. This ensures which goods or services the trademark uses and which are to be protected by it. This listing is done by an established system or classes. The Nice Class System includes all goods and services in 45 different categories.

The definition of the Nice Classes

Lawyer for trademark law | Nice classes

The Nice Classification comprises 34 classes for goods and 11 for services. These classes do not only refer to Germany, but are applied internationally and contain fixed lists of goods and services. Even though there are only 45 classes, this list contains about 10,000 different terms, which then describe and classify the trademark in more detail. Classes 1 to 34 regulate the goods and classes 35 to 45 the services. A list regarding a possible self-assessment for grouping the trademark is given by the DPMA out.

As an example of goods, are included in the Nice Class 2 sometimes includes paints, varnishes, lacquers, colorants, dyes, inks for printing, etc. However, artistic work is also included. Exemplary services are listed in the Nice Class 35 advertising, business management, business organization, business administration and office work. Accordingly, other goods or services are recorded in the other remaining classes.

According to this system, the trademark is then registered with the appropriate Nice classesin order to depict a more precise description of the trademark and its product portfolio. So that during the registration of the trademark no Nice Class is overlooked, it is advisable to refer to the individual descriptions of each class. Also for this purpose the DPMA a suitable list with the individual group titles.

If the trademark application is filed online, it is usually easier to classify the trademark, as this can be done directly in various masks. In the case of a paper application, you have to specify each individual class yourself. Also here it is smart to use a Trademark Lawyert so that he or she can assist you in filing the correct trademark application.

The trademark application procedure

Trademark Law Attorney | The Trademark Application Process

After submitting the application to the German Patent and Trademark Office In the first step, the system always checks the completeness of the applicant's documents. The date of filing is the recorded filing date. On this date, trademark protection already exists and a file number is generated. The next step is to check whether there are formal obstacles to registration or even absolute obstacles to protection. Why a trademark search is so important becomes clear at the latest when one considers that the German Patent and Trademark Office does not check whether old trademark rights or business designations are affected and infringed. If there are no concerns, the trademark is published in the Official Gazette of the DPMA published.

The so-called opposition period starts to run from the date of registration. Within this period, owners of earlier rights have three months to file an opposition against the registration. If the opposition is justified, the registered trademark will be cancelled. However, once the three months have expired, the rights of the prior right holders do not expire. Only the opposition to the DPMA will no longer be possible.

Thereafter, it is still possible to file a lawsuit in court. This action then seeks injunctive relief and damages against the infringer. The action also seeks cancellation of the trademark. However, the statute of limitations must also be observed here. In the case of such a claim, the limitation period is 10 years and three years from knowledge of the trademark infringement.

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Costs of the trademark application

Lawyer for trademark law | Costs of trademark application

The costs for a trademark application itself are quite manageable, but differ in the type of application, whether electronic or in paper form. A paper application costs €300.00 and an electronic application costs €290.00. However, this price refers to a maximum of three Nice classes. For each additional Nice Class 100,00 € will be due again, no matter in which way the trademark was applied for.

The time limit for payment is three months from filing the application with the German Patent and Trademark Office. If the deadline for payment is missed, the trademark application is deemed to be withdrawn. Further costs will also be incurred if you file a Lawyer for trademark law with the registration of the trademark. The costs for the application remain the same, however, the costs for the Lawyer for trademark law with on.

Further fees are not provided for as a lump sum. The German Patent and Trademark Office always publishes a current fee table. For example, the application for a collective or certification mark costs €900.00. A collective or certification mark is an association of companies in the form of a federation. Thus, the goods or services are identified and distinguished from non-associated collective marks.

Compared to the individual trademark, the collective trademark then has the task of distinguishing and assigning the trademark to an association. Since the trademark protection is not valid forever, but is limited in time, there are again costs if you want to extend the protection of the trademark. The renewal fee up to three Nice classes amounts to 750.00 €. The fee for an objection during the objection period is currently € 120.00.

European and international protection of trademarks

Lawyer for Trademark Law | European and International Trademark Protection

A trademark application to the German Patent and Trademark Office refers only to German territory. In the context of globalization, it is no longer uncommon for companies to want to cover an international or European territory with their trademarks. In this case, the protection at the DPMA is no longer sufficient. In the EU area, it is therefore advisable to register one's trademark as an EU trademark. This is done at the European Intellectual Property Office, in short EUIPO. This protection then applies to all EU member states. However, the costs of such registration also increase here. These amount to up to three selected Nice classes approx. 1000,00 €.

The procedure is relatively similar to that in Germany. Therefore, a possible infringement of already existing law must also be considered and a trademark search is indispensable. Such a trademark search is possible with the existing database of the EUIPO possible. However, any infringements of rights must then be assessed according to the respective existing trademark law. For this reason, it is also advisable to Lawyer for trademark law to be entrusted with the application and the search.

It is also possible to protect one's own trademark on an international level. This is logically recommended if a company intends to serve the international territory outside the EU with its goods and or services. Even if one does not want to do this, at least the thought of international protection is advisable. The procedure itself is unified according to the "Madrid System". The procedure then runs through the World Intellectual Property Organization, in short WIPO, with its registered office in Geneva.

The fees for this are paid in Swiss francs. Registration of the trademark is then carried out via the individual national offices in accordance with the law applicable there and the fees are then calculated according to the number of countries in which protection is to exist and according to the fees set there.

Duration and end of trademark protection

Lawyer for trademark law | Duration and end of protection

The duration of protection is normally 10 years. These years start to run from the day of registration. The protection expires at the end of the month in which the application was filed. As already mentioned, the flat fee for the renewal of the trademark is 750,00 €. With the payment of this fee, the trademark is then again protected for another 10 years. This is possible continuously as long as the trademark is to be protected and the fee is paid. However, as soon as a request for cancellation is received and this is justified, the protection for the trademark ceases.

The application can be filed by third parties if their own rights are infringed. Likewise, the invalidity or lack of protectability of the trademark can still be established subsequently. Cancellation by the Office itself or by the trademark owner is also conceivable if protection is no longer desired.

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Concluding remarks on trademark law

Lawyer for trademark law | Conclusion on trademark law

Trademark law is very complex and can have very far-reaching consequences in specific cases. If you own or want to create a trademark worth protecting, it is advisable to file a trademark application without further considerations. The registration is not the complex key point, but the circumstances around it. From conceivable trademark infringement and business marks to the obligation to pay damages and injunctive relief. For the above reasons, a Lawyer for trademark law always the perfect companion for your trademark concerns. With our extensive experience, we would be happy to be the right contact for you and to assist you in word and deed.

Do you need assistance in the field of intellectual property law from a trademark lawyer?

Then contact us

+49 (0) 2273 - 40 68 504

Law firm for trademark law in Kerpen, Cologne and Witten

Lawyer for - Intellectual Property | Labor Law | Criminal Law | IT Law | Privacy Law