Brand protection
How to protect your trademark
What is a trademark?
A trademark is a sign that is protected for certain goods and services and thus identifies these goods and services as products of a certain company. This so-called origin function is the central aspect of trademark protection. A trademark is therefore about identifying the origin of certain goods and services.
This identification of origin is always the aim of a good marketing strategy. In this way, customers do not confuse your branded products with those of the competition, but associate them with your company. Good product quality, particularly aesthetic design, fast and friendly service or special goodwill are thus specifically attributed to your company. This ensures good sales figures, customer loyalty and differentiation from the competition in the long term.
In order for a brand to fulfill the function of origin, it must above all not be descriptive of the products offered. A purely descriptive sign - e.g. the sign "Autowerkstatt" for the service "repair of cars" - does not distinguish the offered product from similar products of the competition - in this case the repair services of other car repair shops. There is also often a so-called requirement to keep the mark free, according to which competitors may not be prohibited from naming objective characteristics of their products - e.g. that it is a car repair shop.
A major advantage of trademark protection rights is that they last forever. In contrast to patents, utility models or designs, there is no maximum term for trademarks. The term of protection of a registered trademark begins on the filing date and initially runs for ten years. However, the term of protection can be extended an unlimited number of times by ten years each time after the ten-year period has expired. A trademark can therefore accompany a company for decades or centuries and thus not only successfully secure the company identity , but also increase the value of the company.
The trademark application process
The first step towards trademark law is an initial consultation with us. In this consultation, we clarify which trademark you would like to protect, which products you would like to offer under this trademark and discuss your current business and marketing strategy for the trademark. We discuss possible obstacles to protection, such as a descriptive character, and advise on possible alternative strategies. We explain the application process and the time frame until registration. We also talk about the costs of a trademark application. We usually work with package prices for the search, preparation and filing of the trademark application, which we will inform you about in detail.
We then prepare a draft list of goods and services in accordance with the Nice Classification and search for identical and similar earlier property rights that could conflict with your trademark application. You will then receive the search results and the draft list of goods and services from us, clearly arranged and accompanied by an explanatory letter. If it is necessary to adapt the application strategy, for example, on the basis of the search results, you will also receive a corresponding recommendation from us.
After your examination and approval, the application will then be filed with the Office and the application fee paid.
Examination of trademark protection
Upon receipt of the application, the Office first examines the formal application requirements for trademark protection, the list of goods and services and the so-called absolute grounds for refusal. The absolute grounds for refusal concern the suitability of the sign as a trademark for the goods and services claimed. For example, it is examined whether the sign applied for is distinctive and cannot be considered descriptive for the goods or services applied for. The official examination of the application at the German and European offices is then completed and the trademark is published for opposition. The German Patent and Trademark Office will now register your trademark. Owners of earlier rights now have three months to file an opposition against their application. We will provide you with an assessment of the risk of an opposition before you file your application.
If no opposition is filed against your trademark application, the registration procedure is successfully completed. Your trademark will now also be registered at the European Intellectual Property Office.
If an opposition has been filed , the opposition procedure must still be completed. This begins with the so-called cooling-off period to negotiate an amicable settlement with the opposing party. The terms of the settlement are usually set out in a Co-existence agreement. If such an agreement is not reached, the adversarial part of the proceedings before the Office begin. This is usually conducted in writing. At the end, the Office will issue a decision as to whether your trademark application will be rejected or registered. Various approaches are possible when negotiating an amicable settlement and the contentious opposition proceedings. Here, we coordinate the procedure with you precisely to your wishes and general conditions. It should also be noted that each party generally bears its own costs in opposition proceedings. This means that the cost risk of losing trademark opposition proceedings is comparatively low.
Where can I obtain trademark protection?
For companies based in Germany, a German trademark application at the German Patent and Trademark Office (DPMA) or an EU trademark application at the European Intellectual Property Office (EUIPO) is usually the starting point for the trademark portfolio. Trademark rights abroad can then be conveniently registered within 6 months by claiming priority (see FAQ). Which filing strategy is most favorable here depends heavily on the number and combination of the desired countries of protection. As attorneys for trademark protection, we will be happy to provide you with an individual offer.
What happens after my trademark has been registered?
Once your trademark has been successfully registered, it needs to be maintained. In addition to timely renewal, which we will of course remind you of, use and collision monitoring are particularly important here.
After a five-year grace period has expired, a trademark must be used in the course of trade for the registered goods and services. If you wish to enforce your trademark right against an imitator, you must provide evidence of the use that preserves your rights in case of doubt. An unused trademark can also be challenged through a revocation application and can be canceled.
If use must be proven, appropriate evidence must be presented. In order to have such evidence available in an emergency, it is advisable to archive some evidence of trademark use every year. The following documents are important for this:
- Dated photographs of the application of the trademark to the goods in question;
- Invoices for the goods/services sold under the trademark (the trademark should be mentioned in the invoice text if possible);
- annual sales figures for the goods/services sold under the trademark;
- advertising measures carried out (dated);
- Catalogs, brochures, etc. (dated).
We will be happy to advise you in detail.
To monitor new trademark applications from third parties that may be too similar to your trademark, we recommend trademark conflict monitoring. We monitor the relevant trademark registers for you and inform you if a critical trademark is newly registered. Thanks to trademark conflict monitoring, you will be informed at an early stage about similar trademark applications from your competitors and can file an opposition against them. You will also be informed about new competitors who offer similar goods or services under a similar trademark. This allows you to prevent the registration of similar trademarks at an early stage. This not only keeps your competitors at bay, but also prevents your trademark from being diluted.
We will be happy to provide you with a customized offer for monitoring your trademark.
If you become aware of a possible infringement of your trademark, please contact us as soon as possible. As trademark protection attorneys, we will examine the situation at short notice and develop a strategy for further action that is optimally tailored to you and your needs.