Trademark application / trademark protection / trademark infringement
Applying for and registering a trademark
The vast majority of trademarks are created by registration in a trademark register. For Germany, registration is possible
at the German Patent and Trade Mark Office (DPMA) and
the European Union Intellectual Property Office (EUIPO)
An application at the DPMA leads to regional protection in Germany alone. An application to the EUIPO leads to regional protection throughout the European Union.
It is also possible to register a trademark in foreign trademark registers. In this case, it regularly makes sense to carry out a trademark extension procedure at the World Intellectual Property Organization (WIPO). Such an extension usually offers organizational and financial advantages.
Types of trademarks
There are different types of trademarks. The most common types are
Word mark
figurative mark
Word/figurative mark
Word marks consist of pure characters; the graphic representation, e.g. the font, is then irrelevant. Figurative marks are logos, for example. Word/figurative marks are mixed forms, e.g. the representation of a word in a certain font.
Other trademarks are, for example, an odor mark, a sound mark and a position mark. There is also a certification mark (also known as a certification mark), i.e. marks that are used to indicate, for example, compliance with a certain quality standard by certified companies.
List of goods and services
Every trademark requires a list of goods and services. The list essentially consists of a list of different goods and services to which the trademark protection is to apply. The goods and services are divided into 45 classes according to the Nice Classification System. The list of goods and services should be formulated with a view to determining which goods and services are to be protected now and in the foreseeable future. At the same time, an unnecessarily large number of items should not be included, as this increases the risk of colliding with other, already registered trademarks.
Unusual wording in the list of goods and services or an incorrect classification in the Nice Classes is a frequent cause of official objections during the trademark application process. Once goods and services have been registered, they can no longer be amended. The registered trademark itself can also no longer be changed after registration.
Trademark collision / trademark collision
A trademark collision essentially has two prerequisites:
the trademarks (i.e. the word or image) are identical or similar and
the goods and services are identical or similar.
If there is a trademark conflict, the owner of the earlier trademark generally has the better rights. Every day is decisive.
A collision can arise not only between two trademarks, but between any trademark rights, e.g. between an unregistered company name and a registered trademark (see here for different types of trademark rights).
If there is a collision, this can initially be countered by issuing a warning notice (for information on defending against a warning notice, see here and for information on issuing a warning notice, see here).
If the collision cannot be eliminated on the basis of the warning notice, a further distinction must be made according to the stage of the proceedings. If the infringing trademark has only recently been applied for, it is possible to file an opposition (usually a period of three months applies). The conflict can then be eliminated in opposition proceedings before the trademark office and, if necessary, before the courts.
If the infringing trademark has already been registered for a long time, there is the possibility of judicial cancellation proceedings.
Trademark maintenance
An important part of trademark ownership is trademark maintenance. In the simplest terms, this means monitoring the deadlines for renewing the trademark. However, monitoring the use of the trademark to preserve rights is also of considerable importance. If a trademark is not used for all the goods and services for which it is registered, any third party can file an application for full or partial cancellation after a grace period for use has expired.
It is also important to prevent a dilution of trademark protection (i.e. a weakening of trademark protection or also: impairment of distinctiveness). Dilution of trademark protection occurs if it is tolerated that third parties register similar or even identical trademarks and the public increasingly associates one's own trademark less and less with one's own company, i.e. one's own trademark loses its distinctive character. It is therefore necessary to check the trademark register for new registrations and to take action against such trademark applications.