Trademark application / Markenanmeldung
June 04, 2021
What exactly is a trademark?
We often observe a reflex among founders: First of all, a trademark must be applied for. If you then ask why a trademark should be applied for and what specifically should be protected, there are more questions than answers. In order to find an answer as to whether a trade mark application makes sense, one should take the time to fundamentally understand what trade mark protection is all about Frist of all most pressing question: what is brand a in the first place. A trademark is any sign that is capable of distinguishing the goods and services of one company from those of other companies. Protectable trademark forms can consist of words, letters, numbers, pictures or even sounds, special positions, movements such as holograms and multimedia marks. A business idea or a form of enterprise cannot be protected as a trademark. Also, before deciding on a particular trade name, it should be checked whether the corresponding domains are available.
Once the trademark right has been obtained, the owner has the exclusive right to use the trademark to identify goods and services.
The most important function of the trademark is its function of origin, which means that it is to be understood as an indication of the origin of a certain company. In addition to the trademark's function of origin, it also aims to inspire confidence through a quality and guarantee function and to create an advertising and investment incentive. In order for the trademark to fulfil these functions, it must have distinctive character (absolute requirements for protection).
What types and forms of trademarks are there?
Three different types of trademarks are available for registration:
- Individual trademark: Here the trademark refers to a specific company. It thus serves to distinguish the goods and services of a specific company from those of other companies.
- Collective mark: Here a group of companies or members of an association are grouped together to distinguish their goods and services.
- certification marks: A certification mark is a newly introduced trademark. It indicates special quality, as certain warranty requirements must be met in order to obtain trademark protection.
Important trademark forms
A word mark consists of words or letters, numbers or a combination of these. More precisely, all characters are allowed, as well as upper- and lower-case letters and special characters. The protected word may be any word, provided it has distinctive character. Also, the need to keep a word free must not be violated, according to which companies have a legitimate interest in being able to continue to use descriptive indications freely (absolute requirements for protection). Word marks offer broad protection, since any kind of use of the registered term can lead to a trademark infringement. However, this also increases the possibility of infringement of other trademarks which, for example, have similar wording.
Examples of word marks:
- Personal names: Bosch
- letters: BMW
- Numbers: 911
- Letters/Numbers: A-4, A 380
A figurative mark consists of two-dimensional designs in which, however, no elements of the word mark appear. They therefore consist of pure images or graphics.
Example of a figurative mark: (the Shell of the gas station Company: Shell)
Word and figurative mark
For the figurative mark, word and figurative elements can be combined. More precisely, the word-picture mark is a graphic design that contains word elements, often artistically inserted into the graphics. In this case, the risk of similarity of signs or likelihood of confusion is lower, as exactly this combination must be made. When registering a word-picture mark, however, it is important to ensure that each of the elements is registrable on its own.
Example of a word and figurative mark: Starbucks, lettering with picture
Absolute requirements for protection
In order for a trademark to be registered, the so-called absolute requirements for protection must be met. Whether these are fulfilled is examined by the respective competent office when a trademark application is filed.
The absolute requirements for protection include the following requirements:
- Requirement of a clear and unambiguous designation
- Need to keep descriptive indications free of use
- Usual designations
- Deceptive designations and violation of morality
- Included periods of sovereignty
The sign must be capable of being represented in the register in such a way that the subject matter of the protection is clear and unambiguous to the authorities as well as to economic operators.
The sign must be distinguishable from other signs so that it can fulfil its function of origin and identification. In addition, the sign must also be distinctive in relation to the goods and services for which it is applied for. It must therefore be asked whether the sign is capable of distinguishing certain goods for which the sign is to be registered from goods of other undertakings.
From the point of view of a reasonably well-informed consumer, the trademark must be understood as an indication of origin for goods and services. Thus, a rectangle or pentagon cannot simply be assigned to a specific company, as it lacks the necessary distinctive character. Furthermore, anyone wishing to protect packaging must ensure that the informed consumer understands it as a specific indication of origin and not merely as packaging, since a consumer does not normally associate a specific company with ordinary packaging. Rather, according to the European Court of Justice (ECJ), it requires an image of the mark that "departs significantly from the norm of customary usage" (ECJ GRUR 2004, 428, 431, para. 49).
In practice, distinctiveness must be assessed on the basis of the individual case, also with regard to the specific goods and services. For example, the word “Chiemsee” cannot be considered to have trademark capacity due to its geographical meaning, but a combination with a figurative sign made registration possible.
Furthermore, the trademark must not contain any descriptive indication. Accordingly, a sign cannot be registered if it consists exclusively of signs or indications which are used in trade to designate the kind, quality, quantity, intended value, geographical origin or manufacture of the goods. The aim of the requirement of availability is to prevent the monopolisation of signs which must also be used by other competitors to describe their own goods or services. It is important that everyone is able to describe their goods and services without having to fear problems under trademark law. For example, the word "vacuum packed" cannot be protected because it must remain generally available as a descriptive indication. The word "cough drop" as a designation cannot be protected under trademark law either.
In addition, generic designations are also subject to the requirement of availability. Thus, no signs may be protected which have become customary in the common language or in the established practices of the trade to designate the goods or services. For example, the word "bread" is not registrable. Or more precisely, the trademark "Apple" cannot be registered as a type of apple, but it could be registered as a trademark for electronic devices, because the public would only consider the word "Apple" as a term for the fruit.
Therefore, the distinctive character of foreign-language indications also depends on whether the addressed domestic public grasps them according to their descriptive meaning. Furthermore, during the creation process of the trademark, it should be checked whether the intended term exists in the foreign-language vocabulary and what meaning emanates from it.
Furthermore, the independence of the sign is required, according to which the sign must be mentally separated from the goods and services. Furthermore, it must not be identical or a functionally necessary component of the goods in order to fulfil the identification function of the trademark.
A misleading designation exists if it is obvious that the target public is misled as to the nature, quality or geographical origin of the goods or services. Deception is evident if no other form of use is conceivable without deception.
A trademark is contrary to morality if it is likely to be perceived by the public as politically or morally offensive. For example, the mark should not offend religious beliefs or contain vulgar expressions.
Also, a trademark must not be applied for in bad faith, i.e. for the purpose of abusively and immorally obstructing third parties.
In addition, no state emblems or coats of arms may be used in the mark. It is also important that no official certification or guarantee marks or marks of international governmental organisations are used.
There is a high degree of certainty of registration for non-existent fancy terms or neologisms.
The term must be originally ambiguous and open to interpretation. It must not be a mere combination of words. Thus, the combination of the words "biomild" cannot be registered.
For practical purposes, it is important to know that a ground for refusal can be overcome, for example, by adding a graphic and/or colourful design to an element which must be kept free. The added element must be registrable in its own right. Furthermore, the entire protectability of the trademark only refers to the registrable word element.
How can I register my trademark?
Since trademark protection, unlike in copyright law, does not arise informally, the trademark must be registered in a trademark register. The trademark can be applied for online, electronically or on paper. You can do this yourself without assistance, but the representation of a lawyer is of course possible and may be advisable, especially when it comes to clarifying whether the trademark is registrable.
Information required for a trademark application:
- Name/identity of the applicant
- Representation of the trademark
- List of goods or services for which registration is sought.
- The DMPA database:
- The database for EU trademarks:
- WIPO's database for international trademarks:
The trademark application may be filed by a natural person (private individual), a legal person, or a partnership having legal capacity.
If the application is filed by a civil-law partnership, the partner entitled to represent the partnership must be indicated.
If the trademark is applied for as a legal entity, the address of the company with which it was registered in the Commercial Register should be entered.
The trademark representation must accurately reflect the trademark as a mandatory part of the application. The form of the mark must be clear and unambiguous from it. It is particularly important to carry out the trademark representation conscientiously, as a subsequent amendment is no longer possible.
However, it is important not to add a ® to the trademark representation at the time of application, as this may constitute a violation of the deception requirement.
When does trademark protection begin and how long does it last?
The term of protection of the trademark begins on the filing date. The trademark protection lasts for 10 years from that date. However, it can be renewed indefinitely. All that is required is the payment of a renewal fee. It is also important that the trademark is used within five years, otherwise an application or action for revocation may be filed and the trademark may be cancelled.
Before the trademark is applied for, a comprehensive search should be carried out to determine whether it infringes any other, earlier trademark. This is necessary because the absolute requirements for protection are checked by the respective office during the trademark application. If, for example, an earlier trademark is infringed due to the existence of a likelihood of confusion, this can be asserted by the proprietor of the infringed trademark by means of an opposition or nullity action and, in the worst case, the trademark may be cancelled. Therefore, a prior internet search can be helpful to compare the desired trademark form with possibly other similar trademarks.
Since the trademark search is often extensive and mistakes can easily sneak in, it is advisable to consult a lawyer. Especially for international trademark applications, all relevant databases must be included in the search. For example, an identity search should be carried out in which the brand name is compared with others. In addition, a similarity search should be carried out, taking into account other trademarks which show similarity in wording, writing or word stem. However, prior independent research can be helpful to get an overview on one's own.
There are several free trademark databases that can be used for a more detailed search, for example:
Furthermore, the date of filing is particularly important for possible later conflicts due to collision of trademark rights. This constitutes the priority date of the trademark and can be relevant in the event of a dispute as to which trademark right was established first. According to the Act of the Protection of Trade Marks (MarkenG), all necessary information must have been received by the DPMA so that the priority date can be established.
If the trademarks have already been used intensively in the course of trade, trademark protection can also be established by prevailing in the market. For this to be the case, however, a considerable number of road users must understand the trademark as an indication of a specific business.
Further helpful information on trademark registration can be found on the website of the German Patent and Trade Mark Office at:
After the trademark application has been received by the competent trademark office, the office examines the documents filed. If an error is found, the necessary information about the finding of the error is communicated by official communication. A two-month revision period is granted to correct the errors. After the review, the trademark application is published, and the opposition period begins. Here, third parties who feel that their rights are restricted by the trademark application can take action against the registration within three months. In order to reduce the risk of opposition, it is also important to conduct an intensive search for possible infringing trademarks before filing the trademark application. If no opposition has been filed by third parties, the trademark can be registered and the registration will be published.
Where can I apply for my trademark?
First of all, it is important to ask yourself how broad your needed scope of protection under trademark law should be. The scope of the company, the goods and services or the activity for which the trademark is to be used plays a role here. Thus, if the trademark is to be used only for a company operating on a national scale, one trademark at the national trademark office would be sufficient.
Responsible for national trademark applications in Germany is the Patent and Trademark Office (Deutsche Patent und Markenamt, DPMA) with its seat in Munich and has branch offices in Jena, Berlin and Hauzenberg.
Important documents for filing national trademark applications at the DPMA can be found at:
A trademark application for a national trademark at the DPMA costs 300 euros. If the trademark application is filed electronically, the application fee is 290 euros. The renewal fee for a trademark is 750 euros.
Further information on trademark application costs can be found at:
The European trademark has created a trademark protection system for the European Union. A European trademark should be applied for if comprehensive protection is to be obtained in the EU. The trademark application is filed with the European Union Intellectual Property Office (EUIPO) in Alicante, Spain. It is responsible for the administration of the EU trademark and for registered designs. If protection is to be obtained only for Belgium, the Netherlands and/or Luxembourg, a trademark can also be filed with the Benelux Office for Intellectual Property.
National trademark protection runs parallel to European trademark law. European trademark law applies throughout the EU and is intended to establish uniform rules. Thus, the European trademark can only be valid for the entire Union. It is not intended to replace national trademark law. Rather, it continues to be of great importance for smaller companies whose activities are limited to the national market.
The possible forms of trademarks that can be applied for correspond to the national requirements. All signs, especially words (including personal names), numbers, figures, colours, shapes as well as packaging or sounds are protected. Here too, however, there must be the possibility of graphic reproduction and distinctiveness.
After the trademark application has been received by EUIPO, it is checked for completeness. After registration, the sign falls under the protection of trademark law. The European trademark can be renewed indefinitely every 10 years.
A paper application for a European trademark at EUIPO costs 1,000 euros. The fee for an electronic trademark application is 850 euros. If more than one class of goods and services is registered, further fees apply (50 euros for the second class and 150 euros per class from the third).
Further information on the costs of a European trademark application can be found at: https://euipo.europa.eu/ohimpo...
Good to know
If a European trademark is objected to in successful invalidity proceedings, the entire EU trademark will be cancelled, even if invalidity has only been established in one member state. In such a case, however, there is the possibility of converting the EU trademark into a bundle of national trademark applications for all EU member states in which invalidity was not established. Practically, the priority period of the EU trademark application applies. Furthermore, the applicant does not have to file trademark applications at the national offices in addition to the EU trademark as a precaution but can obtain national trademark protection even if the EU trademark is objected to in a member state.
In addition to the national and European trademark, it is also possible to apply for an international trademark. The trademark application is filed with the World Intellectual Property Organization (WIPO), which has its headquarters in Geneva. According to the Protocol to the Madrid Agreement, trademarks applied for are regarded as national trademark applications. Thus, the international trademark offers the advantage of having to file only one application for a large scope of protection. With a single application, trademark protection can be obtained in up to 124 countries.
To apply for an international trademark, one must have a personal or business relationship with a contracting state. In addition, a nationally registered trademark must already exist or an application for registration must have been filed with a national trademark office. Furthermore, the trademark application for an international trademark is filed at this national trademark office. In addition,, there must be a place of business or residence in this contracting state or the applicant must have the same nationality. If these requirements can be met in more than one member state, the national trade mark office through which the application is to be filed can be freely chosen.
Further information on registering an international trademark can be found here: https://www.wipo.int/trademark...
In the case of worldwide projects, it is important to register the trademark promptly with all relevant trademark offices in order to prevent trademark piracy. However, if the trademark application has been filed in a member state of the Paris Convention or TRIPS, a protection period of six months applies for a trademark application in the other member states.
First of all, the costs of the respective national basic trademark must be taken into account.
In addition, a basic fee for forwarding the information to WIPO is due to the national trademark office (at DPMA 180 euros). WIPO also charges a basic registration fee of CHF 653. Other costs incurred for the international trademark application at WIPO depend on the number of countries for which the trademark is to be applied for and the number of entries in the list of goods and services. It is also important to know that some countries require additional fees.
To calculate the actual costs of the international trademark, you can use the WIPO cost calculator:
List of goods and services
A trademark is always registered for specific goods and services. Therefore, the list of goods and services must be filed as part of the trademark application.
Goods and services which are to be identified by the trademark must be named very precisely. The exact designation serves to determine and interpret the scope of protection of the trademark. This is particularly important in the event of a trademark conflict.
For registration in the list of goods and services, there is a grouping requirement. More precisely, they must be separated by classes, and these classes must be listed numerically in ascending order. The list of recommendations of the DPMA, which is based on the class headings of the Nice Classification, serves as an aid for the classification into the specific classes. The Nice Classification (NCL) is an internationally defined list that divides goods and services into 45 different classes. Around 10,000 terms are used here. It is important to note that the list of terms is not exhaustive, as it merely serves as an indication of which goods and services are classified in which class. In practice, it is therefore often not sufficient.
It is important to be very careful when entering the goods and services in the list, as it is not possible to make any changes once the trademark has been registered.
Recommendation list of the DPMA: https://www.dpma.de/docs/formu...
You would like to apply for a trademark and need advice or would like to be represented by a lawyer during the application procedure? Write to us and make an appointment for an initial consultation.
We will be pleased to answer any questions you may have concerning trademarks. In particular, we will support you in
- representation before the relevant trademark office (national, European and international)
- examining the registrability of a trademark
- defending against warnings under trademark law
- Questions concerning trademark searches