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Trademark law - Markenrecht
December 16, 2022
How can you protect a logo, a name or any other company trademark?
It makes sense to check before the application procedure whether the trade mark to be registered already exists in an identical or similar form and thus whether the trade mark to be registered may possibly collide with existing trade mark rights. It is advisable to conduct not only an identity search, but also a similarity search. Not only the similarity of the trade marks, but also the similarity of the classes of goods and services plays a role.
In addition, certain requirements must be met to qualify for registration of the trade mark.
There must be no absolute grounds for refusal to register the trade mark.
The absolute grounds for refusal that are examined in the application procedure are:
- lack of distinctiveness
- Descriptive character with a need to keep free for the general public
- Offence against morality
- Containing emblems
If the trade mark can be protected in principle, the next step is to consider which form of trade mark should be chosen and where the desired trade mark protection should take effect.
The trade mark can be registered, for example, as a pure word mark or figurative mark or as a combination from it as a word/figurative mark. There are also special forms, such as colour marks, three-dimensional marks or sound marks.
If you want to protect the name as such, i.e. the pure sequence of letters, registration as a word mark provides the most extensive protection. All common forms of representation, e.g. any spelling of the word, are protected by the word mark.
If a logo without letters is to be protected, the figurative mark is a suitable option.
A widespread misunderstanding is that the combination of word/figurative mark results in "double" protection, namely that of the word mark and that of the figurative mark. In fact, this trade mark does protect the combination of sign and image, but only in its concrete arrangement and manner of representation. The word element as such in its sequence of letters, as it would obtain protection through the word mark, is not protected. A third party may therefore continue to use the word without hindrance. However, registration as a word/figurative mark makes sense if the word would not be protectable as a word mark, e.g. due to lack of distinctiveness.
Place of trade mark protection
The trade mark can be applied for in a national application procedure via the German Patent and Trade Mark Office (DPMA) in Germany. If Europe-wide protection is desired, there are several options. First, an EU trade mark can be applied for, but it should be noted that although this is favourable in terms of application fees, there is a risk that in the event of an opposition leading to a refusal of protection, the entire EU trade mark will be invalid. To avoid this, separate protection can be applied for in each of the desired countries, collected via the EUIPO. Of course, the applicant is also free to contact the national trade mark offices of the respective countries. If the trade mark protection should also extend to non-European countries, the basic trade mark (national or European) can be registered with WIPO as an IR trade mark.
Rights of the trade mark proprietor
After the trade mark has successfully passed the application procedure, it gives the owner certain rights. With the registration, he/she has the right of exclusive use, i.e. no one may use the word in the case of a word mark and the image in its concrete representation in the case of a word/figurative mark. If this right is infringed, claims for injunctive relief and, if necessary, for damages are available.