The process of registering trademarks in Germany
Trademarks serve to identify goods or services provided by a company.
A trademark may consist of any signs, particularly words, including personal names, designs, letters, numerals, sound marks, three-dimensional configurations, including the shape of goods or their wrapping as well as other packaging, including colours and combinations of colours, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
What is a trademark?
Trademarks are used to identify the goods or services of a company. The purpose of trademarks is to distinguish the goods or services from those of other companies.
What kinds of trademarks are there?
- Word marks: trademarks which consist of one or multiple words, letters, numbers or other characters
- Figurative marks: trademarks which consist of graphical depictions (logos, images, etc.)
- Word and figurative marks: trademarks which include word components and image components (e.g. a word in a certain font or color)
- Sound marks: trademarks which consist of sounds, melodies or other noises
- Three-dimensional marks: trademarks which consist of three-dimensional formations
- Color marks: Trademarks which consist solely of color (e.g. Telekom magenta)
- Collective marks: all the above trademark types are eligible for this purpose
What can a trademark be registered for?
A trademark can be registered for goods as well as services, and several different types of goods and services can also be selected. For this purpose, it is determined in which classes of the Nice-Classifications the trademark should fall. The Nice-Classification includes 34 classes of goods and 11 classes of services.
What kind of protection is obtained through trademark registration?
By registering a trademark, the trademark owner can take action against the use of his trademark or a similar trademark by others. In case of trademark infringement, the trademark owner may be entitled to injunctive relief and damages.
How long is the period of protection?
The protection for a registered trademark is 10 years. By applying for renewal and paying the renewal fee, this protection can be extended for ten years at a time indefinitely.
What are the costs of a trademark registration?
The costs depend on where a trademark is registered and in how many classes. For example, the registration fee for a trademark with up to 3 classes at DPMA is 290 Euro.
In addition to the registration fees there are also attorney’s fees for preparing and executing the trademark application and for other services related to the trademark.
Where can a trademark be registered?
Trademarks can be registered at the DPMA (German Patent and Trademark Office), the EUIPO (European Union Intellectual Property Office), the WIPO (World Intellectual Property Organization) as well as the national offices. At LermerRaible, we file Swiss trademark applications the IGE, the Swiss Federal Institute of Intellectual Property as well.
Do I have to use a registered Trademark?
Yes. In the case of trademarks, there is a so-called use requirement with regard to the registered goods and services. After a so-called grace period (which varies from country to country but is usually between 3-5 years), use must have commenced and a serious use must be demonstrable. Otherwise, in trademark disputes, the owner can be accused of non-use of the trademark, so that the trademark owner is forced to prove or credibly demonstrate the use preserving the right to use the trademark. This is particularly important if the trademark owner wishes to take action against infringing third-party trademarks. Furthermore, there is also the possibility that a third party may have the trademark cancelled due to non-use.
- National, regional (EU) and international registration of trademarks with the German Patent and Trademark Office (DPMA), The European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organisation (WIPO).
- Enforcement of the property rights, in and out of court
- Prosecution of opposition, appeals and cancellation proceedings at the DPMA, the EUIPO, the General Court (EU), the European Court of Justice (ECJ), the BPatG and Regional/Higher Regional Courts (Landgerichte – LG / Oberlandesgerichte – OLG)
- Border seizure applications
- Searches for identical and similar patents worldwide
- Expert opinions on the validity and infringement of trademarks
- Trademark monitoring
- Internet monitoring (for counterfeits)