Trademarks and trademark law
As specialists in trademarks and trademark law, we would like to introduce you to the functions and protection of a logo.
Trademarks can be invaluable to their owners. The most valuable German brands include SAP, Deutsche Telekom, and Mercedes-Benz. The world’s most valuable brands include Google, Apple, and Microsoft. For example, the market research institute Interbrand estimated the value of the Apple brand for 2017 at $ 184.154 billion. However, trademark law also plays an increasingly important role for medium-sized companies, small businesses, and start-ups alongside other industrial property rights. The following quote applies not only to the large corporations but also to them:
“A brand is like a diamond: unique and valuable.”
Overview of brands and trademark law
- The German trademark law (MarkenG) protects trademarks, business names, and geographical indications of origin. It offers protection against imitations.
- Trademarks perform several functions. They serve primarily as an indication of origin. A logo can also have a positive impact on a company’s image and be used for advertising purposes. Registered trademarks also serve to protect the investments made in the brand.
- Trademark protection generally arises from the registration of the trademark in the trademark register of the DPMA.
- By submitting the completed registration documents to the DPMA, the Office will check whether there are any absolute grounds for a refusal to the registration of the trademark. However, no older trademarks are taken into consideration by the DPMA. If there are no complete grounds for a refusal to register, the trademark will be entered in the trademark register, and the registration will be published. The three-month objection period begins. Owners of older trademarks who fear the risk of confusion can pursue the cancellation of the younger trademark in opposition proceedings.
- A trademark is initially protected for ten years. These ten years can be extended any number of times for a further ten years upon payment of an extension fee.
- If a trademark is violated, the owner is primarily entitled to an injunction against the infringer. Besides, claims for damages as well as requests for information, recall, and destruction claims come into consideration.
- Anyone who infringes someone else’s trademark without being authorized to do so threatens to be warned. The costs in trademark law are comparatively high. The amount in dispute is € 50,000 for unused trademarks, € 100,000 for below average used logos, and € 250,000, and more for well-known trademarks are often used. The lawyer’s fees are calculated from this infringement.
- Rule of thumb: The more similar the opposing signs and the more similar the conflicting goods and services are, the higher the risk of confusion and thus the risk of a warning letter.
The subject of trademark law
The German trademark law protects trademarks, business names, and geographical indications of origin. In the following, the main focus will be on the trademarks.
But what exactly is a trademark? Trademarks can be any sign that is suitable for distinguishing one company’s goods or services from those of other companies. This sign makes one of several functions of a trademark clear. The trademark serves as an indication of origin. Goods or services bearing the trademark can be assigned to a specific company. The trademark law offers the owner of trademark protection against imitation. Anyone who violates someone else’s trademark may face numerous claims by the trademark owner.
Trademarks are not only used as an indication of origin. In this way, the trademark can positively influence the company’s image. This image is regularly the case when a unique quality is suggested with the branded product. A trademark can be used for advertising purposes. For example, the trademark can be used to build and maintain a unique image. Since a trademark offers protection from imitators, a trademark also serves to protect investments. Investments are made, creating a vision and awareness of the brand that is protected with the trademark. All of these functions of a trademark ultimately form its value for a company.
Creation of trademark protection
Trademark protection is created regularly by registering the trademark in the register maintained by the German Patent and Trademark Office (DPMA).
If there are registered trademarks and the question of which sign has the earlier rights, the filing date or, if applicable, the priority date is used. It is, therefore, easy to provide proof of seniority for registered or registered trademarks.
The registration procedure in Germany
Submission of registration documents
Anyone wishing to register a trademark in Germany does so at the German Patent and Trademark Office (DPMA). A list of goods and services must be enclosed with the registration documents. This list is used to determine which products and services the brand will later enjoy protection. There are 34 goods and 11 service classes. With the submission of the completed registration documents, the DPMA determines the filing date.
Check for absolute grounds of refusal
If the documents are complete and the official fees have been paid, the Office will check whether there are any absolute grounds for a refusal to register the sign. If such exist, it is usually a lack of any distinctive character or the existence of a so-called need to keep the trademark free for the trade.
A brand lacks any distinctive character, mainly if the sign is formed from words of common usage. “Super Cleaner,” e.g., will hardly be registered as a brand for cleaning products.
There is a need to keep the trademark free for the trade if the sign immediately describes the goods and services for which it is to be registered. Purely descriptive terms should not be monopolized by trademark law. Strictly descriptive words should be freely available to everyone, including the competition. A dairy will not be able to protect its milk products with the “milk” label as a brand. Other dairies should also have the option of even being able to print “milk” on their milk products.
Entry in the register and opposition period
If there are no absolute grounds for refusal, the trademark is entered in the register, and the entry is published.
The three-month objection period begins with the publication. Within this period, owners of older registered or registered trademarks who feel disturbed by the new trademark can object and request the cancellation of the trademark. If the opposition is successful, it will be granted, and the trademark will be deleted. If the objection is unsuccessful, it is rejected, and the trademark remains registered.
Request for cancellation and action for removal after the objection period has expired
Even after the opposition period has expired, owners of older trademarks can take action against the younger trademark. You can either file a request for cancellation or file a motion for dissolution. However, this happens rather rarely compared to the opposition procedure.
The application for cancellation will be considered if the owner of the younger mark does not use it seriously within the 5-year grace period for the goods and services for which it was registered.
The action for cancellation comes into consideration based on earlier rights to a trademark or even if an unregistered trademark has acquired validity. However, it is then up to the plaintiff to prove at what point in time his trademark received validity, and determining validity is very difficult.
Checking the risk of confusion
Regardless of whether it is in the opposition procedure, the request for cancellation or the cancellation action, it must be checked whether there is a risk of confusion. Put simply, there is a risk of trouble if the public addressed by the trademark thinks that one sign is the other or that one symbol is derived from the other, and this leads to a mistakenly assumed corporate identity. Commerce, therefore, believes that both signs come from the same company or the goods and services bearing the symbols come from the equal company. It is sufficient for the affirmation of a likelihood of confusion if the opposing signs are similar in sound, typeface, or conceptual terms. Identity is not required.
Term of protection of trademark law
The trademark legal protection initially exists for ten years. This period of security can be extended as often as desired for a further ten years against payment of an extension fee. In this way, the protection of a trademark can be maintained in the long term. In contrast to other industrial property rights, which are limited in their duration, the trademark law can continue to exist without a time limit, provided that the protection is renewed every ten years.
Claims of a trademark owner
Of course, anyone who owns a trademark has an interest in the fact that only he alone can use the trademark. Trademark law gives the owner of a trademark an exclusive right to protect himself against imitation of his trademark. He has numerous claims against imitators. People using identical or similar goods and services in which the trademark is protected, therefore, are at risk of being confronted with the claims of the trademark owner.
The owner of a trademark is primarily entitled to an injunction against the infringer. Also, a claim for damages can be considered. The trademark owner could assert information, recall, and destruction claims against the violator. If necessary, submission and inspection applications could be found.
The danger of warnings for trademark infringements
People using a sign that is identical or similar to a trademark for identical or similar goods are at risk of being warned. Trademark warnings are regularly associated with high costs. A lawyer’s fees are calculated based on the amount involved in the case. For notifications from trademark law, this is typically at 50,000 euros and more. In the event of a justified warning, this will quickly result in reimbursable attorney fees of just over 1,800 euros gross. This amount only includes the costs of a lawyer.
Rule of thumb:
The more similar the opposing signs and the more similar the rival goods and services, the higher the risk of confusion and thus a warning.
Do you have questions about the functions of a trademark or trademark law?
Then please contact us and have an initial non-binding discussion with us.