How to register a trademark?
Since you cannot alter your trademark or add any goods or services after you have sent your application to the Patent and Trademark Office (in case of a withdrawal of an application official fees are not refunded), it is recommended to consider professional assistance at applying for a registration. This applies especially to strategic considerations, the trademark and the trademark form as such, the analysis of the trademark research and the wording of a listing of goods and services / specifications. The latter can not be extended after an application has been filed.
We cover all these services for reasonable fees based on our experience. We assist you at the application, registration and maintenance of a trademark so that your rights are fully secured.
What is a trademark?
A trade mark is a sign which is used by a company its goods and services from similar goods and services of another company. Trademarks most commonly consist of words, letters, numbers, drawings, audible signs, three-dimensional signs and other signs which comply with the Trademark Act.
What requirements must be met in order to register a trademark?
A sign can offer protection as a trademark when it has been entered into a Register of Trademarks maintained by the German Patent and Trademark Office (§ 4 of the Trademark Act), after an application for registration had been filed containing certain information. The German Patent and Trademark Office has its own application form.
Who can register a trademark?
The name of the applicant has to be given / stated. Otherwise the application is not valid and does not secure the seniority of a trademark. The applicant can be a natural person, a legal entity or a civil-law partnership possessing legal personality (§ 7 of the Trademark Act). It is necessary to give the name and address of the applicant. If a trademark is to be registered for a company, it is necessary to give the company’s title (entered) in the commercial register. If a trademark is to be registered for more than one person, it is necessary to give the names and addresses of each of them. In case of civil-law companies and associations which are not entered into the commercial register or a register of associations, the name and the address of partner must also be given. If a private limited company in course of incorporation is being registered, an application must be accompanied by an uncertified copy of the Articles of Association.
How is the reproduction of a trademark and of the signs of which it may consist represented?
The application must contain the reproduction of a trademark. Otherwise the application is not valid and does not secure the seniority of the trademark. In an application form you can only apply for one trademark. After an application form has been filed, the trademark applied for can not be altered. Therefore, the trademark for which protection is sought has to be indicated exactly in the way in which it is to be protected in the future. If the position of the trademark desired is not obvious from the graphic representation, you should state on the representation which is “top” or “bottom”. Prosze popraw Simonie. If you apply for a three-dimensional trademark, you can submit up to six different views of a trademark (four copies of each). All views must be contained on a sheet of paper in the size indicated above and the type area can not be larger than indicated above. The graphic representations must sufficiently specify and present the goods or services for which protection is sought.
If a trademark is not to be registered in black-and-white but in colour, the appropriate instructions regarding the colour must be included (e.g. red, green, yellow). It does not suffice to give a RAL, Pantone or HKS number. When filing an application for a coloured trademark via fax, please note that the day of receiving your fax can be regarded as the day of application, only if the allocation of colours on the fax is distinguishable.
If a tone is to be registered as a trademark (tune trademark), a graphic representation of a trademark (musical notation) and an audio representation of a trademark (on a tape, audio-cassette or CD) must be attached to the application form.
What kinds of trademarks can be registered?
Word trademarks (§ 7 of the Trademark Ordinance) are trademarks which consists of words, letters, numbers or other characters which can be represented by means of conventional print used by the German Patent and Trademark Office.
Picture trademarks (§ 8 of the Trademark Ordinance) are pictures, elements of pictures or drawings (without any word components).
Word/picture trademarks consist of a combination of word and picture components or of words which are graphically represented. They are a subclass of picture trademarks.
Three-dimensional trademarks (§ 9 of the Trademark Ordinance) are concrete trademarks, i.e. they consist of a three-dimensional form.
Tune trademarks (§ 11 of the Trademark Ordinance) are acoustic, audible trademarks, which consists of tones, i.e. for instance a short jingle.
Tracer trademarks (§ 10 of the Trademark Ordinance) consist in principle of colour lines or threads which can be found on certain products (mainly cords, wires and tubes / hoses).
A miscellaneous trademark (§ 12 of the Trademark Ordinance) is a trademark which can not be classified as any of the above. For example, a coloured trademark consisting of a shapeless colour or of a combination of a number of colours is an approved miscellaneous trademark.
What should be always taken into consideration as far as a listing of goods and services / specifications is concerned?
An application for a registration must contain a list of goods and services / specifications which you want to use your mark for. Please remember that you can not add goods or services after you have sent your application to the Patent and Trademark Office. It is, however, possible to constraint your list at any time.
The scope of protection of a mark is determined by goods and services which are protected by means of a trademark. All goods and services are divided into 45 classes based on the Nice International Classification of Goods and Services for the Purposes of Registration of Trademarks. An official fee which is due for the application depends on the number of classes applied for.
The goods and services which the mark is to be used for have to be listed literally on the application – it is insufficient to list merely class numbers (e.g. “12, 22, 36”). The goods and services have to be exactly named so that they can be assigned clearly to an appropriate goods or services class – this helps for clear delineation of the scope of trademark protection if it should come to a conflict in the future. General terms such as “accessories” or “systems” are insufficient. If indefinite / vague terms are used, the application procedure which usually last three to 12 months can be considerably delayed.
The search engine of the German Patent and Trademark Office (http://www.dpma.de/suche/wdsuche/suchen.html) provides help at formulating the list of goods and services / specifications. It contains the division into classes and the alphabetic list of the international classification, as well as many further terms whose presence on the application form is generally accepted by the German Patent and Trademark Office.
Attention: Each additional goods or services class indicated in the application increases the likelihood that the owner of earlier trademarks will file an objection against registering the trademark. Furthermore, under the Trademark Act it is compulsory to use / exploit the goods and services for which the registration is sought. This means that the trademark has to be really used in business activity for all goods and services registered in order to maintain the right. Nevertheless, it is not easy to decide on the scope of the listing / specifications. The Patent Office recommends that you should follow only the actual (given) facts of your business orientation of and planning when formulating the list of goods and services / specifications, even if it means applying for less than three classes included in the application fee. Such a recommendation may seem to be reasonable – from the point of view of the Patent Office; however, the applicant may focus his attention on tactical considerations.
What happens after an application has been filed?
After an application has been filed to the Patent and Trademark Office it is given a reference number. It is then decided to which class the goods or services for which the registration of the trademark is sought belong and an acknowledgement of receipt is sent together with a notification of fees. The registration of a trademark and the day of registration are published in the electronic intellectual property information systems / databases (§ 33 (3) of the Trademark Act).
What is the role of the examination of the application if there are any absolute hindrances / objections?
The application to register a trademark is further processed after the application fee and - if necessary - class fees have been paid. Then, it is examined whether the application meets the formal requirements and whether any so-called absolute hindrances / objections stand in the way of registration (§§ 36, 37 of the Trademark Act).
The German Patent and Trademark Office does not check if no similar or identical marks have already been registered. Owners of earlier trademarks can file an opposition after a trademark has been entered into the Register of Trademarks.
Furthermore, it is checked if there are any absolute protection hindrances / objections as defined by § 8 of the Trademark Act, according to which marks which are descriptive merely of the character, purpose or other features of the goods or services to which it is applied cannot be validly registered. If an absolute objection is found, the applicant receives an report of objections. He is given a certain period to overcome these objections. If the objection continues to exist, the application is rejected by a higher ranking official. It is possible to file an opposition against this decision which will be considered by a higher ranking official. You can appeal from this decision to the Federal Patent Tribunal. An opposition or an appeal can be filed within a month’s time from receiving the decision.
If all formal requirements are met, the fees paid and no absolute objection is found, the mark will be entered into the Register of Trademarks and published in the Markenblatt. The owner of the trademark receives a registration deed as well as a written confirmation of other data enter in the Register.
What possibilities does a registered trademark offer?
Upon registration the proprietor obtains an exclusive right (§ 14 (1) of the Trademark Act), which enables him to claim damages in case of infringement of his trademark or to prevent others from using the mark on the goods or services for which it is registered (§§ 14 of the Trademark Act).
What can a trademark owner do against new trademarks (opposition of third parties)?
Within three months’ period from the publication of an entry in the Register, the owners of trademarks which have been registered or entered into the Register earlier have an opportunity to file an opposition against the registration of a trademark (§ 42 Trademark Act).
If the German Patent and Trademark Office receives one or more oppositions, it informs the owner of the trademark about this and offers him an opportunity to put his point of view. After both parties, i.e. the opponent and the owner of opposed the trademark, had the opportunity to express their opinions, a higher ranking official decides on the opposition. If - due to the use of an identical or similar mark on identical or similar goods and services - there exists a likelihood of confusion on the part of the public, the opposition is sustained and the later trademark removed form the Register / deregistered (§ 9 (1) of the Trademark Act). Otherwise, the opposition is rejected.
You can appeal from this decision to the Federal Patent Tribunal (compare above).
In order to avoid oppositions, it is recommended to determine prior to the application if identical or similar trademarks have already been registered. In addition, such a research should be legally evaluated / assessed from the legal point of view.
Attention: It is not sufficient to receive information from various offices that a certain mark does not yet exist. A similarity search has to be conducted.
Furthermore, a registered trademark can be removed from the Register following an application of third party and proceedings before the German Patent and Trademark Office due to invalidity (§§ 49, 53 of the Trademark Act) or nullity (§§ 50, 54 of the Trademark Act) based on absolute protection objections. A registered trademark can also be removed from the Register following a cancellation procedure before ordinary courts due to invalidity or the existence of earlier rights (§§ 49, 51, 55 of the Trademark Act).