Trade marks

What is a trade mark?

A trade mark in the form of a protected sign is used to identify products and services. Signs suitable for distinguishing a company’s goods and/or services from those of other companies can be protected as trade marks. The most important trade marks are word marks, figurative marks (logos) as well as combinations of these, that is, word/figurative marks. Protection for a trade mark is obtained by entry in the register of the German Patent and Trade Mark Office.

What forms of trade mark are there?

There are several different forms of trade mark

The most common forms in which trade marks are registered are words (word marks) or images (figurative marks) – as well as combinations of these (word/figurative marks). Alongside these are special trade mark forms such as three-dimensional marks and colour marks.

Markenformen und deren Darstellungen

Trade mark forms and their images

What are the Nice classes and Vienna classes?

How do I apply for a trade mark?

What are grounds for refusal?

Why should I conduct a trade mark search prior to filing an application?

Why should I defend my trade mark?

If brand strategy is implemented well, the trade mark acquires a unique degree of recognition. Products and/or companies are recognised much faster and are remembered by customers for longer. This in turn boosts sales opportunities.

Companies convey a promise through their trade mark – whether in relation to the consistent quality, reliable source or specific characteristics of a good or service.

Whoever registers a trade mark creates a unique monopoly position for themselves. That means that no one else is permitted to use this trade mark, or any similar mark which is likely to cause confusion, for commercial purposes.

The ® symbol – signifying Registered Trademark – is an indication that the trade mark is registered and therefore protected.

Domain names can also be used as a trade mark for your own website.

A registered trade mark not only enables you to market your name and/or product effectively, it can develop into genuine monetary value over time. In 2020 the value of the “Amazon” brand, for example, was estimated at an impressive 415.9 billion US dollars.

Under German law, registered trade marks offer trade mark protection for ten years. This period can be renewed indefinitely. This provides you with legal certainty for the future.

Demonstrability. By the act of registration a specific filing date is assigned to the trade mark itself and the protected products. In case of conflict, this can quickly demonstrate which right you are claiming. The trade mark certificate proves who is really entitled to use the sign.

Trade mark classification

A trade mark is registered for specific goods and/or services. The goods and services are categorised according to an internationally harmonised system, the so-called “Nice Classification” comprising 45 classes. Figurative elements of a trade mark can be categorised according to the “Vienna Classification (opens in new tab)”.

When registering a trade mark you are requested to state a good or service group; without this information, the application will be rejected. You can use the Nice Classification to find out and define for which goods and services your trade mark is to be protected.

Nice Classification

The Vienna Classification was introduced in order to be enable searches for figurative elements in the first place. In it, graphical elements are assigned to a category. The list of categories includes such entries as “Human beings” (2), “Animals” (3) and “Geometrical figures and solids (26).

The current version of the classification can be found in the DPMA document “Vienna Classification (opens in new tab)”

Registering a trade mark

What are grounds for refusal?

The DPMA examines the trade mark application with regard to absolute grounds for refusal. Absolute grounds for refusal include:

  • a lack of distinctiveness
  • descriptive terms which must be kept freely available for general use
  • an emblem of state included in the trade mark
  • offence against public policy or accepted principles of morality.

Caution: When an application is made, the German Patent and Trade Mark Office does not check whether a similar or identical trade mark already exists. Failure to carry out a thorough search in advance may result in high costs incurred during opposition proceedings.

Why should I conduct a trade mark search prior to filing an application?

You have taken the grounds for refusal into consideration and would like to register your trade mark. Now you should conduct a thorough trade mark search in advance because only then can you ensure that

  • you are not infringing on existing rights based on identical or similar trade mark forms,
  • you do not receive notice of a warning/opposition and
  • the trade mark is in itself similar or the designated goods or services do not overlap with trade marks which have already been registered.

Failure to investigate these matters can have costly consequences:

  • The owner of the earlier trade mark can apply for the cancellation of your later trade mark. The cost of filing an application will not be reimbursed.
  • In the event of an infringement of third-party rights, the latter can claim damages and/or a notional licence fee.
Request for Trademark Sea…

Trade mark monitoring

The level of awareness enjoyed by a company is often an indicator of its success. The company name or logo stands for this success. Others want to have a share in this but without making the same effort you have – by exploiting your trade mark illegally.

To protect your trade mark against illegal exploitation and therefore also safeguard the success of your company, regular monitoring of new registrations of other trade marks which are similar or even identical to yours is an essential part of brand strategy.

Information Trademark Mon…

We’re happy to help you with:

- a trade mark search to protect against infringement of third-party rights

- compiling a solid trade mark strategy

- defending your trade mark by means of trade mark monitoring and

- advice on getting started with trade mark protection.

Find out more