Trademark law
When registering a trademark, one can quickly encounter uncertainties. Where do I register the trademark? What requirements must be considered, and to what extent do I need to take into account trademarks of other companies?
Our trademark law experts will be happy to advise you on all aspects of trademark protection. We will guide you through the entire trademark registration process. Starting with a trademark search, compiling the necessary documents, and concluding with the final application, which we will submit to the responsible office.
In the run-up, we are focusing in particular on the following topics:
- Creating a list of goods and services – what should the brand stand for?
- Branding consultation
- German trademark, EU trademark, or international trademark – which is the right one for your company?
Trademark law – what is it?
The Trademark law This regulates the content and protection of trademarks and other so-called designations. A trademark is an intangible asset and is often referred to as „intellectual property.“.
Brands are economic assets. It is not uncommon for a company's brand to represent the main part of its value. This makes it all the more important to strategically plan brand development from the very beginning. It is equally important to differentiate or defend brands against competitors. The entire company often stands or falls with the „status“ of a brand. We are happy to advise you on strategies for establishing brands, registering brands, or developing and protecting them.
How is a Brand?
A brand can be established in two ways. On the one hand, a brand can be registered, and on the other hand, trademark protection can also arise through the use of a trademark.
Registration for the desired protection area is carried out at the German Patent and Trademark Office (Germany), the European Harmonisation Office (Europe), or WIPO (International), and should be handled by your trademark lawyer due to the associated complexity.
To obtain trademark rights through use of a trademark, the mark must Traffic relevance that you have acquired. This means that the brand must enjoy a certain level of recognition in the circles for which the brand is relevant. Whether trademark protection exists through use can often be clarified in an initial conversation with your trademark attorney. However, this is also often very difficult to determine. In such cases, an expert opinion is usually the only solution.
What types of brands are there?
In Germany, you have the choice between:
- Word marks: Marks consisting of one or more words (also: letter and number sequences).
- Graphical Marks: Ex.: graphical representations and logos.
- Word/Figurative Marks: The trademark has both a figurative and a word component.
- Three-dimensional brands: Three-dimensional shapes and designs of all kinds. Ex.: the Mercedes star, the Michelin Man.
- Sound marks: Signs that can only be perceived by hearing. Ex: sounds, tones, and other noises.
- Collective Marks: Only legal entities such as associations can be holders of a collective mark. This mark is intended to identify the goods or services of the members and to differentiate them from offers of other associations.
- Color trademarks: Pure colors are also fundamentally registrable as trademarks.
Goods and Services Catalog, what is that?
For a trademark registration, not only a trademark symbol is required, but also a list of the goods and services for which this trademark is intended to stand.
The central question therefore is: For which goods and/or services do I want to have the brand to be registered protected?
Such a register is a mandatory requirement for trademark registration and should therefore be prepared to the best of one's knowledge and belief. It should always be noted that the goods and/or services must be selected not only by industry sector, but also on a completely individual basis tailored to your company.
The directory generally distinguishes between goods and services on the one hand, and on the other hand, it is further subdivided into different areas of daily life. These distinctions are shown according to the so-called Nice Classification in the subdivision into 45 classes (of which 34 are for goods and 11 for services).
Trademark registration
The registration of trademarks is inextricably linked to the question of which goods and services they are intended to represent. Therefore, a trademark registration requires not only a „trademark symbol“ but also individual adaptation to the goods or services sold under the trademark. This individualization is carried out by specifying a list of goods and services.
Only the combination of this goods and services directory with the bare trademark leads to a trademark's registrability. We advise you on selecting a trademark suitable for registration or brand building, and we create the directory of goods and services to enable trademark registration.
- Consulting and strategy development for creating a brand mark/company logo. (There are a number of criteria that exclude the registration of a trademark. For example, a word mark – if you want to register it – must not contain commonly used words or phrases. In this case, you can either resort to a figurative mark or establish a different brand mark from the outset.)
- Registration of German Trademarks (DPMA – German Patent and Trademark Office)
- Registration of Community trademarks / European trademarks (OHIM – Office for Harmonisation in the Internal Market)
- Registration of International Trademarks / IR Trademarks (WIPO - World Intellectual Property Organization)
- Creation of the list of goods and services
- Objection to the registration of trademarks
- Applications for cancellation of trademarks
We would be happy to advise you on which trademark is right for you.
German trademark, Union trademark, and so on.
At the outset, it can be stated that you have a free choice as to which protection you want. A national trademark is by no means a rank below a Union trademark. The systems are fundamentally equivalent.
The distinction is made solely on a territorial level. The German trademark provides protection within the territory of the Federal Republic of Germany and must be registered with the German Patent and Trademark Office (DPMA).
The European Union trade mark, on the other hand, is registered at the European Union Intellectual Property Office (EUIPO) in Alicante and provides trade mark protection in all member states of the European Union.
Would you like your brand to enjoy even greater protection? An application for international registration can be filed through the DPMA with the World Intellectual Property Organization (WIPO) in Geneva. You can then designate countries in the international register where trademark protection should extend, known as an IR mark.
Warning in trademark law – How to react?
Brand rights are primarily protective rights. If there is a fear that third-party brand rights have been infringed, a warning is often issued.
Were you warned?
Be sure to have your trademark attorney review this matter. Often, clients present us with cease and desist letters in trademark law that are not justified.
As your trademark attorney, we will examine for you whether the warning is justified or not. After the results of this review, the strategy must be chosen. If the opposing party's trademark law claims cannot be completely defended against, it is often advisable to enter into negotiations with the opposing party regarding the trademark infringement in order to reach an agreement and thus prevent costly legal trademark disputes. As your trademark attorney, we can tell you from experience that considerable costs can often be saved through an out-of-court settlement.
Required steps are:
- Examination: Trademark law infringed? (Always required immediately)
- Submit a modified cease and desist declaration
- Counter-warning
- Negative declaratory judgment
- Filing of a trademark protection document
Please note: Cease and desist letters always come with short deadlines and a high sense of urgency! It is of great importance that you contact your trademark attorney as soon as possible so that we can act on your behalf immediately and, if necessary, prevent expensive warning fees or lawsuits.
Trademark infringement? - Claims for infringement of your trademark rights
If you suspect another party is infringing your trademark rights, we, as your trademark attorneys, will gladly review your case. You come to us and present the trademark infringement you have discovered.
First, it must be clarified whether trademark protection existsTrademark protectionIf there is no trademark protection, claims may still arise from copyright, competition law, or other legal areas. If there is an infringement of your trademark rights, the extent of the infringement must be clarified.
Depending on the examination result, the following steps are conceivable and possible:
- Trademark cease and desist letter
- Trademark licensing inquiry
- Preliminary injunction in trademark law
- Trademark lawsuit/action
- Injunction in trademark law
- Claim for damages in trademark law
- Action for information in trademark law
The individual options are explained in more detail below:
Cease and desist letter in trademark law
If the accusation proves to be justified, we, as your trademark attorneys, will demand that the infringer cease the trademark infringement immediately. In addition, the infringer will be asked to provide a cease and desist declaration within a short period. If the opposing party fulfills these demands, the out-of-court trademark warning itself can lead to the cessation of the infringement. Often, within this framework, any damages incurred can also be quantified and the infringer can be obligated to compensate for them. However, if the infringer is not willing to cease the trademark infringement, it may be necessary to take legal action in court with your trademark attorneys.
Preliminary injunction in trademark law
Before we, as your trademark attorney, obtain a preliminary injunction for you, the infringer should first be warned (WarningIf the infringer refuses to cease the trademark infringement, you have the option of an expedited procedure by applying for a preliminary injunction.
In trademark law, a preliminary injunction is usually exclusively aimed at the „cessation“ of the trademark infringement. As your trademark attorneys, we can enforce such a preliminary injunction for you.
In this procedure, particular attention must be paid to the so-called „urgency period.“ In trademark law, a preliminary injunction can generally only be obtained within 1 month of your knowledge of the trademark infringement. During this period, the opposing party must have been warned, and given a deadline to submit a cease and desist declaration. This deadline must have passed without the submission of the cease and desist declaration. In some cases, the urgency period can also be longer than one month.
In cases of trademark infringement on the internet, you can obtain an injunction before virtually any German court with your trademark lawyer (however, there are legally mandated court jurisdiction concentrations). At some courts, the urgency periods are longer (for example, Düsseldorf: 2 months). It is important to always assume that we, as your trademark lawyer, normally only have about 1 month from your knowledge of the trademark infringement to file an application for a preliminary injunction. Therefore, rapid action is required here.
If your trademark lawyer succeeds in obtaining the preliminary injunction, the infringer will be ordered by the court to cease the infringing activity. If they violate this order, they face a fine of up to €250,000.00 or custodial penalty. The costs incurred during the warning procedure and in anticipation of the preliminary injunction are generally claimed in the subsequent lawsuit.
Trademark lawsuit/action
If the trademark infringer does not comply with the cease and desist letter and the deadline for applying for a preliminary injunction has expired, or if we as your trademark lawyer have obtained a preliminary injunction for you which the infringer does not wish to acknowledge, we will enforce your claims for injunction, information, and damages in legal proceedings.
However, you must consider that such legal proceedings often take a long time. Therefore, it is very important to react immediately upon becoming aware of a trademark violation and to instruct your trademark attorney to enforce your claims.
Trademark damages
If a third party infringes your trademark rights, you have a claim for damages against the infringer. The prerequisite for getting the costs of the entire proceedings reimbursed by the opposing party is, of course, the legality of the warning letter.
If the warning letter is unlawful, which you will discuss in advance with your trademark lawyer, you will be reimbursed for the warning costs and also for the subsequent litigation costs in full by the opponent. Furthermore, you can demand damages for the unlawful use of your trademark.
Since calculating damages is often difficult, there are 3 different ways to calculate damages. One can calculate the concrete damage (often factually impossible) or skim off the infringer's profit. However, damages are usually determined using the so-called license analogy. The amount of damages is then based on the fictional assumption of what reasonable parties would have agreed upon as compensation for the use and exploitation. Your attorney for trademark law has years of litigation experience in this area and will help you enforce appropriate compensation.
License Agreements Trademark Law
A trademark is an intangible asset. Therefore, if you wish to allow others to use your trademark, you must grant licenses. Your trademark attorney will advise you on drafting license agreements. Each license agreement reflects the specific use or exploitation case. This not only secures your rights but also generates license fees.License Agreement Law).
How can we help you
As experienced lawyers with over 30 years of experience and 15,000 cases handled, we are trained to develop individual solutions for our clients. You are our focus. This is also reflected in our reviews: the majority of our clients recommend us, which we are particularly proud of. And that is why we are confident that we can competently assist you with your legal problem.
This is how the consultation works
First, contact us either by phone or via the contact form below. Please describe your case. Subsequently, we will get a clear picture of your situation in order to provide an initial legal assessment. Often, expensive court proceedings can be avoided. We will then advise you on the best course of action. Should a court case become necessary, we can draw on our decades of litigation experience, enabling us to achieve the best possible outcome for you.
How to find us
Our law firm in Mannheim is located at P7, 22.
