International Business Articles
By Nikola Werry, LL.M. (UK)
WINHELLER Attorneys at Law & Tax Advisors
Nearly everywhere, we come across products of a manageable number of manufacturers. One example: Whether Apple or Samsung, every second mobile phone or tablet originates from the production of either of these manufacturers. We do not only like the product itself. It is also the image represented by a brand.
If your company uses a name or a sign to designate your products in public, such a symbol may develop into one of your most valuable assets if you apply the right brand strategy. But in order to prevent your competitors from getting rich at your expense by using your symbol or, even worse, from damaging the image of your symbol by placing defective products on the market, your trademark needs to be protected.
Trademark Protection Under German Law
German law distinguishes between the “registered trademark” (Registermarke) which is created by registration of a sign as a trademark, the “trademark acquired through use” (Benutzungsmarke) which acquires protection through use of the sign in the course of business and a certain degree of recognition resulting from such use, and the “well-known mark” (notorisch bekannte Marke), which has become accepted in trade in Germany.
Apart from the different ways, in which trademarks can be protected, there are also different types of trademarks. German law identifies word marks (example: VW), figurative marks (example: Mercedes-Benz star), figurative marks with letters (example: Google letters), sound marks (example: song of Deutsche Telekom AG), 3-dimensional marks (example: Stabilo Boss highlighters), color per se marks (example: the yellow used by ADAC) and generic marks (example: Thuringian bratwurst).
In addition, trademarks are registered for certain products and services. These are decisive for the scope of protection of the trademark. All goods and services are classified in a total of 45 classes according to the Nice Classification.
Not All Signs Are Eligible for Registration
The law identifies absolute grounds for refusal of protection (in such case, the registration of the trademark is excluded under any circumstances) and relative grounds for refusal of protection (these may in some cases be overcome). Before applying for a registration, a thorough examination should be carried out to determine whether any absolute or relative grounds for refusal apply.
In trademark law, the so-called priority principle applies: First come, first served. In case of a conflict, the trademark with an older seniority has priority over the younger mark.
In addition, we recommend to carry out brand researches prior to applying for the registration of a trademark. Brand researches reveal whether or not identical or similar trademarks (identical or similarity search) exist. This may prevent trademark disputes that burn time, money, and energy.
Does the Registration of A Trademark Provide Worldwide Protection?
Due to the territoriality principle, the scope of protection of a national trademark, which you can register with the German patent and trademark office (DPMA), does not extend beyond the German border. Especially international companies often require a larger scope of protection. But do not worry: In addition, you can also consider a registration of a European Union Trademark (to be registered with the European Union Intellectual Property Office (EUIPO)) or a registration with the World Intellectual Property Organization (WIPO). To ensure protection in countries, where the EUIPO or WIPO regulations do not apply, you may, of course, apply for an individual registration in the respective country concerned.
Our Advice to Suit Your Brand Strategy
You should address a reasonable brand strategy that serves to build up and increase your market value at an early stage. Our competent and experienced attorneys will inform and accompany you in exploiting opportunities for your business, and assist you in developing an appropriate strategy.
WINHELLER Attorneys at Law & Tax Advisors
Tel.: +49 (0)69 76 75 77 80
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