A trademark in the legal sense is a legally protected sign that is intended in particular to distinguish the goods and/or services of one company from those of others. The following explanations are intended to provide a brief overview of the options for obtaining legal protection, but are by no means exhaustive.
Origin of trademark protection
The legislator has provided for various forms in which a trademark can be created (see Section 4 MarkenG). This can be done by
- Registration of a sign as a trademark in the register of the competent trademark office
- Traffic validity
- notoriety.
Reputation means that the trademark is so well known in the relevant public that the goods or services provided under the trademark are associated with a specific company. The notorious reputation refers to provisions of the Paris Convention for the Protection of Industrial Property, one of the first international treaties in the field of trademark law.
Registration with the competent authority is without doubt the simplest and most common way. This will be described in more detail here.
National, international or Community trademark
In principle, a trademark only has territorial effect, i.e. protection only applies in the territory in whose register it is entered (e.g. Germany, France). A trademark registered only in Germany therefore enjoys no protection in other countries.
German brand
The registration of a trademark in Germany takes place at the German Patent and Trademark Office (DPMA), which has offices in Berlin, Jena and Munich. In principle, a trademark can be registered by anyone and can consist of words, letters, numbers, images (including three-dimensional images), mere colors or acoustic signals (see Section 3 MarkenG).
In addition to the description of the desired trademark, the applicant must include a so-called list of goods and services with the application. This must specify the goods and services to which the trademark is to apply. Trademark protection is therefore not universal, but applies to the goods and services specified by the applicant (e.g. for game figures, software or web design).
In the so-called Nice Classification, a multinational treaty, the goods and services are grouped into different classes, whereby specifications by the applicant are possible and sometimes useful.
Alphabetical listing of goods and services
http://www.dpma.de/docs/service/klassifikationen/nizza/nizza9_aldwud_tagged.pdf
Listing of goods and services by class
http://www.dpma.de/docs/service/klassifikationen/nizza/nizza9_ldwudnk.pdf
Please note: A new version of the Nice Classification applies for registrations from 01.01.2012:
Alphabetical listing of goods and services
http://www.dpma.de/docs/service/klassifikationen/nizza/nizza10_teil1.pdf
Listing of goods and services by class
http://www.dpma.de/docs/service/klassifikationen/nizza/nizza10_teil2.pdf
EU trademark
In the case of the EU trademark, also known as the Community trademark, the application procedure takes place before the EU trademark office in Alicante, the Office for Harmonization in the Internal Market – OHIM.
The procedure here is similar to that for the German trademark, except that other designs are used and the applications are regularly filed online with the OHIM for cost reasons. The EU trademark is valid in all member states without the need for a separate application in the individual member states. However, the existence of a similar or identical national trademark of a third party poses a problem when applying for an EU trademark. If the owner of the earlier trademark, which has priority, takes action against the newer trademark or trademark application, this can lead to the trademark being canceled for the entire EU area or prevent the trademark application from being filed. However, the owner of the newer trademark or applicant can, under certain conditions, file an application for conversion of his trademark/application into a national trademark (application). In this case, the mark is valid in the Member States in which the ground for refusal does not exist.
International brand
It is also possible to register a trademark internationally. The World Intellectual Property Organization (WIPO), based in Geneva, is responsible for the international extension of a national trademark that has at least been applied for or already exists. The applicant can decide to which Member States he wishes to have his trademark extended.
A list of member states can be found here.
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf
After corresponding registration in the respective state, the trademark is generally valid there as if a direct national registration had been made.
Foreign brands
Since not all countries in the world are members of the EU or WIPO (e.g. Canada, Brazil), registration must be carried out locally in these cases, regularly via representatives based in the respective countries.
Fees
The costs of registration vary according to the type of register and depend in particular on the number of classes applied for registration.
German brand
In Germany, the three-class application fee for a trademark is currently EUR 300.00. Each additional class costs an additional EUR 100.00. If the trademark application is to be filed as quickly as possible (approx. two to six months = quickly), an additional fee of currently EUR 200.00 must be paid. Further information on the fees can be found here http://www.dpma.de/marke/gebuehren/index.html
EU trademark
The registration of an EU trademark by electronic means costs EUR 900.00, otherwise EUR 1050.00. For registrations with more than three classes, an additional fee of EUR 150.00 is payable for each additional class.
International brand
The fees charged by international brands depend on a variety of factors. However, WIPO provides a fee calculator for this purpose, which can be accessed here.
Trademark search
In particular, it is essential for the registration of a trademark that it is sufficiently different from existing trademarks. Otherwise, due to the priority of the earlier trademark, the newer trademark will no longer be protected if it is registered at all. The costs of the registration procedure will not be reimbursed. The owner of the earlier trademark may also be able to claim injunctive relief and damages (as well as the costs of legal representation).
The current trademark portfolio can be retrieved from the respective registers.
DPMA
OHIM
WIPO
Sufficient time should be allowed for the research or a specialist should be commissioned.
What COXlegal can do
COXlegal is happy to take care of the entire registration process. This means, among other things
- Advice before filing the trademark application regarding the requirements that a trademark must fulfill in order to be registered (e.g. distinctiveness and distinctiveness).
- Carrying out an identity search for existing trademarks, in particular in the above registers
- Preparation of the list of goods and services in close coordination with our clients. Identification and completion of the relevant registration forms
- Handling communication with the trademark offices in German, English or French
- Establishing contact and taking over communication with cooperation partners worldwide.
If necessary, we will of course also take care of, for example
- Representation in appeal proceedings
- Representation in opposition proceedings if a third party asserts rights against the registration of the trademark
- Preparation of delimitation agreements to avoid or end a legal dispute
