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Trademarks

A trademark for use in product advertisements is the most important non-technical protection right. The relevance of trademarks has continuously increased over the last years because they may represent a substantial asset for the owner.

In Germany, trademark protection is obtained by registering a trademark in the form of a symbol or the like in the trademark register of the German Patent and Trademark Office (DPMA). However, trademark protection can also be obtained with an alternative to such a registered trademark. This so-called genericized trademark is created due to such intensive commercial use of a brand that the trademark acquires a certain commercial prestige. The commercial prestige is usually assessed by means of an opinion poll and therefore quite costly. Consequently, the pursuit of a registered trademark is the preferred course of action.

When applying for a trademark, the application documents need to include a reproduction of the trademark as well as an index of goods and services identifying the classes of goods and services to be protected by the trademark. In order to obtain trademark protection in Germany, it is necessary to pay the official fees in a timely fashion and to observe the legal stipulations prescribed in the trademark law. The amended trademark law (Markengesetz) supersedes the prior trademark law (Warenzeichengesetz) and is in effect since January 1, 1995. Since then, it is possible to protect all symbols, particularly words and personal names, illustrations, letters, numbers, sounds, three-dimensional designs including the shape of a product or its packaging, as well as other appearances including colors and color compositions. In addition to these types of trademarks, it is now also possible to obtain protection for all manifestations to which the human senses are responsive, e.g., smell trademarks, Design Patents, tactile trademarks and motion trademarks.

One common aspect of these different types of trademarks is that the application requirements need to be fulfilled and that no so-called absolute protection obstacles conflict with the registration. These prerequisites are officially verified during the registration proceedings. The most important absolute protection obstacles are the lack of graphic presentability, the need to keep a mark free for the trade and the lack of distinctiveness.

The stipulation of graphic presentability can be easily fulfilled when registering word trademarks or pictorial trademarks. The situation becomes more problematic when attempting to register, for example, sound trademarks that serve for protecting the sound of a melody. In this case, an indirect graphic representation in the form of musical notation suffices.

The term demand for exclusion refers to the desire of competitors to also utilize the trademark or registered trademark for identifying their goods and services. For example, the registration of the word “tractor” as a word trademark for a “traction engine” would be rejected due to the direct correlation. However, “tractor” may be registered for a “cleaning agent” because the need to keep a mark free for the trade presumably would not exist in this case.

The term distinctiveness refers to the specific ability of a trademark to distinguish the origin of the protected goods and services of a company from those of another company in domestic commerce. This makes it possible to associate these goods and services with the respective company. Domestic commerce is usually represented by the end consumer purchasing the product.

If it is officially determined that no absolute protection obstacles exist, the trademark is registered and the registration is published in the trademark gazette of the German Patent and Trademark Office. The holder of a priority trademark has the right to object to the registration of a newer trademark within a period of three months that begins with the publication date. This objection may lead to the cancellation or partial cancellation of the newer trademark. The holder of the objecting trademark needs to pay an objection fee to the German Patent and Trademark Office when the objection is filed.

In most instances, the objection is based on relative protection obstacles that are not officially investigated by the time the trademark is registered. A relative protection obstacle exists if the older trademark (= objecting trademark) and the newer trademark (= trademark in dispute) are identical or similar and the corresponding goods and services are also identical or similar such that the public may confuse the two trademarks. However, instances in which a newer trademark is in confrontation with an identical priority trademark registered for identical goods and services are very rare, in particular, if a search is carried out before the trademark application is submitted.

If an objection is filed, the German Patent and Trademark Office informs the holder of the disputed trademark who may subsequently deliver a reply. The trademark in dispute may be canceled if no reply is submitted before the deadline expires.

If no objection is filed or the objection proceedings do not result in the cancellation of the trademark, the term of protection of the trademark is not limited as long as an extension fee is paid every ten years beginning with the filing date. Another prerequisite for the maintenance of a trademark is that the trademark needs to be commercially utilized because the uninterrupted non-utilization of a trademark over a period of five years can lead to the cancellation thereof if a third party files a forfeiture petition.

Once trademark protection is obtained, the holder is granted exclusive rights within the entire federal territory. This means that third parties are prohibited from commercially utilizing an identical or similar trademark for identical or similar goods and services without the permission of the trademark holder. An injunctive relief and a claim for damages may result if this interdiction is disregarded.

Trademarks are not only eligible for protection in Germany, but also in other countries. The Madrid system governs national applications in foreign countries, but has also been adopted by numerous countries in order to simplify the trademark registration process. The Madrid system is based on the Madrid Treaty on the International Registration of Trademarks (MMA) and the protocol of this treaty (PMMA). Consequently, an international registration to be carried out by the World Organization for Intellectual Property (WIPO) in Geneva, Switzerland, is also possible for a so-called international trademark (IR trademark) that is backed by a base trademark application or a base trademark.

In addition to German trademarks, national trademarks in foreign countries and IR trademarks, the European system of community trademarks was adopted on April 1, 1996. Such a community trademark can be filed with the Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain.

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