Register a trademark: Step-by-step guide to perfect trademark protection
Registering a trademark yourself - and how a trademark lawyer can help you
We are certain that you will not find a more complete guide to trademark registration on the Internet!
Registered trademarks are more than just symbols or names - they represent the heart of a company's identity and success. The value of a brand extends far beyond its external appearance and manifests itself in the way consumers perceive and interact with it. Strong brand protection creates trust, loyalty and an unmistakable recognition value.
The value of a brand is a decisive factor for sustainable business success, as it not only characterizes products or services, but also embodies emotions, quality and reliability.
The trademark application with trademark lawyer Robert Meyen
Trademark registration by a specialist lawyer - our complete offer with and without Trademark search
With our specialist legal advice play it safe when registering your trademark. We are at your side from the initial trademark idea to the Enforcement of your brand at your side. Trust in the experience of hundreds of trademark applications.
The way to the perfect brand, if you want to Lawyer for trademark law Robert Meyen commission:
- We advise on the perfect Brand strategy and to the ideal property rights portfolio particularly in Germany and Europe, but also in most other countries around the world.
- We check your brand for Protectability and tell you whether the Trademark Office is likely to register the trademark.
- As part of a thorough Trademark search at the DPMA (Germany), EUIPO (Europe) or WIPO (international trademarks), we check whether older trademarks conflict with your application and provide detailed information about existing risks
- We create a Register of goods and services for maximum brand protection and find the right Nice classes
- We carry the Trademark application taking into account all Formalities through
- We support with Opposition proceedings and Deletion procedure against or by third parties
- We carry our law firm as your Representative in the trademark register on. This shows at first glance that a Prodi is at your side
- We enforce your rights from the registered trademark by way of Warning, preliminary injunction or Lawsuit through
The perfect trademark application
- Word mark or word/figurative mark?
- Preliminary consideration: The strong trademark in the infringement process
- What does the trademark office examine? Which trademarks are registered?
- Finding the right Nice classes
- Trademark search
- DE trademark, EU trademark or IR trademark?
- What does the trademark application cost?
- Opposition proceedings and cancellation proceedings
- Use of the trademark to preserve rights
- How long does it take to register a trademark?
- How long is a trademark registration valid?
Overview: What is a brand and what brands are there?
In the legal sense, the term "trademark" refers to a registered trademarkthat distinguishes a company's products or services from those of others. Brands serve to signal identity, quality and origin ("Origin function") and build trust with consumers.
A trademark can appear in various forms, including Words, numbers, logos, slogans, colors, shapes, sounds or a combination of these elements.
- The trademark grants its owner exclusive rights: these rights enable the trademark owner to prohibit others from using identical or similar signs for similar products or services.
- Trademark protection is territorially limited and must be registered separately in each country.
The trademark application in detail
#1 Word mark or word/figurative mark?
- Word marks are trademarks that consist exclusively of letters, numbers and special characters. They have no further graphic design.
- Word/figurative marks consist of letters, numbers and special characters and have a graphic design. Typical word/figurative marks are logos. The curved Coca-Cola lettering and the BMW turbine are typical examples.
- Pure Figurative marks only have a graphic design and do not contain any letters, numbers or special characters. These include, for example, the Mercedes star, the Audi rings or the Apple apple.
- In addition to the aforementioned mark types, there are also 3D marks (shape marks), tracer thread marks, sound marks, hologram marks, position marks, tracer thread marks, movement marks and many other mark types.
- For associations, the aforementioned trademark forms can also be registered as certification marks or collective marks if numerous members are to use them.
However, this is only possible if the string itself is Distinctive character has. It must therefore be capable of distinguishing the products of one company from the goods and services of another company. In particular, a trademark is not distinctive if it describes or merely advertises the products it is intended to protect.
Best Practice is of course mostly the Registration of all types of trademarksif the budget allows.
#2 Preliminary consideration: the strong trademark in infringement proceedings
Before filing a trademark application, a good trademark attorney considers what potential trademark infringements look like and what value the trademark will have in the infringement proceedings.
New clients often call us and tell us that they want to register a word/figurative mark because their word mark is not registrable. In most cases, these clients have read up and realized that the word element of their trademark is descriptive and therefore not distinctive.
You often come across the following on the Internet Layman's tip, simply register a word/figurative markas these are registered with the Patent and Trademark Office would be accepted.
That is true, but it is short-sighted thinking. How does the court examine trademark infringements in the case of word/figurative marks?
In the infringement proceedings, the court will first determine that the registered trademark and the infringer's trademark are not identical because the graphic design differs. It will then examine whether Risk of confusion is available.
Risk of confusion exists if the use of a sign or trademark by third parties entails the risk that the relevant public could confuse the trademark with an existing trademark.
The assessment of the Risk of confusion depends on various factors. These are the most important criteria:
Similarity of the marks: The more similar the brands to be compared are in terms of sound, typeface or concept, the more likely it is that they are Risk of confusion.
Similarity of the goods or services: If the goods or services concerned for which the trademark is used are similar to those for which the already registered trademark is protected, there is an increased risk of Risk of confusion.
Consumer attention: The assessment of how attentive and informed the relevant public is plays a role. Particularly in the case of expensive or complex products or services, they are more attentive and therefore less susceptible to confusion.
Reputation and awareness of the existing brand: A brand that is already well-known and established has stronger protection against Risk of confusionbecause consumers are more likely to recognize them.
In the comparison of signs, however, only those sign elements are compared which Distinctive character have. And this is the crux of the matter:
In the case of an "X restaurant" and an "X snack bar", the result is that "X" and "X" are opposite each other. There is therefore a trademark infringement (because the gastronomic services behind them are very similar).
Conversely, a logo designed with the word "Auto" (for motor vehicles) and the character string "Auto" is opposed by a logo without text and the lettering "Auto", because "Auto" does not contain any text. Distinctive character for motor vehicles. The signs to be compared as a result are absolutely dissimilar.
The only exceptions are borderline cases in which the trademark is "on the brink". In our experience, the courts are a little more generous than the trade mark offices when it comes to recognizing Distinctive character.
#3 What does this test Trademark Office? Which trademarks are registered?
When registering trademarks, trademark offices only examine the so-called absolute grounds for refusal in addition to the formal requirements.
Trademark offices do not check whether older trademarks stand in the way of the trademark application (so-called relative grounds for refusal).
The main absolute grounds for refusal are:
- Missing Distinctive character: Trade marks that designate or describe the products for which they are to be protected are not distinctive. This also applies if the trademark only consists of details that describe or advertise the characteristics of the goods or services.
- Deceptive and immoral trademarks: Trade mark applications are also rarely refused because it is clear from the sign itself that it is intended to deceive the relevant public or because the sign is contrary to public morality. Recently, the trademark "HKNKRZ" was rejected as immoral.
The Trademark Office examines these criteria for each individual product or service for which the trademark is to be registered. For example, a trademark "Apple" would certainly be rejected for fruit, but not for computers and smartphones.
#4 Choosing the right Nice classes
Trademarks only ever enjoy protection for the goods and services for which they are registered.
All trademark offices in the world divide goods and services into 45 "Nice Classes" (actually: "Classes of the Nice Classification"). This classification was first created in Nice, France, in 1957 and is administered by the World Intellectual Property Organization (WIPO).
The Nice classes divide goods and services into 45 different classes, with 34 classes covering goods and 11 classes covering services. Each class represents a specific range of products or services. The classification serves to facilitate the registration and protection of trademarks by ensuring that trademark applications are clear and precise regarding the goods and services covered. Nice classes also help when searching for existing trademarks that may prevent registration.
Some examples of Nice classes are:
- Class 9: Electronic devices, software, computer hardware.
- Class 25: Clothing, shoes, headgear.
- Class 35: Advertising, sales, management.
- Class 41: Education, entertainment, sporting and cultural activities.
- Class 45: Legal services, security services, social services.
When applying for a trademark, the applicant must specify the goods or services for which the trademark is to be used and select the appropriate Nice classes. It is important to select the appropriate classes carefully, as this has an impact on the scope of protection of the trademark.
However, "advertising" in class 35 merely designates the services of an advertising agencyi.e. the design of advertising for third parties. Advertising for a specific product is already included in the application for the product itself.
#5 Trademark search: the key to a successful trademark application
We have already explained that the trademark offices do not examine a trademark application for relative grounds for refusal. However, older rights often lead to oppositions being filed against trademark applications or cancellation proceedings being initiated. It is therefore advisable to check what risks a trademark application may encounter before applying for a trademark.
Relative obstacles to protection are overriding trademark and other third-party rights that prevent the legal validity of an applied for or registered trademark. They are regulated for the Federal Republic of Germany in §§ 9-12 MarkenG.
Relative grounds for refusal are primarily older registered trademarks, but also non-registered, famous trademarks, company names, business designations and company logos, naming rights, the right to one's own image, copyrights, variety denominations, geographical indications as well as designs, utility models and patents.
One ordinary Trademark search therefore includes at least the search in the German trademark register of the DPMAin the European trademark register of the EUIPOin the WIPO trademark register and in the commercial register. In addition, the relevant search engines, the register of plant variety rights, the register of protected indications of source, the German and European design registers and the relevant patent registers can also be consulted.
It is not enough to search for identical brands. Rather Risk of confusion between trade marks even if there is a certain distance between the signs but the goods or services are identical or if identical signs meet similar goods and services. It becomes particularly tricky when similar signs meet similar products or different types of signs meet, for example an older company name against a younger trademark.
Similar are signs if they are phonetically (phonetic), visually or figuratively similar. There are other types of similarity, such as ideational or conceptual similarity, but these hardly play a role in practice.
#6 DE trademark, EU trademark, IR trademark: Which trademark is the right one for me?
A trademark only grants protection where it is registered. For a worldwide trademark application, you therefore need almost 200 individual applications and a six-figure budget.
The German brand covers the territory of the Federal Republic of Germany. It is very inexpensive. Significant threats only arise from license plates with protection for the Federal Republic of Germany.
The European brand protects for all countries in the EU. This means that local marks in 26 other countries outside Germany can also jeopardize your trademark.
The international registration (IR trademark) is an extension of a German or European trademark application to certain individually designated countries that have joined the Madrid Agreement on the International Registration of Marks.
#7 Costs of the trademark application
If you apply for a trademark, you will have to pay at least the official fees - regardless of whether the trademark is ultimately registered or not.
The official fees for German stamps are €300 for up to three Nice classes; €100 is added for each additional Nice class.
For European brands, you pay at least €850 for a Nice class. The second Nice class costs €50, each additional class costs €150.
The costs for an IR trademark are rather opaque, because in addition to handling fees from the office of the basic application and fees from WIPO, fees are also charged by the target country, which each individual country sets itself.
We offer the unexamined application for a German trademark for € 199 (net). For the European trademark we charge € 299 (net). Both fees include a brief identity check, the creation of an ideal list of goods and services and the application process at the Trademark Office included.
The Trademark search For Germany, we usually offer searches for a further €600, for EU applications the search costs are usually €2,000. Please contact us in advance for trademark searches, as special features of your trademark can influence the price.
The price for IR brands varies greatly. Contact us for a customized offer.
#8 Opposition proceedings and deletion procedure
After the Trademark Office has registered your trademark, third parties can apply for a Opposition proceedings against the registration. After the end of the opposition period, holders of older trademarks have the right to Deletion procedure which is available to the Opposition proceedings except for slightly higher costs.
In the Opposition proceedings and cancellation proceedings, the owner of earlier rights explains the existence of their rights. The applicant for the later trademark is given the opportunity to comment and explain why there is no trademark conflict. He also has the opportunity to attack the earlier trademark in the proceedings - for example with the Objection of non-usewhich is the Decay and thus leads to the cancellation of the earlier trademark.
#9 Rights-preserving use after registration of the trademark
An obligation to use applies to trademarks. If a trademark is not used seriously for a consecutive period of five years, it can be canceled ex officio or upon request. In practice, however, trademarks are only canceled upon request.
Trademarks can remain unused for almost five years before they are subject to cancellation. Companies can therefore secure a trademark today for future ideas. This is known as a grace period.
Some companies play with this five-year period by regularly launching special editions on the market. The most famous example is probably "Twix", which is briefly called "Raider" every five years. However, we have serious concerns that this use is also "serious", so that an attack on the "Raider" brand would be likely to be successful.
Which trademark use is serious and therefore right-preserving is determined by the business activities of the respective trademark owner. For example, it may be enough for a niche company to sell ten labeled products. A global player, on the other hand, will hardly be able to rely on the fact that a single supermarket carries its product.
#10 How long does the registration process take?
The duration of the application process varies greatly. If the trademark applied for is obviously distinctive and the list of goods and services does not give rise to any objections, the trademark applicant often receives his trademark certificate two to six weeks after paying the application fees.
If an opposition is filed against the trademark application, it can take several years before the trademark is registered. Our oldest file is now five years old. But don't worry: protection after registration goes back to the date of application.
#11 How long is the trademark registration valid?
The trademark registration is valid for ten years and can be renewed as often as required for a further ten years against payment of a renewal fee.