Notice of objection to trademark application by the DPMA

The Registration of a trademark is an important step for companies to legally protect their products and services. However, this can lead to complaints that can delay or even prevent the process. Objection notices can be issued for various reasons and are usually due to the fact that certain legal requirements are not met. This article explains the most common reasons for objections to trade mark applications and how to respond to such objections.

Important reasons for complaints

An office action is usually issued because the sign applied for is allegedly devoid of distinctive character or because the application is formally defective. On its website, the DPMA provides extensive Examination guidelines for trademark applications ready.

Absolute grounds for refusal

Absolute grounds for refusal are reasons that generally exclude a trademark from registration. In accordance with Section 8 MarkenG, there are a number of grounds that necessarily exclude the registration of a trademark:

• Purely descriptive informationSigns containing only descriptive indications are excluded from registration. Such indications should be available to all for the description of goods or services.
• Lack of distinctivenessSigns that are not recognized as a trademark in trade cannot be registered. They do not have sufficient distinctive character.
• DeceptionTrademarks which are likely to deceive as to the nature, quality or origin of the goods or services are not registrable.
• Immoral contentTrademarks that contain immoral content are also not registered.
• Use by state or intergovernmental bodiesSigns used by governmental or intergovernmental bodies and organizations are excluded from registration.
• Official test and warranty marksTrademarks containing official test and guarantee marks may not be registered.

Incorrect Nice classes and generic terms

Another frequent reason for objections is incorrect classification of goods and services. When filing a trademark application, the categories to which the trademark protection is to extend must be indicated according to the internationally valid Nice Classification. Errors in the specification of the categories, such as the naming of a generic term that does not represent a category according to the Nice Classification, lead to objections.

Examination of the legality of the objection notice

If the examiner at the Patent and Trade Mark Office (DPMA) deems your trade mark to be ineligible for protection, you will receive a notice of objection. This decision will explain the formal deficiencies and the grounds for refusal. It is important to check the legality of this office action. A specialized law firm can help by supporting the argumentation with precedents and current case law.

If the notice of objection from the trademark office is justified, it is advisable to withdraw the application in order to prevent the refusal from being documented in the register for all time. You then have the option of seeking protection for your trademark elsewhere.

Submit a statement to the trademark office by the deadline

After receiving the notice of objection, you have a period of (usually) one month to submit a statement. This deadline should be strictly adhered to, as otherwise the office will decide on the basis of the files, which is usually to your disadvantage. In the statement, all points of objection should be refuted objectively and in detail.

What happens if my trademark has been refused by the DPMA?

If, after taking your opinion into account, the Trademark Office upholds the refusal to register, you have two options: to file a Appeal before the Federal Patent Court or the so-called Reminder to the DPMA. The latter enables a re-examination within the official channels by a higher-ranking official. If this examination is also negative, the only remaining option is to go to the Federal Patent Court. Here too, a specialized law firm such as marken medien meyen led by specialist lawyer Robert Meyen can offer support.

Prevent complaints from the outset

The best way to avoid complaints is to carefully prepare and implement the trademark application. This includes a comprehensive search for existing trademark rights and a precise formulation of the list of goods and services. A specialized law firm can help to identify and avoid common sources of error.

FAQs

What is a trademark complaint? A trademark objection exists if the trademark office determines that certain legal requirements for the registration of the trademark are not met.

What types of obstacles to protection are there? There are absolute grounds for refusal, which generally prevent registration, and relative grounds for refusal, which are based on earlier trademark rights of third parties. However, the DPMA only examines absolute grounds for refusal.

How can I respond to a notice of objection? After receiving a notice of objection, a statement should be submitted within the set deadline in order to refute the objections factually.

What happens if the trademark office maintains the application block? You can either lodge an appeal with the Federal Patent Court or arrange for a "reminder" within the official channels.

How can you avoid complaints when applying for a trademark? Careful preparation and implementation of the trademark application as well as the support of a specialized law firm can avoid common mistakes.