Trademark registration: Questions and common errors

A trademark registration is worthwhile in any case. Because a trademark is the face of the company - and you should not lose it!

However, trademark applicants often lack the necessary experience to understand the sources of errors in trademark registration.

Unfortunately, small inadvertencies have a considerable effect on a trademark registration. Especially the financial risk is high. In the case of a trademark infringement, not only a warning and warning costs but also compensation for the damage incurred as well as the disgrace of having to inform one's customers of this. We have compiled the most common mistakes and the best tips for you in this guide.

Content

1. What is a brand?
2. Why should one register a trademark?
3. What can be registered as a trademark?
4. How to apply for a trademark?
5. What does a trademark application cost?
6. How can a lawyer help me with a trademark registration?
7. Why should you register your trademark with the help of a specialist lawyer?
8. Summary
9. Extra: Overview of avoidable errors in the trademark registration

1. What is a brand?

A trademark is a legally specially protected sign for goods or services offered by a company. In addition to trademarks, business designations or geographical indications (so-called other marks) also enjoy special protection. A trademark has a so-called origin function.

If the trademark is protected, competitors may not imitate or use it.

The trademark owner thus has a monopoly position.
By means of a trademark, products or services can be distinguished from competing companies and clearly assigned to their own company. The trademark functions as a special trust or quality feature, since it gives the customer the idea of a constant, possibly improving product quality. It is ideally suited for advertising. Successful brands often also represent a considerable asset of a company.

2. Why should one register a trademark?

Trademark protection - unlike copyright protection - does not arise by law! The trademark is therefore only protected after the application. Here the old saying applies: "first come, first served".

Of course, you are not forced to apply for a trademark. You can easily start your business without applying for a trademark. You can also advertise your products without a registered trademark.

However, you then run the risk that a competitor will snatch away your successful sign or logo before your very eyes and apply for it in his own name.

In this case, trademark law usually does not offer you protection.
It does not take into account whether you have already used the sign. In short: A registered trademark also beats previous use!

In addition, the protection of an unregistered sign is usually limited to your catchment area in terms of location. By registering a trademark, protection extends to entire countries (e.g. the territory of the Federal Republic of Germany) or the entire EU.

Only then can the trademark owner prevent imitation and use by competitors and initiate promising legal steps, e.g:

• Warning letter
• Claims for damages
• Right to injunctive relief
• Destruction of the goods illegally bearing the mark

3. What can be registered as a trademark?

The world of trademarks is diverse. A trademark can not only be what you see but also what you hear.

Suitable forms of representation are: one or more letters, names, logos, images, but also sounds or sound sequences.

Even only a certain color can be registered as a trademark. The easiest way to illustrate the wealth of possibilities is to use examples:

Word mark

A word mark consists of characters and numbers. It is not graphically designed:

• VW
• Boss

Figurative mark

A figurative mark is a mark which consists only of a picture or graphic. There is no text whatsoever:

• Mercedes star
• Shell’s shell
• Word/picture trademark

The word/figurative mark is a combination of lettering and graphic design element:

• Coca-Cola
• Adidas

Soundmark

These marks consist of certain tone sequences or melodies:

• Telekom – Jingle
• The roar of the Metro-Goldwyn-Mayer film lion

Shaping marks

These marks are protected for their three-dimensional design:

• Coca-Cola bottle
• Lindt Bunny

Color marks

Colour marks are colors that consist of color without contours. A combination of several colors is also possible.

• German Telekom
• ADAC

Slogan

Advertising slogans can also be protected as trademarks. A purely descriptive statement in a manner customary in advertising is not sufficient. The slogan must be understood by the consumer as a reference to a company:

• Geiz ist Geil – Saturn Media
• Ich liebe es – McDonald’s

Important: A trademark can only be registered if there is no obstacle to its protection. There are absolute and relative grounds for refusal.

Then call us now at 040 3501 6360 or send an e-mail to info@kanzlei-bennek.de.

Absolute barriers to protection

The Trademark Office examines these on its own initiative. Particularly noteworthy are:

3.1.1 Lack of distinctive character in the trademark application

The consumer must be able to spontaneously establish a concrete link between the mark and the goods or services offered. It is precisely because of the trademark that the customer should be able to distinguish the offer of the trademark user from that of the competitor.

3.1.2 Exclusively descriptive indications have no distinctive character

Exclusively descriptive indications or common words lack distinctiveness. For example, a textile manufacturer cannot have the word "shirt" protected or an automobile company cannot have the word "car" protected.

However, the field for which the trademark is to be registered plays a major role.

For example, "apple" is not suitable for the sale of fruit. Because it is only descriptive in this respect.

The situation is different, however, in the case of computers, for example. Someone already had the idea and is even quite successful with it: "Apple"! Exclusively descriptive indications have no distinctive character.

3.1.3 Applicant must define range of goods or services for trademark

The areas in which the mark is sought are the so-called Nice classes. The classes divide types of goods or services in a list into specific categories.

The trademark applicant must decide for which products or services he wants to use his trademark. He should, therefore, consider from the outset exactly how far the protection of his own trademark should extend.

The list of goods and services of a trademark can no longer be extended! When filing your trademark application you should therefore also keep future business developments in mind (Think Big!).

On the other hand, you should also not select too many goods or services, since the number of goods and services increases with the number of possible competitors.

In addition, trademarks are subject to an obligation to use, i.e. registered trademarks can also lose their protection if they are not used in whole or for certain parts.

If one takes a look at the Nice Classification (e.g. at the German Patent and Trademark Office) one thing becomes clear. At first glance, the register is not clear.

Moreover, the classes often overlap. Therefore, one should rely on the experience of a specialist IP lawyer.

3.1.4 Obvious risk of misleading the applicant for a trademark

Signs must not be liable to mislead as to the nature, quality or geographical origin of the goods or services. For example, if a beer bears the name "Pilsner" it must come from Pilsen.

• Descriptive indications to be kept free for general use
• Official coats of arms and flags
• Offenses against public policy or morality

3.2 Relative barriers to protection

Relative grounds for refusal of protection are not examined by the Trademark Office. The trademark applicant bears full responsibility!

You will receive relative grounds for refusal if the trademark to be applied for is identical or confusingly similar to a previously registered trademark.

However, it depends on the registration in the Nice classes. Even if the mark is identical, confusion can be practically excluded. The designation "Bounty" may, therefore, bear a chocolate bar and a kitchen roll.

However: If an already existing trademark has acquired a certain reputation, someone else may not simply use it for another class without further ado (protection of reputation). For example, "Coca-Cola" cannot be used as a trademark for a shower gel.

It is precisely these relative barriers to protection that are treacherous. Often one is caught unprepared by the warning of an infringed trademark owner and warnings are an expensive matter.

It is therefore essential to conduct an identity and similarity search BEFORE filing a trademark application.

However, your own search is prone to errors: the freely accessible trademark databases are unfortunately unreliable.

For example, they do not include a search for company names in the commercial register. Furthermore, they are only suitable for searching for identical terms. However, the greatest potential for conflict lies precisely in the similarity to other trademark names.

The distinctive character is the decisive factor here. A specialist lawyer has the right feeling for this. In addition, he has access to professional databases and can conduct comprehensive research. To be on the safe side, the protectability of the sign should be examined by a lawyer before the trademark application is filed.

4. How to apply for a trademark

It is also possible to use software with a "key certificate". Trademark applications by e-mail are not possible, but by fax are.

The application can be made by a private person, but also by a company or organization. The trademark must be presented in detail. An additional description may be required.

It is indispensable to draw up a list of goods and services. The scope of property rights depends on it. However, the categories of goods and services cannot be arbitrarily determined "as a precautionary measure".

There is, in fact, a so-called compulsory use. Thus, the trademark must be put to genuine use by its owner in the specified categories.

The DPMA examines whether there are absolute grounds for refusal, such as lack of distinctiveness or risk of misleading use.

However, the Office does not examine whether the trademark already exists and has been protected. This is the responsibility of each applicant!
The application procedure usually takes between four and eight months. The applicant, therefore, needs some patience. After all, the protection of the trademark applied for already begins with the filing date provided that the application can be granted.

5. What does a trademark application cost?

The costs of a trademark application depend on the scope of protection of the trademark and the number of classes. Sometimes the basic fee already includes some classes (DE trademark), sometimes an additional fee is charged from the second class onwards (EU trademark).

In order for the money to be invested wisely, a trademark application should be supported by a specialist lawyer for industrial property rights.

5.1. The application for a German trademark at the German Patent and Trade Mark Office (DPMA)

The basic fee for the application for a German trademark is 300€ and covers three classes. It is important that the basic fee is not reduced. Not even if the trademark is applied for in less than the three classes provided.

If the application is filed electronically, the basic fee is reduced to 290€. This basic fee is the same for all types of trademarks. An additional class costs 100€. Against payment of a surcharge of 200€, it is possible to request an accelerated filing of the trademark.

5.2 The filing of an EU trademark application with the European Union Intellectual Property Office (EUIPO)

Until 2016, EUIPO was still called the Office for Harmonization in the Internal Market (OHIM). If you want to sell your products or services in other EU countries besides Germany, you should consider applying for a Union trademark (EU trademark).

This trademark registration then has effect for the entire European Union. The basic fee is 850€. However, only one class is included in it. The fee for the second class of goods and services is 50€. The fee for the third class and above is 150€ per class.

5.3 Application for an international trademark (IR trademark) at the World Intellectual Property Organization (WIPO)

If you already have a basic trademark, this trademark right can be registered internationally. Currently there are about 100 members in the Madrid trademark system, e.g. Japan, India, USA, Switzerland.

There is no world trademark. The fees cannot be predicted in a general way here, because in addition to the basic fee there is an individual office fee for each country. The basic fee is at least 653 Swiss francs.

5.4 Costs of trademark renewal

If a German trademark or a Union trademark is registered, it enjoys protection for ten years. After that it must be renewed, which is possible as often as desired.

The renewal fee for a German trademark is 750€ for up to three classes. From the 4th class on, it is 260€ per additional class. The basic fee for the electronic renewal of a Union trademark is 850€.

The fee for the second class of goods and services is 50€ and the renewal fee from the third class on is 150€.

5.5 Attention to fraudulent requests for payment

Shortly after registration of the trademark, applicants very often receive misleading letters from dubious companies.

Offered are e.g. publication or registration of protective rights in unofficial registers - of course with costs!

Many of these letters have an official appearance or give the impression of official fee notices. However, they do not originate from the DPMA. As a rule, the Trade Mark Office only requests payment of the fee for the trademark application.

Freshly registered trademark owners should look carefully and under no circumstances should they send money unseen. If you are not sure about a letter, it is worth asking your lawyer.

Then call us now at 040 3501 6360 or write an e-mail to info@kanzlei-bennek.de.

6. How can a lawyer help me with the trademark application?

After reading this article it is clear that the registration of a sign is tricky. Many things seem contradictory. You need experience, tact and a good overview. It also makes sense to create a trademark strategy at the time of application.

For the legal "all-round carefree package" a trademark applicant should contact a specialist lawyer at an early stage. This lawyer can, among other things:

• Advice on which form of trademark is suitable and which countries come into consideration
• Assess the distinctiveness of the mark applied for
• Draw up a suitable list of goods and services
• Conduct a professional identity and similarity search and assess similarities to other trademarks

7. Why should you register your trademark with the help of a specialist lawyer?

Registering your own trademark sounds so easy in theory. In practice, however, you will encounter some stumbling blocks on the way to your own trademark. Here you can read about the most common sources of error when registering a trademark.

7.1. You can save the money for a specialist lawyer for industrial property rights and register the trademark on your own

Of course you can also register a trademark yourself. As a "newcomer" to trademark registration, you simply lack the experience to keep an eye on all potential sources of error. A small faux pas is usually not only annoying when applying for a trademark, but also involves a high cost risk.

Expensive warnings threaten if you infringe an already existing trademark. Sometimes all investments have been in vain and unplanned expenses will come your way.

The best way to protect yourself against warnings is to consult a specialist lawyer for industrial property rights from the very beginning. Moreover, this investment pays off in the end in any case.

A specialist lawyer:

• Researches with legal certainty whether there are older identical and in particular similar trademarks
• Creates a tailor-made list of goods and services
• Examines whether it is appropriate to apply for a word / figurative mark instead of a word mark
• Assesses whether a trademark has already gained traffic recognition
• Detects fraudulent payment requests from dubious providers

7.2 Searching the Internet for identical or similar trademarks is not sufficient

One of the most common mistakes is that trademark applicants do not or do not carefully check whether there are already trademarks of a third party. They are threatened with an infringement of the rights of these third party trademark providers.

An infringement is always possible if the trademark to be applied for is identical or similar to an already registered trademark. Even if it is used for identical or similar goods/services.

Whether the other trademark was unknowingly infringed is irrelevant for the consequences. And they have it in them financially.

If the trademark owner instructs a lawyer to issue a warning, legal fees are incurred.
These must be paid by the person who has been warned. Fees of 1500€ are not unusual.

In addition, the trademark infringer should sign a cease-and-desist declaration. This declaration is associated with a contractual penalty in case of a renewed trademark infringement.

Last but not least, not only the financial but also the personal effort to build up the trademark was in vain.

No matter how conscientiously a trademark applicant researches - a lawyer for industrial property rights is simply a professional when it comes to trademark research.

He has access to the decisive databases for which a fee is charged and can also search the market for similar terms.

7.3 A trademark infringement cannot be circumvented by filing an identical or similar trademark in another Nice class

For a trademark infringement, the decisive factor is always in which Nice class the earlier trademark is registered. The resourceful trademark applicant may now think: "Then I will simply register my trademark in another class".

However, an infringement of trademark rights cannot be avoided that easily. The classes often overlap. This cannot be seen at first glance with the unclear class list.

There are also very well-known trademarks. Their entry in another class would always result in an infringement of trademark rights (protection of reputation).

An experienced attorney can judge whether an application in another class is reasonable for a trademark.

7.4 It is not sufficient to indicate the class headings in the list of goods and services

Trade mark applicants often do not deal with the list of goods and services conscientiously enough.

For one thing, it is too imprecise to use only the generic terms of the Nice classes. Only if the corresponding goods and service designations of the respective class are listed, the intended trademark protection can arise.

On the other hand, it is not worthwhile to apply for the trademark for all possible products or services. A lot does not always help a lot. This is because the trademark must be put to genuine use by the owner in the specified categories (compulsory use).

Unfortunately, small mistakes in the preparation of the specification of services have a great effect. It is not possible to extend the list of goods and services after the application has been filed!

An inadvertence can therefore result in a new trademark application - including all the costs involved. A lawyer will help you to draw up a suitable list of goods and services.

7.5 A trademark is not automatically secure after the expiry of the opposition period

After publication of a newly registered trademark, owners of earlier trademarks may file an opposition against the registration.

Grounds for opposition are likelihood of confusion, protection of identity and protection of reputation. The period for opposition is three months.

Once the deadline has expired, the trademark applicant feels safe.

Unfortunately, he rejoices too soon. It is correct that no further opposition proceedings before the trademark office are possible.

But: A third party can still claim a collision with his earlier trademark at a later date. This can be done by means of a warning letter with a cease-and-desist declaration.

It is again clear how important it is to conduct an identity and similarity search before filing an application!

7.6 If a word mark is refused, filing a word / figurative mark instead is not always useful

If the selected brand name is only descriptive of the product or is a common term, the Trademark Office will refuse registration as a word mark.

The refusal can be circumvented by applying for a word mark or figurative mark instead of a pure word mark. But the protection is also limited by this "trick".

The word element alone is not automatically protected in isolation from the overall mark. It is not and does not remain distinctive.

Furthermore, inconspicuous graphic designs are not sufficient to turn a word mark into a word/figurative mark.

Simply marking the term in colour or embedding it in a simple geometric form would be an idea. Unfortunately, it is not enough to give a mark distinctive character.

Whether the graphic design element would at all meet the requirements of the Trademark Office can be assessed by a specialist lawyer for industrial property rights.

7.7 The use of a trademark does not replace the application for registration

It is correct that there is no obligation to apply for a trademark. Anyone can simply offer his products or services.

However, anyone who does not register a trademark runs the risk that a third party will register the same trademark.

Please note that this is still possible even after several years.

A trademark does not automatically obtain protection just because it has been used for a certain period of time. It is also irrelevant whether you were the first to use the trademark. The only thing that counts is the registration.

7.8. Even the use of the company name as a trademark does not replace the trademark application

Many entrepreneurs work under their company name without registering it as a trademark. Here, too, the following applies: simply using the company name does not simply turn it into a trademark.

Nevertheless, trademark protection through use is not completely impossible. If the sign is very well known, trademark protection can also be obtained without filing a trademark application. However, the requirements for this are very high.

The trademark must have achieved recognition by the public.

This means that a not inconsiderable part of the targeted public associates the trademark for certain goods or services with a certain company as an indication of origin.

The trademark owner must prove this. The proof is not only associated with high costs, but also difficult to provide.

In addition, the so-called use mark must be capable of being a trademark on its own, i.e. it must have distinctive character.

A specialist solicitor for industrial property rights can assess whether a reputation is possible in the individual case.

7.9. A company logo is not already sufficiently protected as a design

A company logo is not per se protected by copyright or design law. This is only the case if it has the necessary creative value. Company logos often lack this; the artistic performance is not sufficient.

Even if copyright or design protection applies to the company logo, the entrepreneur is not on the safe side. An unregistered design is only protected for three years.

Moreover, this protection only applies to signs that are identical. If one wants to prevent similar trademarks from being used, this is only possible by filing a trademark application.

7.10. The corresponding domain to the trademark is not secured

Brand applicants have given a lot of thought to their brand. Once the dream brand has finally been found, they naturally want to use it for their web presence at the same time. It is annoying when the domain is no longer free and you notice this too late.

If it is for sale, it sometimes has to be paid for expensively. To be on the safe side, you can therefore secure various domains in advance during the discovery phase and then make your decision in peace. This saves a few drops of bitterness.

8. Summary

• Trademark protection does not arise by law
• Only with a trademark application does the owner have a monopoly position
• Only with a monopoly position are successful legal steps against imitation or illegal use possible
• A trademark can only be registered if it has distinctive character
• The Trademark Office examines distinctiveness itself
• The Office does not examine whether there is a likelihood of confusion between trademarks
• It is the likelihood of confusion that has the greatest potential for dispute
• In the event of an infringement of trademark rights, there is the threat of costly warnings and possibly even legal action
• The scope of protection of a trademark depends on the entry in a list of goods and services (Nice Classes)
• The "precautionary" registration in many Nice classes is not worthwhile. This is because the trademark must be used in the respective class (compulsory use)
• A trademark application costs at least 300€
• If the trademark office rejects the application, the fees paid will not be refunded

9. Extra: Overview of avoidable errors in the trademark application

• In particular, the generally accessible databases are not sufficient for a similarity search
• The infringement of an earlier mark cannot be circumvented simply by registering it in another Nice class
• The list of goods and services must not be too general
• The mark must be used in the categories of goods and services indicated in the list of goods and services
• The list of goods and services cannot be subsequently extended
• After the expiry of the opposition period, my trademark is not fully protected. A warning by a third party is possible at any time
• If my wordmark is refused, the application for a word / figurative mark instead is not always appropriate
• By the pure use of my trademark, it is not protected
• My company logo is not automatically protected by use as a trademark
• After registration of the trademark, trademark applicants often receive dubious requests for payment which do not originate from the DPMA

Picture source: Picture 1: © Olivier26 / panthermedia.net,Picture 2: © relif / fotolia.com