Protect naming rights - your options!

Protect naming rights: Protect your original name and prevent unauthorised use by third parties by securing naming rights. The following article explains under which conditions this is possible and which rights you are entitled to.

Content

• How can I protect a name?
• How can I find out whether a name is protected?
• Which names cannot be protected?
• Protect naming rights: How much does it cost?
• What happens if I use a protected name?
• Conclusion - Securing naming rights

How can I protect a name?

In general, first names and surnames are protected under § 12 of the German Civil Code (BGB). However, the rights arising from these names are limited, as they do not compete against "higher" rights. Further legal steps are therefore recommended for comprehensive protection.

You should have your desired name protected as a word mark at the relevant trademark office. In this way, you obtain an exclusive right to the trademark. Only you can then decide who may use your name and to what extent and grant licences within this framework.

In addition to lucrative marketing of your name, this has the advantage that you are protected against imitators and the exploitation of your good reputation. As soon as third parties use your name without your consent, you are entitled to various rights of defence. For example, claims for injunctive relief, removal or damages.

To have your name protected, the following steps are necessary. A brief overview:

• Checking protectability - Can your name even be registered as a trade mark?
• Similarity search - Do similar or identical older names already exist that are registered and may prevent use because there is a risk of confusion?
• Drawing up a list of goods and services - For which of the Nice classes should your name be registered?
• Application for registration of the word mark at the relevant office and payment of an application fee
• After successful examination, an entry is made in the trade mark register
• After expiry of the opposition period, your name is protected for an initial period of 10 years.

Legal advice on many of these points is advantageous in order to secure full protection for your name and prevent problems from arising or the registration from failing. For example, it is difficult for laypersons to assess when, from a legal perspective, there is a similarity of names and thus a risk of confusion.

We are pleased to help you and support you with the registration of your name!

Attention with company names

There are some types of companies, such as GmbH or OHG, for which entry in the commercial register is mandatory. However, it is also possible to enter your company in the commercial register voluntarily. The function of the commercial register is to give business people an overview of the economic and legal circumstances.

This registration can help to strengthen the confidence of potential customers and banks in your company. However, it should be noted that the registration does not protect your company name throughout Germany like a trademark, but only in the district court district!

How can I find out whether a name is protected?

The key is the research! A name can only offer legally secure protection if it has not already been applied for and registered. It is therefore advisable to conduct a thorough trade mark search in the relevant databases and registers before applying for your name.

Which names cannot be protected?

The competent trade mark office only examines so-called absolute grounds for refusal. For your name to be protected, none of these grounds for refusal must be met:

1. The name must be devoid of distinctive character

he name must be capable of identifying goods and services of your company and distinguishing them from those of another company. This has the advantage that you can suggest to consumers a certain origin and a consistent quality. At the same time, you can build a positive image.

Example: The name "bank" is not suitable for a company that offers financial services.

2. use of descriptive indications

Your name may not describe the goods or services you offer. The reason is that certain words should be kept free for general use in the market. Otherwise, competitors would be prevented from describing and advertising their goods and services.

Example: The word "Apple" cannot be protected as a name for a type of apple. Technical products, on the other hand, can be protected.

3. danger of misleading

The name must not be deceptive or misleading.

Example: A sweet syrup cannot be described as "sour juice".

4. use of emblems

Coats of arms, flags, seals or designations of government institutions are not registrable.

5. violation of morality and public order

In addition, it is not possible to register names that have already been registered or names that are very similar to them. This is referred to as a likelihood of confusion. However, it is not the task of the competent trade mark office to check whether older identical or similar names have already been registered. This falls within your sphere of action.

Prevent disputes with owners of earlier IP rights and let us support you.

Protect naming rights :How much does it cost?

If you want to protect your name at national level, you have to apply for and register it as a trade mark at the German Trade Mark and Patent Office (DPMA) in Munich. There are three different ways to do this:

• DPMAdirektWeb online (without signature), DPMAdirektPro (with signature) or the application form by post. The fee is 300 € or 290 € for an electronic application. Three classes of goods and services are included. If you wish to apply for additional classes, the fee per class increases by €100.
• To obtain international protection, you can extend the scope of protection of your trade mark to other EU member states. To do this, you must apply online to the European Union Intellectual Property Office (EUIPO) in Alicante to register your name as an EU trade mark. The cost is €900.
• After filing, the examination and registration procedure will take several months. However, the procedure can be accelerated by paying a fee of €200. You will only incur further costs if you wish to renew the trade mark after the expiry of the protection period of 10 years.

What happens if I use a protected name?

Before you use a name for which you have not secured naming rights, it is essential to find out whether it is already protected as a trademark.

If it is, you may only use the name with the permission of the trademark owner. This is done by concluding a licensing agreement that specifies the extent to which the trademark may be used.

If you ignore this requirement and use the name without permission, the trademark owner has the following rights to take action against potential infringers:

• Within three months after registration of a new trade mark, an opposition may be filed with the competent office. The Office then examines the possible infringement and, in the best case, can cancel the newly registered trade mark on the basis of the earlier trade mark right. If the time limit has expired, an action for cancellation can be filed to have the trademark cancelled.
• In the event of a trade mark infringement, a warning letter should also be considered as an out-of-court solution. Compared to a court case, this procedure saves money and time. The potential infringer is notified of his infringing act and requested to stop it within a certain period of time. He is also asked to make a cease-and-desist declaration with a penalty clause, in which he assures to refrain from his conduct in the future.
• Through the injunction or removal claim, the infringer can be required to refrain from any actions that infringe the registered name. This requires a risk of first infringement or a risk of repetition. If an infringement has already occurred, such a risk of repetition is presumed. Otherwise, it must be proven that there is a potential risk of infringement in order to obtain preventive protection. If the trademark owner has suffered damages due to the unauthorised use of the protected name, he can claim damages. The prerequisite for this is that the infringer has acted intentionally or negligently. There are three possibilities for calculating the damages:

• Possibility 1: From a hypothetical point of view, the situation with and without injury is examined and the damage lies in the difference. For example, lost profits can be compensated.
• Possibility 2: The infringer can be required to hand over all income that he has earned through the infringement.
• Possibility 3: Through the fictitious licence fee, the trade mark owner can claim the amount that both parties would have reasonably agreed upon knowing all the circumstances.

Conclusion - Securing rights to a name

• You can protect a name by applying for and registering it as a word mark with the relevant trademark office.
• The trademark serves to identify your products and services and enables you to distinguish them from those of other companies.
• As the trademark owner, you have an exclusive right to the name, which only authorises you to use it. At the same time, you can decide who you want to exclude from using it or authorise by means of a licence.
• In addition, as a trademark owner you have claims for damages, injunctive relief or removal against potential infringers.

Picture credits: Elizabeth Crego | panthermedia.net