Attorney trademark law

Before going to the trademark office - brand development, checking of trademark capability, absolute and/or relative protection impediments

Those who do not handle queries on registering, monitoring, carrying out and defending national as well as international trademarks on a daily basis will quickly learn that even trademark research and trademark capability assessments for single marks is an especially time-consuming and complex procedure. But nothing is worse than choosing a trademark, getting used to it, and then only to find that it cannot be registered or is blocked due to older trademark rights. It is often the case that valuable resources are poured in and costs generated for activities that could have been avoided had a lawyer been brought in at an early stage.

It should also be borne in mind that the DPMA (German Patent and Trademark Office) alone currently handles about 793,000 trademark entries each year, from the classic wordmarks and image marks through to new trademark types such as audio or hologram marks. Any one of these trademarks could represent a potential entry impediment for creating a new trademark.

Advice from a lawyer regarding client support for registering trademarks in German, European and international trademark registries should be sought out well in advance of the actual registration process. This is the only method of recognising any issues at an early stage, clearing any entry impediments ahead of time and supporting the clients in the actual “brand development”. If legal assistance is called upon at a later juncture, usually then when a logo is being registered that has already been registered in the past, experience shows that many clients (who did not get guidance on brand creation and development) go away disappointed because they have worked on a trademark (often at great expense and time) that was doomed to fail.

Main function of a trademark

The main function of a trademark is to guarantee the identity of the origin of the goods or services for the end consumer by making these goods or services distinguishable from goods or services with a different origin. A trademark therefore always stands for the goods and/or services of a specific person. When it comes to trademark registration, the goods and services directory, which determines for which goods and services the trademark should be registered, is very important. Poorly kept directories are also the most frequent reason for registration complaints at the Trademark Office. A correctly compiled goods and services directory is therefore an important pre-requisite for a speedy registration procedure and its compilation should be accorded the time it deserves.

The trademark applicant should also describe the applied-for trademark during the trademark registration. This does not pose a problem for image and wordmarks. Describing the trademark can cause significant difficulties for “new” types of trademarks, however, such as audio marks, which stem from the determination requirement and the requirement for graphical presentability from Section 8 of the Trademark Act.

Types of trademarks

The Trademark Act defines the symbol valid for trademark protection in Section 3 para. 1 of the Trademark Act. It states here that all symbols can be trademarked that are suitable for distinguishing one company's goods and services from another. There are also a large number of non-legally defined appearance types for trademarks besides the legal typology, whose conceptual compilation in dealing with trademark rights is very important.

Associated trademarks

“Intel Inside” – we all know this advertising slogan (protected by a trademark) that is emblazoned upon many computers from different manufacturers. The latter don’t use this slogan to guarantee the identity of the origin of the trademarked goods (here the computer) for the end consumer, but rather to let the end consumer know that about the materials (chipset) used in the product (computer) and its manufacturer (Intel). The computer manufacturer's trademark is therefore “associated” with that of the chipset producer.

Umbrella trademark

A so-called umbrella trademark is when different company services are offered under a single trademark, in order to create cost savings, for example. Well-known examples of this can be found in retail (e.g. IKEA, NIVEA, KINDER). When registering umbrella trademarks, the class list wording is especially important to argue which activities should be developed under this umbrella in the future.

Event or occurrence trademarks

An event or occurrence trademark seeks to ensure than (large) events of a sporting or cultural nature have a wide-ranging professional marketing by having its own trademark. Well-known example: “FIFA World Cup 2006”. This represents a considerable trademark problem and application challenges.

Guarantee trademarks

According to the legal definition on trademark and origin detail protection in Swiss federal law (Article 21 Swiss Trademark Protection Act), the guarantee trademark is “a symbol that is used by various companies under the trademark owner’s supervision and serves to guarantee the quality, geographical origin, manufacturing type and other common features of goods or service from these companies”.

Combination trademarks

A combination trademark is where a trademark is made up of several symbols from different trademark types. The most well-known and (probably) the most frequently used combination trademark used in Germany is the word/image mark, which is formed both from a word as well as from image components. Registering a word/image mark can often make sense if there is a risk of registering just a wordmark would fail because it is not distinguishable enough or does not describe the content enough.

Notoriety trademarks

Trademark protection can also exist in the German or European trademark registry if a symbol has become well known in accordance with Article 6 of the Paris Convention on the Protection of Commercial Property (see also Section 4 No. 3 Trademark Act). Examples of these types of “global trademarks”: Apple, Google, Coca-Cola.

Commodity trademarks

A commodity trademark gives a commodity, i.e. a certain (physical) product, a distinctive name.

Service trademarks

Service trademarks are there to distinguish the services of the trademark owner from those of another company. The services trademark therefore described the services (such as those of a lawyer, doctor, and software house, etc., for example) and helps the owner to differentiate themselves from other service providers on the market.

Trademark registration

During the registration procedure, the Trademark Office assess whether an absolute registration impediment exists. This includes:

  • Lacks every form of distinction for the goods or services
  • Descriptive trademarks
  • Generic names
  • Risk of misleading
  • Breach of public order or morality
  • Emblems, test marks, coat of arms
  • Breach of other rules in the public interest
  • Mala fide trademark registration

The registration of a trademark can also be removed by means of a conflict process (upon request!), if relative registration impediments exist. This is the case

  • if the applied-for trademark is identical to another applied-for or registered trademark with greater seniority and the goods and services for which they have been registered are identical to those goods and services applied for or registered for the trademark with greater seniority,
  • if, due to their identity or similarity with an applied-for or registered trademark with greater seniority and the identity or similarity of the goods and services covered by the two trademarks creates the risk of confusion for the public, including the risk that the trademarks might be connected with one another intellectually,

or

  • if the trademark is identical to an applied-for or registered trademark with greater seniority or is similar to it and was registered for goods and services that are not similar to them, for which the trademark with greater seniority is applied-for or registered if the trademark with greater seniority is a trademark that is recognisable domestically and the use of the registered trademark would exploit or impede the distinguishability or value of the known trademark without a valid reason in an unfair manner.

Although these relative protection impediments do not take effect until after the registration of the trademark and its publication in the journal because they are not checked by the Trademark office, the existence of any relative protections impediments should be observed when the trademark is registered.

Property rights from the trademark

If the registration trademark has become definitive, it grants the owner the exclusive right to use the trademark (Article 14 Trademark Act). In 1979, the German Federal Constitution Court (then still the Brand Name Act) established that “trademarks worthy of protection and correctly registered and maintained” also enjoy property protection as stated in Article 14 para. 1 clause 1 of the GG (German constitutional law).

The assignment of registration trademarks to the constitutionally and in European law protected property rights leads to comprehensive marketability of the registered registration trademark. It can also be transferred inter vivo and be part of inheritance law.

Besides the transfer of rights by contractual agreement via the trademark or death, both the German and European trademark laws have rules governing trademark transfers as part of company sales. In this respect, the trademark law sets out the refutable presumption that trademarks that belong to a business or to part of a business in case of doubt are acquired by the transfer or the transition of the business or part thereof to which the trademark belongs.

Ultimately, the transfer is also just a part of the trademark (that is only based on a part of the goods and services) both according to the stipulations of the Trademark Act as well as the provisions of the CTM (Community Trade Mark Regulation).

The right established by national registration, use or notoriety of a trademark can extend to all or some of the goods or services for which the trademark is protected and be the subject of exclusive or non-exclusive licenses. Brand licensing allows the trademark holder to commercially exploit its trademark without disposing of trademark law completely. Via the trademark license, the licensee is authorised by the owner of the trademark to use it in the course of trade in accordance with the conditions and subject to the restrictions that are set out in the license agreement.

The brand can be given as security or be the subject of rights in rem regardless of the company. In this context, the rights in rem can, at the request of one of the parties, be entered in the register, if they are assigned to the Patent Office. In accordance with German law, the pledge pursuant to Section 1273 German Civil Code, the granting of a usufruct pursuant to Section 1085 German Civil Code, but also the assignment for security come into consideration in this context anyway.

Trademark rights as asset components can ultimately be subject to measures of enforcement (Article 29, paragraph 1 No. 2 of the Trademark Act). Which measures the enforcement takes is based on the content of the title to be enforced.

Exclusive rights and their enforcement – conflict, warning, lawsuit

The trademark conveys its holder the exclusive right to use the trademark. It is therefore prohibited for third parties – without the consent of the trademark/symbol owner – to take advantage of the trademark or the business name in the scope stated in detail there.

The exclusive rights can either be asserted in the trademark proceedings (conflict proceedings) or by lawsuit (deletion or injunction suit) before the exclusively responsible regional courts.

The conflict proceedings join on the registration of the newer trademark. It is only initiated and carried out upon request. Those entitled to contest are the owners of (German and EU community) registered trademarks with greater seniority, (German, EU community and IR) brands, notoriously well-known trademarks, trademark agents, trademarks acquired by use, business names as well as work titles. The conflict is to be filed within a period of three months after the date of publication of the registration of the trademark. Therefore, a permanent monitoring of the trademark register (trademark watch) for trademark owners is also highly recommended. The subject of the conflict procedure is solely the assessment of the question as to whether relative protection impediments exist that preclude the registration of the trademark.