Trademarks

 

Trademarks

We are happy to provide the information below in German as well, just send us an email to contact@hernandez-ip.com.

 

General

A trademark can be used to protect the name of a company, a product or a service. Of course, a logo can also be protected. In addition, advertising slogans and, under certain conditions, the shape or presentation of a product can be protected. Colors and color combinations can also be protected under certain conditions.

Provided the renewal fees are paid, a trademark can be protected for any length of time.

Brand forms

In addition to the classic word marks and figurative marks, other trademark forms are available. These include in particular the so-called sound marks, with which a sequence of sounds, a jingle and/or a slogan can be protected. Three-dimensional product designs and the presentation of a product can also be protected, provided that the design is not exclusively conditioned by the nature of the goods, the design is not exclusively technical, or the design does not exclusively confer substantial value on the goods.

 

Apply for a trademark

Before filing a trademark application, at least a search for identical trademarks should be carried out. A search for similar trademarks is time-consuming and correspondingly associated with higher costs. The offices do not check whether an identical or similar trademark has already been applied for. The owner of an already registered identical or similar trademark can prohibit the use of a later filed trademark as well as file an opposition against the registration of the later filed trademark.

Registration requirements

For a trademark to be registered, it must be graphically representable. The trademark must not be descriptive of the goods and services claimed, nor must it need to be kept free. The shape of a three-dimensional mark must not be exclusively conditioned by the nature of the goods, must not be exclusively technical, or must not exclusively confer substantial value on the goods.

Trademark application in Germany or in the European Union

A trademark application for Germany can be filed at the German Patent and Trademark Office (DPMA). A trademark application for all countries of the European Union can be filed as a so-called Union trademark at the European Union Intellectual Property Office (EUIPO) for all countries of the European Union.

An exhibition priority may be claimed for a German trademark application if the trademark applied for was exhibited at an exhibition specified by the Federal Ministry of Justice in the Federal Law Gazette for the goods and services claimed within 6 months prior to the filing date.

Subsequent applications in other countries or international trademark application

Within 6 months from the filing date, a trademark application can be filed in almost any other country in the world, claiming the seniority (priority) of the German application or the EU trademark application. If the trademark was filed at the DPMA or EUIPO, an international trademark application under the Madrid Agreement (MMA) or the Protocol to the Madrid Agreement (PMMA) can be filed for almost all countries within 6 months from the filing date, claiming the priority of the German application or the EU trademark application.

 

Deleting a mark

If a German trademark needs to be kept free or is descriptive, this trademark can be cancelled upon request in cancellation proceedings before the German Patent and Trademark Office (DPMA). A German trademark may also be cancelled if it is conditional on the nature of the goods themselves, is necessary to achieve a technical effect, or adds substantial value to the goods. In addition, if the German trademark has not been substantially used for an uninterrupted period of five years prior to the request for cancellation, it can be cancelled in the comparatively inexpensive cancellation procedure before the DPMA. A German trademark can also be cancelled if the applicant filed the trademark application in bad faith.

Before a court, a German trademark can be declared invalid if it has not been used for an uninterrupted period of five years prior to the filing of the lawsuit or if it is confusable with an earlier trademark.

An EU trademark can be declared invalid in invalidity proceedings at the European Union Intellectual Property Office (EUIPO) if it needs to be kept free, is descriptive or confusable with another trademark, has been applied for in bad faith or has not been used in a legally preserved manner within the last five years.

 

Advantages of a trademark application

The registration of a trademark establishes in a public register that a term, slogan, logo, etc. is protected, since when the protection has occurred and who can claim the trademark. This results in the following advantages in practice:

  • Competitors cannot derive any rights from the use of the same term, slogan or logo after the filing date of the trademark application, provided that the trademark is registered by the Office and used by the trademark owner in a manner that preserves the rights.
  • After registration of the trademark, competitors may be prohibited from using a term, slogan or logo if there is identity or likelihood of confusion.
  • A registered trademark also clarifies who has the right to use the trademark.
  • A particular advantage of a trademark application is that, in the case of a registered trademark, only genuine use must be proven in the event of trademark disputes if the five-year grace period for use has already expired.
  • A registered trademark also has the advantage that it can be used to file an opposition against third-party trademarks applied for later.
  • A registered trademark can also secure the right to a domain.

 

Opposition against the registration of a trademark

Within three months after registration of a trademark, opposition may be filed against the registration. The opposition against the registration of a German trademark can essentially be based on an applied for or registered German trademark, an EU trademark or a so-called use trademark. A use mark is a mark that is not registered and has more than local reputation through use. An opposition against the registration of an EU trademark can be based on an applied for or registered EU trademark, a registered trademark of a member state of the European Union or on a use trademark.

 

Use

Both the German trademark and the EU trademark have a grace period of 5 years. During this period, the trademark does not have to be used.

If the trademark has been entered in the register for more than 5 years, genuine use must be proven when enforcing the trademark against competitors. However, if the trademark has not been used for a period longer than 5 years, it can usually no longer be enforced or it can be cancelled at the request of a third party.

It is important to keep the following records to prove serious use:

  • Products, packaging, photos of products and/or photos of packaging on which the brand is depicted
  • Photographs of objects and buildings with which or in which the service is performed or offered and on which the trademark is depicted
  • Printouts of the web page on which the mark is included
  • Offers and invoices with the brand
  • Brochures and catalogs with the brand
  • Promotional materials with the brand
  • Sales generated with the brand

 

Trademark infringement

If a younger trademark or term for the respective products or services is confusable with a trademark, the potential infringer can be ordered in infringement proceedings to, among other things, cease and desist, pay damages, provide information about the distribution and destroy the trademark-infringing products.

Defense against alleged trademark infringement

One can defend oneself against an alleged trademark infringement with the arguments that the trademark is not confusable for the goods and services in question, that the trademark has not been used in a way that preserves rights, or that the trademark is descriptive or needs to be kept free. Furthermore, the so-called exhaustion can be claimed if the product has been put on the market in the territory of the European Union with the consent of the trademark owner.

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