Trademark laws
Companies often trade for decades under a particular company name or offer goods and/or services under a particular designation without having that company name or designation protected as a trademark. The importance and necessity of such protection often becomes apparent only when another business, or even a competitor, applies for protection and may then be able to exclude others from using the designation, including the business that has used it for decades.
In such a case, not only can the reputation built up at considerable expense under the designation be put at risk; the previous user may also find itself accused of trademark infringement.
Where is a trademark registered?
A trademark can be registered relatively quickly and cost-effectively at national level with the German Patent and Trade Mark Office (DPMA), at European level with the Office for Harmonization in the Internal Market (OHIM), or internationally through the World Intellectual Property Organization (WIPO).
Which forms of trademark are possible?
Trademark protection may be sought for designations used for goods and/or services, company names, geographical indications and titles of works. Under German national law and within the jurisdiction of the DPMA, three forms of trademark are particularly relevant:
- a word alone (word mark);
- a combination of a word and a logo (word/figurative mark);
- a logo alone (figurative mark).
What should be considered in trademark law?
A business’s decision in favour of a particular trademark will generally depend, among other things, on whether the designation is its own creation, for example an invented word, and whether the business has already used a particular logo together with that designation.
A trademark is registrable only if it is capable of distinguishing the goods and/or services of one undertaking from those of another and if the designation does not have to remain available to the public for describing or identifying particular goods and/or services. Certain words cannot be monopolised for the offering of goods or services where their use is essential to functioning trade and must remain available to all businesses.
The owner of a registered trademark has the exclusive right to use that designation in the course of trade and to exclude third parties from using it. Third parties may use an identical or similar designation for identical or similar goods and/or services only with the trademark owner’s consent.
What rights does a trademark owner have?
If a third party uses the trademark without the owner’s consent and offers goods and/or services that do not originate from the trademark owner, this will generally constitute trademark infringement.
The trademark owner may then claim (i) injunctive relief, (ii) information about the infringing use, (iii) damages and (iv) reimbursement of the legal fees incurred in enforcing the rights.
Damages may be calculated using different methods. The trademark owner may seek surrender of the infringer’s profit, damages based on the profit the owner would hypothetically have earned, or a reasonable notional licence fee that a third party would have paid for lawful use of the trademark. Because an infringer may also be required to reimburse the trademark owner’s legal fees, a justified cease-and-desist letter may be pursued without a final cost burden for the trademark owner where the infringer is sufficiently solvent.
What steps are important when filing a trademark?
Before a trademark application is filed, we advise you on whether national, European Union-wide or international protection is appropriate. We can handle the complete application process, including preparation of the list of goods and/or services, and conduct searches for earlier trademarks. This is important because an earlier application or registration for the designation you favour may expose you to infringement claims yourself.
We can also assist with defending your trademark against later applications, particularly before the DPMA and OHIM, where procedural remedies are available to oppose new registrations.
In addition, we handle pre-litigation cease-and-desist matters concerning trademark infringement and, where necessary, enforce trademark rights through preliminary injunction proceedings and subsequent main proceedings against third parties.
Preliminary injunction proceedings can provide a rapid but provisional determination of an injunctive claim. In our experience, courts regularly decide such applications on the day they are filed. In main proceedings, a trademark owner can then pursue all claims against the infringer to a final determination.
Experience in trademark law matters
Because trademark proceedings frequently involve high amounts in dispute, we consider it advisable to involve an attorney experienced in this field. We have filed numerous trademark applications with the DPMA and OHIM and have defended trademarks in opposition proceedings before the DPMA and, subsequently, in appeal proceedings before the German Federal Patent Court (BPatG).
How can trademark rights be protected?
We have also obtained preliminary injunctions against trademark infringers before courts throughout Germany and enforced trademark rights in main proceedings. Conversely, we have defended clients against cease-and-desist letters alleging trademark infringement and represented alleged infringers in preliminary injunction and main proceedings.
If you intend to apply for registration of a designation, have received a cease-and-desist letter alleging trademark infringement, or own a trademark and would like a third party’s use to be reviewed, please contact us by telephone or e-mail. We will be pleased to assist you.
