Names can be protected as word marks, logos as figurative marks. A combination of word and figurative elements can be filed as a combined word and figurative mark.
As word marks may consist of several words, you can have an advertising slogan protected.
Word marks are trade marks consisting of words, letters, numbers or other characters, which can be reproduced in the standard typeface and font used by the German Patent and Trade Mark Office (DPMA) (cf. Section 7 Trade Mark Ordinance).
"Arial" is the font used by the DPMA. It comprises all letters (upper case and lower case) and numbers and, in addition, also common characters such as , ;, :, +, -, &, !, ?, @, ¤ (see list of characters that can be used (in German)).
As a rule, the protection of a registered word mark comprises all forms of representation normally used, above all, upper case and lower case or all capitals/all small letters, and a variety of common fonts.
Example: The registration "Hans" also provides protection for
If the trade mark contains characters, which do not meet the above criteria, the trade mark will be treated as a combined word/figurative mark or a figurative mark.
If the applicant requests registration of a word with a special spelling, arrangement, design or colour, that means if a certain visual impression is important to him, it constitutes a combined word/figurative mark or a figurative mark.
This comprises the following types in particular:
Figurative marks are images, figurative elements or illustrations (without word elements).
Many non-Latin characters, for example, Chinese characters, must also be regarded as figurative mark.
It is not possible to conclude from the registration of a combined word/figurative mark that the sequence of letters contained therein are protectable as a "pure" word mark.
However, a word which is not eligible for protection may become protectable by adding to it a special graphic design. Simple or common graphic designs or ornamentation are usually not sufficient for this purpose. The more descriptive the word, the higher the requirements to be met by the figurative design. However, it is not possible to derive any right to prohibit the use of a word from non-protectable word elements of a combined word/figurative mark.
Regrettably, this question cannot simply be answered "Yes" or "No". Therefore, please note the following aspects:
In case of doubt, please discuss specific questions on the rights that can be derived from a trade mark with an attorney experienced in trade mark law matters.
The DPMA does not check whether your trade mark is identical with or similar to other trade marks. Earlier trade mark rights will only be considered after registration, if holders of earlier rights lodge an opposition against the registration of your trade mark.
Anybody can carry out searches for applications or registrations of German national trade marks, Community trade marks or international registrations of marks with effect in Germany in the search rooms of the DPMA in Munich (phone: +49 89 2195-2504) and Berlin (phone: +49 30 25992-230) and the Patentinformationszentren (patent information centres). You can also conduct online searches, for example in the DPMAregister, eSearch plus and ROMARIN databases.
When searching in DPMAregister, please note that you can find trade marks with features matching those of your trade mark application, but it is not possible to conduct a similarity search in DPMAregister. An opposition against your trade mark may also be filed on the basis of a similar trade mark.
Searches for identical trade marks and complex similarity searches are also offered by commercial information brokers and professional search agents. It might also be useful to carry out additional searches for identical or similar names in Internet search engines, telephone directories, publications on titles of works and/or other product directories.
No. Neither is possible for legal reasons. Pursuant to Section 33(3) Trade Mark Act and Section 65(1), No.13 and (2) Trade Mark Act in conjunction to Section 23(1) and (2) Trade Mark Ordinance, a trade mark application, which has been accorded a filing date, must be published. The publication includes the name and domicile of the applicant as well as the address of the person accepting service of communications. If the trade mark applied for is not recorded in the register, for example, because it was withdrawn or refused, the publication must also include the relevant information.
You must file two identical paper copies of the graphic representation. In addition, you may submit the representation of the trade mark on an electronic data carrier. In case of a sound mark, you must submit both (two identical paper copies of the graphic representation and the sound representation on a data carrier). More details are available in the information leaflet Information for Trade Mark Applicants and in the Trade Mark Ordinance.
The fees consist of an application fee and class fees for the indicated classes of goods or services. The application fee is EUR 300 and includes the fee for three classes of goods or services. A fee of EUR 100 applies to each class exceeding three.
Information Concerning Costs, Fees and Expenses (A9510.1) contains a detailed schedule of fees.
It may be the case that one or more additional class(es) have been identified after the preliminary classification of the list of goods and services submitted by you.
The total fee amount shown on the acknowledgement of receipt will increase by EUR 100.- for each class, where the number of classes exceeds the three classes already covered by the application fee.
An additional class will only apply if the respective word must be clearly attributed to another class not yet indicated. This only happens for words/terms contained in the official search engine for goods and services.
Information on payment regarding additional classes is available here (in German).
As a rule, the registration procedure is completed within about seven to eight months. It may take longer, above all, if we need to obtain further information from the applicant. The application will be examined faster upon request. Accelerated processing is subject to a fee. Your application will then be given preferential treatment and the trade mark will be registered within six months after filing. If you intend to apply for international registration, accelerated processing might be of interest to you.
Applicants can apply for IP rights themselves. It is at the applicant's discretion to decide whether to seek the help of a patent attorney or of an attorney at law. However, persons who do not reside in Germany must appoint an attorney in Germany or an attorney established in the European Union to act on their behalf.
Trade mark protection becomes effective upon the registration of a sign in the register. The term of protection starts on the application date and lasts 10 years. It can be renewed by further 10-year periods, by payment of the renewal fee. You will get a written confirmation of renewal when we have received the fee.
For trade marks which are still in force the next due date is displayed in DPMAregister /in the section Trade marks/ in the list of master data/ in the line "Date of expiry of term of protection".
If the full and correct fee amount has been paid in respect of the file number, the payment is usually processed within the next 35 days and - if admissible - the next due date will be indicated in the corresponding line.
Since 01 June 2011, the DPMA has stopped issuing receipts (see also Mitteilung Nr. 7/11 der Präsidentin des Deutschen Patent- und Markenamts), but you can use the updated data of your register entry as confirmation of payment.
Information on the amount of the fees payable is available on the fees page or in the leaflet Information Concerning Costs, Fees and Expenses (A9510.1). General information (in German) on fee payments to the DPMA is available here.
If an opposition is lodged successfully against the trade mark after registration, or if a request for cancellation is granted, the trade mark will be cancelled in the register.
A collective mark is a sign owned by an association whose members may use the mark for marketing identical goods or services. Only associations having legal capacity can own collective marks.
The DPMA does not register domain names. If you intend to apply for a domain name, it might be useful to conduct a trade mark search first. The DPMA does not carry out trade mark searches. On principle, you can apply for trade mark registration of an Internet domain name. This is often recommended to domain holders in order to prevent third parties from using the domain name. However, trade mark registration requirements do not correspond to the requirements applying to domain name registration. Not every domain name will meet the requirements applying to trade marks. If a trade mark contains elements such as "http://", "www.", ".de", ".com", etc., these are considered as typical components of Internet addresses that do not qualify for trade mark protection since the public will not perceive them as identifying products or services of a particular trader. A domain name can only be registered as a trade mark if the second level domain and/or sub-domains, if any, satisfy the requirements for trade mark protection (no descriptive or laudatory terms). Trade mark applications such as "cabriolet.de" or "www.roadster.de" are therefore excluded from registration for the product "vehicles", just like the words "cabriolet" and "roadster" as such (Sec. 8(2) no. 1 Trade Mark Act). It is not relevant whether the domain is registered in the name of the trade mark applicant or a third party.
You may use the ® symbol (for "registered") only when your trade mark has been registered. You are not obliged to apply this symbol to your trade mark.
The "TM" symbol (for "trademark") has its legal background in Anglo-American jurisdictions.
Under certain conditions, the title of a journal can be registered as a trade mark. The German book trade association has issued an information leaflet on this issue (Merkblatt für Titelschutzfragen).
It is advisable to search journal databases in addition to trade mark databases.
You should check very carefully if the request might be justified, that means if you might in fact have infringed the trade mark in question. Trade mark infringement may occur when someone uses a sign that is identical to a trade mark, without the trade mark owner's consent, in trade on goods or services that are identical to those for which the trade mark has been registered. The same applies when someone uses a sign that is identical with or similar to a trade mark on identical or similar goods or services, if this is likely to cause consumer confusion.
A trade mark owner cannot prevent anybody from using his own name or address, or prevent anybody from using a sign that is identical with or similar to a trade mark to describe characteristics or properties of goods or services.
Many details and legal aspects need to be considered for assessing whether a cease and desist request is justified. You should conduct a trade mark search and seek professional advice. It is advisable to consult a lawyer experienced in competition law. The DPMA is not authorised to render legal advice.
It will often be helpful to contact the sender of the cease and desist letter in order to clarify matters from the outset.
Here you can possibly plead that the trade mark has been applied for in bad faith and consequently, cannot be registered at all. Bad faith means that the trade mark application was filed for the sole purpose to impede further use by another person. In that case, you can send a copy of the purchase offer to us, arguing that the trade mark application was filed in bad faith. For this purpose, please indicate the reference number of the trade mark applied for.
Then please call us at +49 89 2195 - 3402. The enquiry unit of the German Patent and Trade Mark Office will be pleased to answer your questions about trade mark applications.
Or, simply send an e-mail to email@example.com.
The enquiry units do not give legal advice. Legal advice is exclusively provided by patent attorneys and attorneys-at-law.
© 2013 Deutsches Patent- und Markenamt | Last updated 09/12/13