Questions about Trade Marks
Here you will find a selection of frequently asked questions and answers on trade mark protection
How can you contribute to the speedy processing of your trade mark application?
If you pay your fees on time and comply with important formal requirements, you essentially contribute to speed up processing of your trade mark application. Please also note our information "Complying with formal requirements makes processing faster" in the section Application on our website
Can I obtain protection for a company name, a "logo", an advertising slogan?
Depending on how they are designed, names and logos can be protected as word marks, figurative marks or combined word/figurative marks. As word marks may comprise several words, advertising slogans may, as a rule, also be eligible for protection.
I have designed a "logo". How can I protect it? Can I also apply for a registered design to protect the "logo"?
- Trade mark and design protection are possible.
- A logo can be protected - also simultaneously - as trade mark and as a registered design.
- What type/what types of IP you seek to obtain for your logo depends to a large extent on the intended purpose of use.
- Protection as a trade mark
- If you intend to use the logo, above all, to mark goods and/or services, which are offered by your enterprise, you should seek trade mark protection for the logo.
- The DPMA will examine whether your trade mark applied for is eligible for protection; it will be registered if there are no absolute grounds for refusal pursuant to Section 8 of the Trade Mark Act (Markengesetz). An unusual, fanciful logo can avoid grounds for refusal.
- The term of protection of the trade mark can be extended indefinitely.
- Protection as a registered design
- A registered design protects the two- or three-dimensional appearance of a product. The appearance results in particular from the lines, the contours, the colours, the shape, the surface texture, the materials and the decorations of the product.
- Your design must be new at the time of filing the application, i.e. before the filing date no identical design or design whose features differ only in immaterial details must have been made available to the public.
- In addition, your design must have individual character. Hence, the overall impression it produces must differ from the overall impression produced by any design which has been made available to the public.
- In order to determine whether your design is new and has individual character, you must not only consider the designs already registered in the Design Register. Rather, you must take into account in your comparison also those unregistered designs which have been published, exhibited or otherwise placed on the market in such a way that they could have become known to the circles specialised in the product sector concerned.
- Finally, you must also ensure that your design does not conflict with the rights of others, in particular third-party copyrights.
- However, when the application for the design is filed, the DPMA does not examine novelty and individual character of your design or whether it conflicts with the rights of others. Therefore, unlike a registered trade mark, every registered design is an unexamined IP right.
- Novelty and individual character of your design or the rights of others will be examined only if a third party files an application for the determination or declaration of invalidity against your registered design or asserts invalidity of your design on the basis of a counterclaim in infringement proceedings that you have brought against the third party. If appropriate, your design will then be deleted in the course of invalidity proceedings or infringement proceedings when invalidity is asserted by a counterclaim for the determination or declaration of invalidity.
- Design protection is comparatively low-cost and ,unlike the trade mark, provides protection independent of the class of goods or services.
- The initial term of protection is 5 years. It may be extended by further five-year periods to a maximum period of protection of 25 years.
- More information on design protection is available here.
- Subject matter of protection/filing strategy/search
- Since trade marks and registered designs suit different purposes of protection, the respective subject matter of protection and scope of protection may differ.
- If you have any doubt about what filing strategy is suitable to protect your logo, you should consult a lawyer with experience in trade mark law and design law.
- Tips on how to search for logos are available in the respective sections, Trade Mark Search and Design Search.
- Trade mark and design protection are possible.
What is the difference between a word mark and a combined word/figurative mark or figurative mark? What characters can be used in a word mark?
Word marks are trade marks that consist of words, letters, numbers or other characters that are part of the standard set of characters used by the DPMA (cf. Sec. 7 Trade Mark Ordinance [Markenverordnung]).
"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 PDF file Word mark: used characters [in German]). They are not graphically designed and not coloured.
The subject matter of protection of a word mark only comprises the chosen character string, includes its representation in all common fonts, in upper case and lower case letters.
Example: The registration "Hans" also provides protection for its various representations (see picture).
Hans in different representations: upper case letters, lower case letters, bold, italic
If a trade mark contains other elements, than the characters admissible for a word mark, it is treated as a combined word/figurative mark or a figurative mark.
If the applicant requests registration of a string of characters with a special font design, colour, arrangement of lettering or combined with graphic elements, that means if a certain visual impression is important to him, it is a combined word/figurative mark.
This comprises the following variants in particular:
- words and/or characters in a specific font (e.g. handwriting, italic or bold)
- combination of letters/characters and graphic elements
- multi-line arrangement
- or widely spaced words (expanded s p a c i n g between letters)
Figurative marks are two-dimensional designs, such as images and graphic elements without components of word marks, for example, letters. Non-Latin characters, too, such as Chinese characters are figurative marks. Figurative marks can be applied for in colour or black and white.
It is not possible to conclude from the registration of a combined word/figurative mark that the string of characters contained therein would be eligible for protection as a word mark. A character string which is not eligible for protection may become protectable by a special graphic design. However, simple or common graphic designs or ornamentation are, as a rule, not sufficient. The more descriptive the word is for a product, the more stringent the requirements to be met by the figurative design. However, a right to prohibit the use of a word does not arise from non-protectable word elements of a combined word/figurative mark.
If I seek to register my figurative mark (or combined word/figurative mark) in black and white, does that mean that protection will cover all colours?
Regrettably, this question cannot simply be answered "Yes" or "No". Therefore, please note the following aspects:
- The application for a trade mark in black and white leaves it open what colours the mark should appear in. Consequently, a registration in black and white is not limited to specific colours or combinations of colours.
- It depends on the individual case, whether or not it is possible to challenge a coloured trade mark on the basis of a black and white trade mark. The assessment of the scope of protection of a trade mark is complex and depends on several criteria.
- Frequently, a black and white trade mark will enjoy protection vis-à-vis a coloured trade mark. At the ssame time, the overall impression of a trade mark can be determined by special colours or combination of colours.
In case of doubt, please discuss specific questions on the rights that can be derived from a trade mark with a lawyer experienced in trade mark law matters.
Where can I conduct searches for trade marks?
You can carry out free online searches for German trade marks in DPMAregister. The database contains German national trade marks applied for, registered or refused. It is true that you can also search for EU trade marks (EM) or international registrations of marks (IR) with effect in Germany in this database, but the DPMA does not accept any liability for the correctness and completeness of these data. For a complete search on trade marks protected in Germany and the current legal status information, please use the databases of the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO).
During your search, please note that, this way, you can find trade marks with elements matching those of your planned trade mark, but that a similarity search is not or hardly possible. An opposition against the registration of your trade mark is also possible on the basis of a similar trade mark. Complex similarity searches are also offered by commercial search services.
My trade mark application has been withdrawn or refused, but it is still stored in the DPMAregister database. Is it possible to completely delete information from the database? Is it possible to display only an abbreviated version of the address of the applicant and the address for service to ensure protection of data?
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 with Section 23(1) Trade Mark Ordinance, a trade mark application which has been accorded a filing date must be published. The publication must also include 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.
How must the trade mark representation be submitted?
You can file a trade mark application electronically via DPMAdirektWeb or DPMAdirektPro. If you file your trade mark online, you can transmit the trade mark representation electronically. During the application process, upload the electronic file containing your trade mark representation.
It is also possible to file a paper-based trade mark application and thus submit the trade mark representation on paper (paper size A4). The readable types of data carriers and formats for the desired type of trade mark allowed by the DPMA can be found here: Information for Trade Mark Applicants
What fees must be paid?
The fees consist of a basic application fee and class fees, if any, for the indicated classes of goods and/or services. The basic application fee includes the fee for up to three classes of goods and/or services. It is 300 euros; 290 euros for electronic filing. A fee of 100 euros must be paid for the fourth and any further class. For detailed information on fees, please refer to the information leaflet Information Concerning Costs, Fees and Expenses.
How long does the application procedure take?
As a rule, the application procedure is completed within a few weeks/months in the case of registration of the trade mark. It may take longer if further information must be inquired. The procedure will take longer in the event that the trade mark is objected to, due to fact that it cannot be protected, and must eventually be refused.
You also have the option to file a request for accelerated examination, which is subject to a fee (200 euros): Then, the processing of your application will be given priority. If the trade mark application is in due form and the trade mark is eligible for protection, it can be registered after a few working days, but within six months after filing the application, at the latest. In any case, a decision on an accelerated application must be taken within six months of filing the application, provided that the applicant has cooperated appropriately. If you intend to register your trade mark also internationally, as international registration of a mark, the request for accelerated processing may be of particular interest to you.
Do I need a lawyer?
As a rule, you yourself can apply for a trade mark or seek the help of a lawyer.
However, applicants who have neither a residence nor a principal place of business nor an establishment in Germany – even German nationals – must appoint a patent attorney or lawyer as a domestic representative. Lawyers or patent attorneys from the European Union, the European Economic Area or Switzerland are admitted as domestic representatives provided that they are authorised to represent clients in procedures before the Patent Office.
Is the registration of a trade mark always valid for ten years?
If an opposition is lodged successfully against the trade mark after registration, the trade mark will be cancelled, possibly in part. It will also be cancelled, at the request of a third party, due to revocation or because it is declared invalid. Legal actions brought before civil courts may also result in the cancellation of the trade mark. Furthermore, the trade mark will be cancelled before the expiry of ten years if the trade mark proprietor surrenders the trade mark by making a corresponding declaration.
Has the DPMA received payment of the renewal fee for my trade mark and has the payment been processed?
If the full and correct fee amount was paid in respect of the file number, the amount is usually processed within two weeks and trade mark protection is renewed for a further period of ten years. In DPMAregister, the master data is updated by entering the new end of term of protection in the line “Date of expiry of term of protection”.
Since 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 information leaflet Information Concerning Costs, Fees and Expenses. General information on fee payments to the DPMA is available here.
What is a collective mark?
In contrast to the classical trade name that distinguishes goods and/or services of a certain enterprise from those of other enterprises (individual trade mark), a collective mark is an indication of the origin of a product from an association. It is used accordingly by the members of the association. The proprietor of the collective mark is the respective association having legal capacity.
What is a certification mark?
Certification marks indicate that the goods/services bearing the mark have certain characteristics certified by an independent body. Therefore, only a natural or legal person who is not a producer/trader of the goods or the supplier of the services may be the proprietor of the certification mark. The certified product characteristics, conditions of use of the mark as well as the testing and monitoring measures are laid down in the regulations governing use of the certification mark.
Registration of domain names and domain as a trade mark?
The DPMA itself does not register any domain names. However, in preparation of applying for a domain name, it may be useful to conduct a search for earlier trade marks. On principle, it is possible to apply for trade mark registration of a domain name (also simultaneously, if necessary). This is often recommended in order to better protect the domain name. However, the requirements for the registration as a trade mark differ from those for the registration as a domain name.
Not every domain can be protected as a trade mark. Elements such as "https://", "www.", ".de", ".com", etc. are customary descriptive elements of Internet addresses without trade mark character. Therefore, only a second level domain and/or a sub-domain capable of being protected can confer capability of being protected as a trade mark to a domain name in its entirety; therefore, as a mere indication of a topic of a website, domains such as "cabriolet.de" or "www.roadster.de" would be excluded from registration for the product "vehicles", as would be the words "cabriolet" and "roadster" themselves. It is not relevant for this assessment whether the domain is registered in the name of the trade mark applicant or a third party.
What is the meaning of the ® and TM or SM symbols?
The ® symbol (for "registered") is an information that the trade mark is protected and registered. This symbol may be added to the registered trade mark within the scope of use. The "TM" symbol for "trademark” and "SM" symbol for "service mark" are used in the US jurisdiction also as reference to trade marks used in trade even if these are not registered or not eligible for protection.
How do I protect the title of a journal or book?
Under certain tight conditions, the title of a journal or book can also be registered as a trade mark. The German book trade association has issued an information leaflet on this issue (Merkblatt für Titelschutzfragen).
In addition to trade mark searches, it is advisable to also search for existing journals, for example, in the journal database (ZDB) of the Berlin State Library or other relevant library catalogues as well as common book-selling platforms on the Internet.
I have received a cease and desist letter. What shall I do?
At first, you should check very carefully if the warning might be justified, that means if you have actually infringed the trade mark in question. Trade mark infringement may occur when someone, without the trade mark owner's consent, uses a sign in trade that is identical to a trade mark for goods or services that are identical to those for which the trade mark has been registered. The same applies if someone uses a sign that is identical with or similar to a trade mark for identical or similar goods or services, if there is a likelihood of confusion on the part of the public about the trade mark.
However, a trade mark proprietor cannot forbid anybody from using, for example, their own name or address. Nor can the trade mark proprietor forbid 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. In case of doubt, it is advisable to consult an experienced lawyer. The DPMA is not authorised to give 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.
I have received a purchase offer for a trade mark application for my name, my logo etc. - what shall I do now?
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 the DPMA, arguing that the trade mark application was filed in bad faith. For this purpose, please indicate the reference number of the trade mark application.
Do you have any further questions?
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Last updated: 8 May 2020