Questions about Trade Marks
Trade Mark Law Modernisation Act (Markenrechtsmodernisierungsgesetz), 14 January 2019:
This page is currently being revised and adapted to the changes of the Trade Mark Law Modernisation Act. The German trade mark pages have already been revised.
Here you will find a selection of frequently asked questions 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 in the section "Complying with formal requirements makes processing faster" on our website "Application".
Can I obtain protection for a company name, a logo, an advertising slogan?
Names can be protected as word marks, logos as figurative marks. A combination of word and figurative elements can be applied for as a combined word and figurative mark. As word marks may consist of several words, you can also obtain protection for an advertising slogan.
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 - by a trade mark and a registered design.
- What type/what types of IP you seek to obtain for your logo will depend 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 certain goods or services, which are produced or offered by your enterprise, that means if you wish to use the logo to clearly identify the products as originating from this specific enterprise, you should seek trade mark protection for the logo.
- The logo can be protected as a figurative mark or as a combined word/figurative mark. The DPMA will thoroughly examine your trade mark applied for. It can only be registered if there are no “absolute grounds for refusal”, pursuant to Section 8 of the Trade Mark Act (Markengesetz). That means that in order to be distinctive your logo should be fancy and not descriptive.
- The term of protection of the trade mark can be extended indefinitely.
- Protection as a registered design
- A registered design protects the appearance of a logo. The appearance is determined by lines, contours, colours, decorations, etc.
- Protection by a registered design is the right choice, particularly, if you primarily intend to apply a logo or other graphic design to the surfaces of different products, for example, t-shirts, cups or print products or to decorate or garnish packaging.
- Even if you, as the designer of the logo, have absolutely no concrete intention of use and merely wish to gain protection for your design, a registered design may be useful.
- Design protection is comparatively low-cost and the protection offered is class-independent. The maximum term of protection is 25 years.
- More information on design protection is available here.
- Scope of protection/filing strategy/search
- Since trade marks and registered designs suit different purposes of protection, the respective scope of protection may differ.
- If you have any doubt about what filing strategy is suitable for your plan to protect your newly designed 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 German Patent and Trade Mark Office (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 other characters).
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 its various representations (see picture).
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 of lettering, design of writing or colour, that means if a certain visual impression is important to them, it constitutes a combined word/figurative mark or a figurative mark.
This comprises the following variants in particular:
- combination of a sequence of letters/characters and a figurative element
- multi-line arrangement of words
- widely spaced words (expanded s p a c i n g between letters)
- words written in italic or bold
- words or individual letters in a specific font
Figurative marks are pictures, graphical elements or images (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.
If I seek to register my figurative mark (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 figurative 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 registration may enjoy protection vis-à-vis a coloured representation. On the other hand, 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.
Does the DPMA examine whether my trade mark applied for already exists??
The DPMA does not check if another trade mark already exists that is identical or similar to your trade mark. Earlier trade mark rights will only be considered after registration, during opposition proceedings, if holders of earlier rights lodge an opposition against the registration of your trade mark.
Where can I conduct searches for trade marks?
Anybody can carry out searches for applications or registrations of German national trade marks, EU trade marks or international registrations of marks with effect in Germany in the search rooms of the DPMA in Munich and Berlin as well as at patent information centres. Searches can also be conducted online, for example, in the DPMAregister , eSearch plus , Marid Monitor.
Searches for identical trade marks and complex similarity searches are also offered by commercial information brokers and professional patent search agents. It might also be useful to carry out additional searches for names in Internet search engines, telephone directories, publications on titles of works and/or other product directories.
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) and (2) Trade Mark Ordinance, a trade mark application which has been accorded a filing date must be published. The publication must 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 can the graphic representation of the trade mark be submitted?
You can file the graphic representation either on paper (sheet size A4) or submit the representation on an electronic data carrier (CD or DVD).
In case of a sound mark, you must submit both (a graphic representation on paper 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 .
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.
What fees must be paid?
The fees consist of an application fee and class fees, if any, for the indicated classes of goods or services. The application fee includes the fee for three classes of goods or services. It is 300 euros. 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 registration procedure take?
Usually, the registration procedure is completed within about three to four 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 examination is subject to a special fee. Then, your application will be given preferential treatment. If the trade mark is eligible for protection, it will be registered within a very short time (sometimes after only a few working days), but as a rule six months after filing at the latest. If you intend to register your trade mark also internationally, for example, apply for international registration of a mark, accelerated processing might be of interest to you.
Do I need a lawyer?
As a rule, applicants themselves can apply for IP rights. It is at the applicant's discretion to decide whether to seek the help of a patent attorney or lawyer.
Anybody who has neither a residence nor a principal place of business nor an establishment in Germany must appoint a patent attorney or lawyer in Germany to represent them. The representative may also be a national of a member state of the European Union or of another state which is a contracting party to the Agreement on the European Economic Area.
How long is the IP right valid?
Trade mark protection becomes effective upon the registration of a sign in the register. The term of protection starts on the filing date and initially lasts ten years. It can be renewed by further ten-year periods, by payment of the renewal fee. You will get a written confirmation of renewal of the trade mark after receipt of payment.
Is the registration of a trade mark always valid for ten years?
If an opposition is lodged successfully against the trade mark after registration, or if a request for cancellation is filed and granted, the trade mark will be cancelled. Legal actions brought before civil courts may also result in the cancellation of the trade mark.
Furthermore, the trade mark will also be cancelled before the expiry of ten years if the trade mark proprietor surrenders the trade mark. To surrender the trade mark, the proprietor must make a corresponding declaration vis-à-vis the German Patent and Trade Mark Office.
Has the DPMA received payment of the renewal fee for my trade mark and has the payment been processed?
For trade marks which are still in force the next due date is displayed in DPMAregister/Trade marks, in the line "Date of expiry of term of protection" of the master data list.
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 the next due date - if admissible - will be indicated in the corresponding line.
Since 1 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 information leaflet Information Concerning Costs, Fees and Expenses. General information on fee payments to the DPMA is available here.
Registration of domain names and Internet domain as a trade mark?
The DPMA does not register domain names. In preparation of registering a domain name, it may 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 publicly 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 for domain registration. Not every domain name will meet the requirements applying to trade mark protection. 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.
What is the meaning of the ® and TM or SM symbols?
The ® symbol (for "registered") is an information to third parties 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 and understood in the US jurisdiction also as reference to a non-registered trade mark or a trade mark not eligible for protection.
How do I protect the title of a journal or book?
Under certain 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.
A trade mark proprietor cannot prevent anybody from using, for example, their own name or address. Nor can the trade mark proprietor 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. In case of doubt, it is advisable to consult a lawyer experienced in competition law. 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?
Please call our Customer Care and Services (+49 089 2195-1000) - or send us an e-mail to firstname.lastname@example.org.
Last updated: 19/02/19