Trade Mark Protection
What is a trade mark?
A trade mark is used to identify the goods or services of an enterprise. Signs that are suitable for distinguishing goods or services of an enterprise from those of another enterprise can be protected as trade marks. These can be, for example, words, letters, numbers, images, but also colours and sounds.
Trade mark protection arises from registration in the Register of the German Patent and Trade Mark Office (DPMA). Before registration, an application must be filed. Trade mark protection may also arise from its level of recognition acquired through use, that means by intensive use of the sign in trade or by its general reputation.
Exclusive right of use
The most important links to the trade mark application
Upon registration of the trade mark, the proprietor acquires the exclusive right to use the trade mark for the protected goods and services. Trade marks may anytime be sold and disposed of by the trade mark proprietor. The proprietor of a trade mark may also grant another person the right to use their trade mark, what is referred to as trade mark license.
The DPMA does not check whether another trade mark exists that is identical or similar to your trade mark. That is why you should conduct a search before filing a trade mark application to make sure that your selected trade mark does not infringe third party rights. Otherwise, an opposition might be lodged at the DPMA against your trade mark and, it might have to be cancelled. Your trade mark might also be challenged by a cease-and-desist order or actions brought before the civil courts.
A trade mark may be renewed indefinitely. It may have eternal life, so to speak. However, the trade mark will be cancelled if the renewal fee is not paid after a respective ten-year period.
Absolute grounds for refusal
Not all signs can be protected as trade marks. In particular, those signs are excluded from registration that simply describe the goods or services. For example, the word mark “apples” cannot be registered for the goods “fruits” or “bus tours” for the service “transport of people”. During the registration procedure, the DPMA does not check whether another trade mark already exists that is identical or similar to your trade mark. A reason why proprietors of earlier trade marks could lodge an opposition after registration. That is why you should conduct a search before filing an application to find out whether your intended trade mark might infringe earlier rights.
The DPMA examines the trade mark application for absolute grounds for refusal. If there are no absolute grounds for refusal, the trade mark can be registered. Absolute grounds for refusal are for example:
- lack of distinctiveness
- descriptive terms that must be kept freely available for general use
- obvious risk of misleading the public
- an emblem of state included in the trade mark
- offence against public policy or accepted principles of morality
Signs will not be registered, if they cannot be represented graphically, if they lack any distinctiveness or if they merely describe the goods and services concerned.
For information on the requirements for the distinctive character of word and figurative marks containing descriptive/non-differentiating words, see, inter alia, the Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words (1,5 MB).
We have compiled initial information about trade mark protection on these pages. Thera are good reasons for a national trade mark application. Our information factsheet Eight good reasons for filing a national trade mark application will tell you which.
Should you have any questions, please refer to our information leaflets or, in cases of doubt, to the Trade Mark Act. More information is available in our “Trade Marks” brochure.
Last updated: 14/12/18