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.
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 German national trade marks, Community trade marks or international registrations of marks with effect in Germany, applied for or registered, 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, CTM-Online 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.
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 of Costs, Fees and Expenses (A9510.1) contains a detailed schedule of fees.
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.
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 Markengesetz). 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.
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 info@dpma.de.
The enquiry units do not give legal advice. Legal advice is exclusively provided by patent attorneys and attorneys-at-law.
© 2012 Deutsches Patent- und Markenamt | Last updated 03/02/12
