Rights in distinctive signs - Trademarks
Trademarks, domain names, the titles of works (including of computer programs), company names and commercial designations are examples of rights in distinctive signs. The latter serve to identify goods, services or companies.
Forms of trademarks
- Word-only marks
- They may be word-only marks, for instance, in which case a combination of letters is generally protected independently from its graphic representation. The letters may constitute an existing word, a slogan or even an imaginary term.
- Figurative marks
- Trademarks may also be figurative, in which case a graphic design is protected.
- Combined marks
- Word elements may also be combined with figurative elements (word/figurative trademark).
- 3D marks
- Trademarks may furthermore serve to protect three-dimensional shapes of goods or their packaging.
- Colour marks
- Colours and colour combinations can also be protected as trademarks.
- Other forms of trademarks
- Other distinctive sensory identifiers can also be considered as trademarks, such as smells or melodies.
Conditions of protection
A trademark is protected for defined goods or services.
Patent- and Trademark Offices do not check whether newly registered trademarks infringe existing third-party trademarks. For this reason, it is a good idea to perform a trademark search prior to filing for registration, as it may otherwise be impossible to continue to use a trademark after several years due to prior senior rights.
The capital that has meanwhile been invested in communication of the trademark will then be lost.
Individual trademarks
Individual trademarks must be able to distinguish the goods or services of an enterprise from those of other enterprises. Trademarks must furthermore be capable of graphic representation or must be explained in words.
Collective trademarks, quality trademarks
A collective trademark or a quality trademark allows to obtain trademark protection for one of the above-mentioned forms of signs in cases where the ability to distinguish the goods and services of an enterprise form those of other enterprises is not the main objective, but the respect of certain quality criteria or the origin of a certain region.
Portfolio entertainment
A trademark watch can be set up for proprietary trademarks as this enables timely discovery of whether third parties have applied for protection for identical or similar trademarks. This allows not only to watch the market, but also to act at an early moment against activities of competitors.
Period of protection
A trademark is registered for a period of 10 years and can be renewed for the same period as often as desired.
Enforcement of trademark rights
A trademark grants its holder the right to prohibit third parties from using identical or similar marks for identical or similar goods or services.
Obligation of use
Trademarks must be used in connection with the relevant goods and/or packaging of these goods within five years of registration in order to remain valid. Significant sales must also be generated with them.
Territorial protection
German trademarks enjoy protection only in Germany.
Applications for registration of national, regional (e.g., European Union trademark (EU trademark), granting pan-EU protection) or international trademarks under the Agreement of Madrid may also be filed in order to obtain a more extensive protection.
Trademarks and internet
Trademark issues also arise often in connection with the internet. The main issues are legal ones relating to domain names that also enjoy trademark protection or, for instance, issues surrounding the permissibility of using doreign trademarks in search-engine keyword advertising.
Unregistered distinctive signs
No prior use for trademarks
In trademark law, there is no such thing as a right of prior use. Even if an unregistered sign has been in use for many years, such use must be abandoned if an application for registration of this sign is filed by a third party. It is therefore advisable to start filing for registration of a trademark well in advance of commencement of use thereof. This is the only way to achieve protection against subsequent trademark registration by a third party.
Distinctive signs protected due to their use
The rights in company names and commercial designations are acquired by use, but such use may be limited to a certain region. If the area of use is subsequently expanded, protection may possibly remain restricted to the original region.
To avoid this problem, trademark protection is advisable because trademark registration provides nationwide protection (and thus nationwide protection against conflicting commercial designations and company names, too).
A use as a trademark must be distinguished from a use as a company name or a commercial designation in order to check whether the use of a sign results in a protection.
Trademarks are distinctive signs that are used in connection with goods or services.
Company names or commercial designations refer to the activities of a certain company.
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