European Patent Attorneys · Mandataires agréés près l'Office européen des brevets
European Trademark & Design Attorneys · Mandataires en Marques, Dessins & Modèles Communautaires

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.

Trademarks provide protection for specific goods or services. They may be word-only marks, for instance, in which case a combination of letters will generally be involved that is protected in isolation from a specific orthography or graphic representation. The letters may constitute an existing word, a slogan or even an imaginary term. Trademarks may also be figurative, in which case a graphic design is protected. Word elements may also be combined with figurative elements (word/figurative mark). Trademarks may furthermore serve to protect three-dimensional shapes of goods or their packaging, colours and colour combinations, as well as other distinctive sensory identifiers such as smells or melodies.

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 and/or must be explained in words.

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. A trademark watch facility can also be set up for proprietary trademarks as this enables timely discovery of whether third parties have applied for protection for identical or similar trademarks.

In trademark law, there is no such thing as a right of prior use. Even if an unregistered designation has been in use for many years, such use must be abandoned if an application for registration of such trademark 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.

Trademarks are registered for a period of 10 years and may be renewed for the same period as often as desired. They grant their holders the right to prohibit third parties from using identical or similar marks for identical or similar goods. They 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.

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 more extensive protection.

Trademark issues also arise again and again 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 foreign trademarks in search-engine keyword advertising.

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 ist 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).

We will be only too happy to provide you with detailed advice on these topics.