1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Germany. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Any 搒ign?that can be reproduced graphically and is capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, certain three-dimensional shapes, colors, sounds, and smells, is registrable.
4. Can a trademark be registered for retail and like services?
Retail and like services are not generally registrable with the German Trademark Office, but will be accepted in relation to certain goods, if the description of the services is sufficiently detailed.
5. How are domain names protected?
No specific legislation is currently in force for the protection of domains names. However, domain names used actively in trade with customers in Germany can be protected as business names even without a trademark registration. The owner of a trademark registration may enjoin others from using its trademark as a domain name, if the corresponding website specifically aims at German customers. Registration of a German country code domain with DENIC, the German Domain Registrar, only protects against registration of an identical German country code domain by others.
6. Should a trademark be searched before filing?
Yes. In Germany, there is no official search as to prior marks and, therefore, a prefiling search by the applicant is recommended to establish whether valid rights in a mark can be secured. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
Foreigners need a professional representative. An applicant may file either via a home trademark attorney or by directly contacting a German trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark is represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered.
9. Is local registration the only option, or are there international alternatives?
A German application only has effect in Germany. International and Community registrations are also available. The Madrid Protocol is in force in Germany (see the entries for the Madrid Agreement and Protocol and the Community Trade Mark).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application. Extra class fees have to be paid for more than three classes.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a German application, the filing date (priority) of the home application can be claimed as the filing date in Germany. Similarly, the priority of a first application in a home country belonging to the World Trade Organization can be claimed during six months following the application date. An International Registration can be based upon a German trademark application or registration (see the entry for the Madrid Agreement and Protocol)and the seniority of a German registration can be claimed for a Community Trademark (see the entry for the Community Trademark).
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date or, in case an opposition was filed, within five years of the termination of the opposition. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after the five-year term will revalidate registration, provided that in the interim no third party has filed for, registered, or used an identical or similar mark or has started an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
The use of a slightly different variation of the applicant抯 trademark is acknowledged as a valid use if the distinctive character of the mark remains unchanged. This applies even when the variation is a registered mark. Careful consideration and consultation with a German trademark attorney is recommended.
14. Is there any advantage to using a trademark before filing an application?
Yes. If the applicant抯 mark has acquired secondary meaning by extensive use. Marks that are not sufficiently distinctive to be registrable can acquire the necessary distinctiveness through use. Depending on the degree of renown, the mark may be protected even without registration. The prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies a higher cost than that of a registration.
15. For an application to be valid, are there any particular requirements that must be met?
Yes. If the application is not filed in the name of a German company, a German professional representative or a professional representative practicing in the EU must be appointed, and an address for service in Germany must be provided if a professional representative in the EU is appointed.
16. What information is first published about an application/ registration and when is it published?
Once a trademark application is accepted, it is entered into the register and published in the German Trade Mark Journal for opposition purposes.
17. What kind of examination (if any) will a new application undergo?
There is no official search. The application is examined ex officio to determine if it complies with the rules to be observed (absolute grounds) such as distinctiveness and compliance with public order. The application will not be refused ex officio due to the existence of prior conflicting marks (with the exception of notorious marks).
18. What response to official objections is required?
Official actions must be answered within a given period. Depending on the kind of objection, the applicant may be asked to consent to amendments of the specification of goods/services, to submit documents, or to provide evidence showing that the mark has acquired distinctiveness through use in Germany.
19. How long is the registration process?
If the application does not encounter a material objection, the registration process takes approximately 6 to 12 months.
20. What rights does an application confer?
An application cannot be officially cited against a later application, but can be used in opposition proceedings against a subsequent conflicting application.
21. What is the legal effect of a registration?
The registrant can prevent others from using the same or similar marks in relation to the same or similar goods/services, where it is likely that confusion would arise. The registration can be a basis for a claim, in either ordinary or preliminary proceedings, for trademark infringement. The registrant can obtain damages based upon loss suffered as a result of infringement, normally calculated by analogy to the royalties a licensee would normally pay, and can further request the destruction or removal of infringing marks or the destruction of the goods. Imports of infringing goods can be stopped by seizure by the customs authorities.
22. Can an application be opposed or cancelled by third parties?
Yes. Opposition may be filed within three months following publication of the registration, based on conflicting, prior registered marks or previously filed applications including Community Trade Marks and international registrations. Prior use of a mark is not a basis for opposition, nor is the allegation that the opposed mark is inherently unregistrable.
23. Can an application or registration be assigned?
Yes. Applications and registrations may be assigned for all or some of the goods/services covered.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
There is no legal requirement for recordation and even a nonregistered owner can enforce trademark rights, if ownership can be proven. However, for a number of reasons, changes of ownership should be promptly recorded.
26. Can an application or registration be licensed?
Yes. A license can be exclusive or nonexclusive, with or without limit or term, for all or some of the registered goods/services, or for all or a part of Germany. Compliance with European Community competition law should be observed if a license agreement is likely to affect trade between European Union Member States. The trademark registration may be enforced against licensees if the licensed trademark is used in breach of certain provisions of the license agreement.
27. Does a license have to be recorded?
No.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Germany, including the former East Germany.
29. How long does a registration last?
The term of registration is ten years from the day following filing, and is renewable for ten-year periods.
30. What is required to renew a registration?
Payment of the renewal fee is the only compulsory requirement and filing a renewal application is recommended.
31. Is it necessary to indicate a trademark registration on goods or services?
Marking is optional. Although ? 揺ingetragenene Marke,?揝chutzmarke,?揗arke Ges. Gesch.,?or some other abbreviations have no immediate legal effect, marking can inform others of the registered status of the mark.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes. The web address is www.dpma.de. |
