Trademark Protection

Trademark laws add to the success of commercial attractiveness of a product/service.

A new product or service often needs time to become commercially successful. It might take a few years before a wide range of customer embrace and recognise the product frequently. For consumers a strong trademark guides them swiftly back to the product/service they initially sought out.

It is easy to remember and recognise. Repeat business is likely.

Advertising promotes a specific trademark. Logos, slogans, chimes are created so the public readily identifies the product/service. McDonald's Golden Archer logo is the most recognised symbol of any fast food outlet worldwide. Even in countries with high level of poverty and illiteracy.

Trademark registration protection ensures that your logo, slogan, chime, jingle or aroma is exclusively yours and that third parties have no access to your business and its success.

On the other hand of course, you have to ensure your trademark does not offend, interfere or hurt any existing business. Main source of investigation is obviously the internet. A domain name functions in the same way. Extensive research needs to be undertaken to avoid any possibility of overlap. This is indispensable to avoid any negative outcomes. I research and evaluate the results and findings and present and discuss them with you. In case of occurring conflicts, I advise on plausible alternative always with the best possible solution in mind.

A trade mark can comprise signs, in particular words, names, letters, numbers, colours, a phrase, sound, smell, logo, shape, picture, 3 D design , aspects of packaging, colours and colour arrangements groupings or any combination of these. A trade mark is a unique way of identifying a product or service to distinguish it from its competitors.

A Trade Mark can be a word, letter, number, symbol, shape, logo, design, scent or phrase which a trader or service provider uses to distinguish their goods or services within the marketplace.

Trademarks are classed into words, pictures, combination of word and picture, 3-D-trademarks, contour less colour signs, as well as sound and scent trademarks.

In existence are national trademarks, European Union trademarks and International registrations all depending on operational areas.

The national (German) trade mark applications or the European equivalent must be filed with the German patent and Trademark authority situated in Munich, or else at the department of domestic ip services in Alicante, Spain. There are two ways to achieve trade mark protection. Either individual applications can be lodged directly with each country or, an application can be made through the Madrid Protocol where a single international application can be filed in any number of the member countries. Applications for international trade marks using the Madrid Protocol must be based on an existing domestic trade mark application or registration.

When registered for Germany only, trademark protection is not guaranteed elsewhere. However when registered on a European level as described above; the trademark protection is valid for all EU member countries. Furthermore, The International registration is based on the domestic listing. This registration is guaranteed because of the Madrid protocol and its worldwide members and any members that signed on after the protocol has taken effect.

International Trade Marks

If you export your goods or services internationally or are planning to do any form of business overseas, you should consider registering your brand as a Trade Mark.

It is customary that overseas businesses register their brands as Trade Marks in Germany, so it makes sense that German businesses follow suit by protecting their Trade Marks internationally.

I am experienced in filing applications via the Madrid Protocol. The Protocol is an international treaty allowing a Trade Mark owner to register a Trade Mark in any country which has signed the treaty using an "international application". Over sixty countries have become "Contracting Parties" to the Protocol.

I can also provide you with strategic advice on protecting your brand in overseas jurisdictions. A word brand is a certain word term, which contains both abstract and concrete concepts. Distinctiveness in the sense § 8 Abs 2 NR 1 MarkenG is the concrete suitability of a brand which is used as a distinction means for goods or services of a business in relation to other existing businesses to be understood and recognised on a regular basis. The smallest distinctiveness is sufficient (prevailing case law/ jurisdiction, see. BGH GRUR 1995, 408, 409 - PROTECH; BGH GRUR 1999, 1089, 1091 - YES; BGH GRUR 1999, 1093, 1094 - FOR YOU; BGH GRUR 2002, 816, 817 - BONUSES II). A word brand possesses however no distinctiveness, if a commonly known word can be assigned to describe the content of the meaning for the goods or services in question and is a word within the German language or a well-known foreign language word that is commonly used and understood widely., (see. BGH a.a.O.).

A picture sign or commonly known as logo is an abstract and concrete trademark with strong distinctiveness legally registered with the German Patent and Trademark registration board.

Distinctiveness of § 8 sec. 2 no. 1 MarkenG is according to prevailing case law in the Federal law court the concrete suitability and adequacy of a commonly known distinction means for that in speech of standing or to be interpreted services of a business vis-à-vis such of business other (cf. BGH, Beschl v. 5.12.2002 - I ZB 19/00, GRUR 2003, 342 f.s = WRP 2003, 519 - Winnetou, m.w.N.). Because only the lack of each distinction power establishes an entry hindrance, a generous standard is to be based on, i.e. each, yet so slight distinction sufficed, to overcome protection barrier. The Federal courts’ criteria test takes into account the symbol itself and if it only reflects the core of the produce on offer then the core of that is not sufficient enough to constitute an effective picture / logo trademark. The sign simply existing as a geometric form or simple commercial graphic (strokes, points or circles), § 8 Abs. 2 Nr. 1 MarkenG. sec. Distinction power is actively missing (cf. BGH, Beschl v. 5.11.1998 - I ZB 12/96, GRUR 1999, 495 = WRP 1999, 526 - labels; Beschl v. 26.10.2000 - I ZB 3/98, GRUR 2001, 239 f.s = WRP 2001, 31 - toothpaste cord). As far as the elements of a picture sign represent only and solely the commonly known typical features or simple decorative formation for goods on hand which the general public is accustomed itself to through frequent use. The signs describing content lacks the concrete suitability of a trademark picture brand or logo. (cf. BGH GRUR 1999, 495 - labels; BGH, Beschl v. 8.12.1999 - I ZB 25/97, GRUR 2000, 502, 503 = WRP 2000, 520 - St. Pauli Girl; Beschl v. 16.11.2000 - I ZB 36/98, GRUR 2001, 734, 735 = WRP 2001, 690 - jeans pants pocket). However, when the picture sign has additional attributes, characters, and properties that extend beyond the products core typical look, the distinction power cannot be denied (BGH GRUR 2001, 239, 240 - toothpaste cord).

A word and picture mark is the combination of a word and a picture component, whereby it concerns an on-going combination of elements of text and diagram. Contrary to the word mark word and picture marks can be legally protected as a word component word of a picture mark by means of word a picture mark, which are not accessible to the trademark protection due to the lack in distinctiveness. The trademark protection of a word / picture mark extends however always to the entire word and picture component.

A 3-D-Mark has an in-built strong protection because of its significant shape. Three-dimensional shapes, designs and characteristics are however excluded from registration, in so far as when the product design in itself constitutes the overall value. The reason for a very close interpretation of the registration exclusions stems from the consideration that three-dimensional shapes and designs attain a suitable protection by registering a design patent instead. However design patents - different to marks – can not randomly be extended, often exist the interest to occur the temporal stipulation of a time limit of the patent right as for the model/the shaping a protection is attained over a three-dimensional mark.

Contour less colours are monopolised colours not shapes of colours. An abstract colour carries a concrete and unique distinctiveness which enables the business to differentiate itself. The intention is to recognise its goods / services on offer from its competition / competitions.

Contour less colour trade marks help consumers to recognise the origin or source of the goods or services being offered. Having a Trade Mark allows consumers to identify with your goods and services. A Trade Mark can also become a signifier of the quality of the goods and services on offer.

Such distinctive colour can generally be registered with the German Patent and Trademark authority as mentioned before. (Cadbury’s purple is an excellent example of a contour less trademark colour.) The colour has to be graphically illustrated. This graphic illustration is only valid if it complies with the following attributes and consistency rules: clear, unique, complete, accessible, named, on-going and objective. Trademark colours are classified by International Colour Classification systems (RAL, HKS, and PANTONE).

A Sound Mark (Trademark) can generally be registered with the German Patent and Trademark Authority in Munich as mentioned earlier. Suitable sound trademarks need to function in the same way as other trademarks. Products and services of a business need to be distinctively different from its market competitors and enhance or create such distinctiveness. The registered sound mark must be however graphically representable. Graphic representation is only given if it complies with the following attributes and consistency rules: clear, unique, complete, accessible, named, on-going and objective. Hence the sound mark has to be in usual musical notation. The application additionally has to submit an acoustic rendition of the submitted sound mark.

An Aroma / Scent / Smell (Trademark) can generally be registered with the German Patent and Trademark Authority in Munich. Suitable aroma trademarks need to function in the same way as other trademarks. Products and services of a business need to be distinctively different from its market competitors and enhance or create such distinctiveness. The registered aroma trade mark must be however graphically representable. Graphic representation is only given if it complies with the following attributes and consistency rules: clear, unique, complete, accessible, named, on-going and objective. See. Urteil des EuGH v. 12. Dezember 2002, Az. C-273/00).

An Aroma / Scent or smell needs to be graphically described. However this is not 100% accurate. Depositing an Aroma sample does not constitute Article 2. Hence an Aroma sample lacks stability and continuity.

When the aroma signifier lacks a chemical formula or a word description, the criteria for registration are not met. This combinations is not sufficient enough for graphic representation and to constitute a proper aroma sample and stipulate an appropriate registration entry.

When the aroma signifier lacks a chemical formula or a word description, the criteria for registration are not met. This combinations is not sufficient enough for graphic representation and to constitute a proper aroma sample and stipulate an appropriate registration entry.

The range of services offered is addressed to entrepreneurs in terms of § 14 German Civil Code (BGB).