Trademark law and domain law

In Germany, the German Patent and Trademark Office (DPMA) is responsible for industrial property rights. It charges relatively moderate fees. A tax advisor can provide information on the deductibility of the fees.

Well over 780,000 trademarks are registered with the DPMA. New ones are added every day.

The protection of the name and the distinction from other companies that use the same or a similar designation can only be guaranteed by a registered trademark.

The first step in a trademark application is trademark research. This is because the applicant for a trademark should ensure that their trademark does not already exist in an identical or similar form.

A basic distinction is made between word marks and word/figurative marks. A word mark must have a specific suitability for the goods or services of a company covered by the trademark compared to those of other companies in order to be considered a distinguishing feature. This distinctive character is lacking in purely descriptive words.

From a legal point of view, the word mark is the most important and strongest trademark. The scope of protection is the most extensive and covers every spelling and every font. A word mark can be used to prohibit third parties from using identical or similar names for the registered goods or services.

If a particular visual effect is desired, such as a specific arrangement of the font, spelling, or color, the trademark must be registered as a word/figurative mark. The word/figurative mark is also always considered if there is a so-called absolute ground for refusal against the representation as a word mark for reasons of the need to keep it free. For example, a trademark that would have to be kept free for competition due to its general descriptive designation can be combined with a logo or a special character through clever graphic design and then registered as a word/figurative mark.

As a general rule, the trademark must not be reproducible with a standard typewriter, otherwise it will be considered a word mark. However, a graphic accompanying the text is not mandatory as long as the font itself has graphic features. The word/figurative mark has weaker protection. This protection only extends to the trademark as a whole, i.e., to both components (word and image).

Trademark protection requires assignment to a specific list of goods and services. The international classification of goods and services for the registration of trademarks is called the “Nice Classification.” It contains a total of 45 classes (34 for goods, 11 for services), all of which are standardized.

For many companies, protecting their trademark abroad is also essential.

There are several ways to extend trademark protection to other countries:

• to selected countries
• to the entire European Union (EU)
• or worldwide

Once the trademark to be registered has been determined, you must be prepared for a trademark registration process at the DPMA that can take several months. The trademark will only be registered if there are no so-called absolute grounds for refusal.

These would include, for example:

• lack of distinctiveness
• descriptive information that must be kept free for general use
• obvious risk of a misleading effect
• violation of public policy or public order
• national emblem being contained in the trademark

If the requirements for trademark registration are met and the fees have been paid to the DPMA, the trademark will be registered. After the trademark has been registered, the goods and services claimed must also be used in business transactions in order to maintain the right to the trademark.

The registration of the trademark is a registered right. In certain cases, this can be revoked. In particular, if the new registered trademark is similar to another, older trademark or application, an opposition may be filed or vice versa. In other words, if your own trademark right is infringed by a new registered trademark, you can file an opposition against it.

In practice, successful trademark registrations also increase the value of a company.

The DPMA summarizes the core and intrinsic value of a trademark as follows:

• it sets standards
• creates trust
• protects ideas
• secures values
• grants rights

Trademarks can also be bought and sold at any time. It is also conceivable to grant others the right to use a trademark by issuing a license. The right established by the trademark registration can also be pledged.

Apart from the rights of the trademark owner to dispose of the trademark in legal transactions, the owner is also entitled to various rights in the event of unauthorized use of the trademark. These can range from mere injunctive relief to claims for damages. In addition, there may be claims for information about the origin and distribution channel of unlawfully marked items, as well as a claim for destruction.

In the case of import or export of unlawfully labeled goods, seizure by the customs authorities may even be requested.

The simple registration and use of an Internet domain can also be helpful and relevant from a legal perspective. However, unlike trademark registration, there are differences in the development of property rights that require specific advice.