How to File a Trademark with the German Patent and Trademark Office (DPMA)

Introduction

As a hub of innovation and commerce, Germany offers a compelling landscape for international corporations seeking to expand their presence. Despite recent global challenges, Germany continues to maintain an excellent reputation as a key investment location. Its status as the world's third-largest exporter, along with hosting over 18,900 multinational enterprises (34% of the global total) operating within its borders, highlights the country's attractiveness for businesses looking to establish and safeguard their unique brand identities within its thriving market. Consequently, many businesses aim to grow their operations in Germany, and a crucial aspect of this expansion is to register an international trademark within Germany itself.

In this article, we explore the advantages of trademark registration in Germany and break down the key elements required for a successful registration. We discuss potential grounds for application rejection, emphasize the significance of conducting a comprehensive search, and provide insights into classifying goods and services. Finally, we offer a step-by-step guide and practical insights to assist you in effectively safeguarding your brand in the German market.

Trademark Registration Process in Germany: An Overview

A distinctive brand identity is among a company's most valuable assets and securing early ownership through trademark registration is crucial, given its vulnerability to infringement and even loss. Moreover, evidence indicates that businesses that have trademarks tend to be more efficient, achieve greater profitability, and enjoy a higher likelihood of long-term survival.

Knowing about existing intellectual property (IP) rights, especially in trademark registration, is becoming increasingly crucial. It's not just about legal compliance—it's also a key factor in fostering innovation and making informed business choices, helping businesses protect their brand, stay legally compliant, and stand out in a competitive market.

What is a Trademark?

A trademark is used to identify a company's goods and/or services of an enterprise. It can be anything that sets one business apart from another, such as words, symbols, numbers, images, colors, holograms, or even sounds. In early 2019, the Trademark Act in Germany, which governs how trademarks are protected, saw significant changes, allowing for registrations to include noise-like sound marks, multimedia marks, and even holograms. Neutral certification companies can now also protect their quality seals or test labels as certification marks.

Trademark registration in Germany grants businesses exclusive rights and legal protection for their brand identities across the country's 16 federal state for 10 years with the option to renew. It prevents others from using similar marks that may cause confusion among consumers or dilute the brand's distinctiveness. Moreover, registered trademarks enjoy legal recourse against infringement, allowing businesses to enforce their rights and defend their brand's reputation in the market. This combination of exclusive rights and legal protection underscores the importance of trademark registration as a strategic asset for businesses operating in
Germany, ensuring their brand's integrity and market competitiveness.

Submitting an application early can offer significant legal benefits due to the principle of priority in trademark law. This principle gives preference to trademarks with earlier filing dates, increasing their chances of success in case of disputes or conflicts.
 

Trademark Protection in Germany: What are my Options?

To secure trademark protection in Germany, there are two main avenues at your disposal:

European Union Trademark This provides comprehensive trademark protection across not only Germany but
all 27 countries in the EU with a single application.

Direct Registration in Germany: Alternatively, you can register your trademark directly in Germany. If you prefer a more focused approach, this is the way to go.

Each of these intellectual property systems presents unique advantages and considerations. It's crucial for applicants to carefully evaluate these factors and determine the best approach for their trademark protection needs. Given the complexities involved, seeking guidance from an experienced lawyer or patent attorney is recommended to navigate the nuances of trademark registration effectively. See the section below "Do I need to hire a lawyer"?

Who Oversees Trademark Registration in Germany?

Trademark registration in Germany is overseen by the German Patent and Trade Mark Office (Deutsches Patent und Markenamt, DPMA).  To initiate the registration process, applicants are required to submit a detailed application containing specific information and pay the corresponding fee.

Having secured trademark protection, the trademark owner gains the exclusive right to use that trademark. A registered trademark can be identified by the symbol ® (registered trademark) placed next to it. This protection initially lasts for ten years and can be renewed for another ten years upon expiry.

In 2023, there were 75,260 national applications in Germany, with 5,665 applications from abroad, with an increase of 2.7% and 10.6% from the previous year. At the last count in 2024, there were 888,713 trademarks registered and in force.
 

What are the Benefits of Trademark Registration?

1. Legal Protection: Trademark registration gives businesses exclusive rights to their mark, preventing others from using or registering the same mark without permission. This ensures brand identity, reduces market confusion, and allows legal action against unauthorized use.

2. Quality Standards: A registered trademark helps establish and maintain quality standards, building trust and loyalty among customers. The presence of the ® symbol signifies certain standards, enhancing brand reputation and leading to increased customer satisfaction.

3. Revenue Opportunities: Trademark registration opens avenues for revenue generation through licensing or outright sale of the trademark. This strategy enhances market reach, attracts partnerships, and drives revenue growth.

4. Building Trust: Consistent use of a registered trademark builds goodwill and trust with customers, who perceive registered trademarks as reliable and coming from an authorized source. This trust minimizes confusion, safeguards brand reputation, and increases sales and loyalty.

5. International Reach: Trademark registration provides international recognition and growth opportunities. Global registration ensures exclusivity across diverse markets, reduces infringement risks, and facilitates expansion into new territories, unlocking growth potentials for businesses worldwide.
    

How Can I Classify my Goods or Services?

When you register a trademark in Germany, you need to specify the goods or services it applies to. This helps define the protection it offers. The DPMA uses the Nice Classification system, which is used globally and groups goods and services into 45 categories. Each item or service listed in a trademark application is allocated to a specific class. The fee amount depends on the number of classes applied for in the trademark registration.

Some trademarks are all about images or have unique visual elements. These types of trademarks are classified under the Vienna Classification. This system makes it easier to organize and protect these kinds of trademarks.



Figure 1. Top 5 Classifications of goods and services. Source: DPMA 2024.
 

What Can I Register?

Several elements can be protected as a trademark. This includes:

• word marks

• combined word/figurative marks

• figurative marks

• three-dimensional marks

• color marks

• sound marks

• position marks

• tracer marks

• pattern marks

• motion marks

• multimedia marks

• hologram marks

When submitting a trademark application, you must decide how you want to register your trademark, whether as an individual trademark or within specific trademark categories such as certification marks and collective marks.
 

What Can't I Register?

Understanding the limitations of what cannot be registered as trademarks is crucial when submitting a trademark application in Germany to ensure compliance with legal requirements and increase the chances of successful registration.

The DPMA rigorously examines trademark applications for absolute grounds for refusal. These include:

1. Lack of Distinctive Character: Signs are not eligible for registration if they lack distinctive character, meaning they fail to distinguish the goods or services from others in the market.

2. Competitors' Use: Signs used by competitors to describe their own goods or services are not registrable as trademarks, as this would limit fair competition and hinder market accessibility.

3. Descriptive Terms: Terms that describe the goods or services too directly and should remain available for general use are not eligible for registration as trademarks.

4. Emblems of State: Trademarks that include official emblems, flags, or symbols of state or international significance are not registered to avoid any misinterpretation of affiliation with official entities.

5. Offensive or Immoral Content: Marks that go against public policy, accepted principles of morality, or contain offensive elements are rejected for registration.

6. Deceptive Practices and Bad Faith: Trademark applications that may mislead or deceive the public regarding the nature, quality, or origin of the goods or services, or those made with bad faith intentions to exploit or harm the rights of others, are rejected under trademark law.

Who Can Register?

In Germany, the right to apply for and own trademarks extends to both individuals and legal entities. This inclusivity means that not only businesses and companies, but also individual entrepreneurs, artists, and creators have the opportunity to protect their unique brands, products, and services through trademark registration. Whether you're a small business owner, a startup, a corporation, or a solo entrepreneur, you have the legal standing to safeguard your brand identity and intellectual property by registering a trademark with the appropriate authorities.

Do I Need to Hire a Lawyer for my Trademark Registration?

While applying independently is an option, engaging a local patent attorney or lawyer is required if you lack a domicile or commercial establishment in Germany. The attorney must be registered to practice in Germany and have a German address for service. The good news for individuals from the EU, EEA, or Switzerland is that their legal experts are also accepted, provided they are authorized for German Patent and Trademark work. While it may seem appealing to handle everything on your own, having legal support can offer significant advantages, especially if you're unfamiliar with Germany's trademark procedures. German patent attorneys undergo rigorous training in trademark matters, ensuring expert handling of trademark registrations.
 

Our 5-Step Guide to Trademark Registration in Germany

STEP 1: Conduct a Comprehensive Search

Conducting comprehensive trademark searches is crucial both before and after registering your trademark. This step is vital to avoid potential legal issues and challenges. It's important to note that the DPMA doesn't automatically check for similar trademarks during the application process. Therefore, trademark owners should actively monitor their trademarks post-registration for any potential infringements or challenges. Utilizing resources such as the DPMA register, EUIPO, and WIPO databases for searches is recommended to ensure thorough coverage. Additionally, monitoring public sources such as the internet, commercial registers, and product directories is advised to stay vigilant and protect your trademark effectively. Being proactive in monitoring and defending your trademark is essential to maintain its integrity and exclusivity.



Figure 2 Basic Trademark Search Tool. Source: DPMA.
 

At Nominus, we also offer an English search engine where you can explore trademark names (similarities and equivalents), classes, and status (active or non-active). Additionally, we provide a Comprehensive Trademark Study to save your time and resources, helping identify potential pitfalls before starting the registration process. With the expertise of our experienced trademark attorneys, you'll receive a professional evaluation of your trademark's chances for successful registration, boosting your confidence in the application. For thorough searches, we highly recommend consulting a trademark representative. Please refer to the section below "Do I need to hire a lawyer for my trademark registration? " section below for more details.

5 Top Search Tips

1. Conduct Deep Searches: Consider using commercial search providers that offer more complex search functionalities. Also, keep in mind that while searching in the DPMAregister, you can find trademarks with elements similar to yours, but there is no option for a direct similarity search.

2. Utilize different search Databases: Expand your search to include European Union trademarks (EM) and international registrations of marks (IR) through databases such as Nominus, eSearch plus, Madrid Monitor, TMview, and the Global Brand Database provided by EUIPO and WIPO.

3. Explore Figurative Elements: Look for figurative elements in trademarks as they are searchable and classified under the Vienna Classification system, which categorizes these elements into specific sections.

4. Internet and Directories: Don't overlook searches in public sources such as internet search engines, telephone directories, commercial registers, and product directories. These sources can help identify identical or similar signs beyond formal trademark databases.

By combining these search strategies, you can conduct comprehensive searches to identify potential conflicts and protect your trademark rights effectively.

STEP 2: Filling out the Trademark Application Form

To gain access to the legal protections offered by trademark law, your initial step is to apply for the registration of your trademark in the Register. This involves submitting an application that is compliant and comprehensive in its content. As well as providing the relevant applicant details, this means:

• Ensuring the Accuracy and completeness of application details, such as ensuring that legal entity information matches the commercial register entry.

• Including a Clear Representation (illustration) of your trademark in the application, as subsequent changes are not allowed.

• Specifying the Type of Trademark (word mark, figurative mark, sound mark, etc.) in your application.

• Clearly Specifying the Goods and/or Services associated with your trademark use, as the number of requested classes affects the application fee.

The DPMA offers three methods tailored to your needs:

1. DPMAdirektWeb: This method offers a swift online filing process equipped with a shopping cart function tailored for goods and services. The user-friendly interface guides applicants through the application steps seamlessly, providing a fast and cost-effective solution without requiring significant time or effort investment. Please note that DPMAdirektWeb is available only in German.

2. DPMAdirektPro: Opt for this option for an electronic application that necessitates a signature card. To utilize this filing method, applicants will need the complimentary specialized software, a qualified signature card, and a card reader. This approach streamlines the process while ensuring compliance and security.

3. Paper-Based Application: For those preferring traditional methods, the DPMA provides paper-based application forms specifically designed for national trademark applications. This option caters to individuals or businesses seeking a more conventional approach to trademark registration.

You also have the option to request an accelerated examination for all filing routes, which prioritizes the processing of your application. If your application meets the necessary requirements and qualifies for protection, it can be registered within a few days or up to six months after filing. A decision on an accelerated application must be made within six months of filing, given the applicant's cooperation. Note that an additional fee is required for accelerated examination.
 

Classifying Your Goods and/or Services

When listing goods and services for trademark registration, it's crucial to be precise and specific to avoid objections. General terms such as "machines" or "systems" are not sufficient and may lead to processing delays. Using the International Harmonised Database, provided via the TMclass platform, can help streamline this process. It's also important to organize goods and services into groups for each class in ascending order to prevent delays and potential refusal. Keep in mind that the amount of fees essentially depends on the number of classes you choose. Paying fees promptly and accurately is essential, as failure to do so can result in withdrawal of the application. Detailed information on fees and classification is available on the DPMA's fee page.
 

STEP 3: Evaluation

Your route to trademark registration begins with an evaluation by the DPMA. They ensure all necessary data, such as applicant details, the trademark itself, and the list of goods and services, are complete. However, the actual processing of the trademark application only commences after the full application fee is paid.
During this phase, the DPMA assesses whether your trademark may face exclusion based on absolute grounds for refusal. For instance, descriptive terms directly related to the goods or services may be grounds for refusal.
 

STEP 4: Publication and Registration

Once the application has passed the evaluation phase and meets legal requirements without facing grounds for refusal, the DPMA proceeds with registering the trademark. This registration is then published in the Markenblatt, and the trademark owner receives a certificate of registration.

It's important to note that the DPMA does not check for conflicts with earlier trademarks or third-party rights during the application process. This means that the trademark might face challenges later, leading to opposition or invalidity proceedings. Additionally, trademark protection typically lasts for ten years, with options for renewal to extend the protection. Renewal fees are due in advance, and failure to pay them may result in the lapse of the trademark right.
 

STEP 5: Opposition

Following the publication of newly registered trademark, earlier trademark owners have the right to oppose the registration if there's a risk of confusion with their own mark, whether it's a German, European Union, or international registration. The notice of opposition must be filed within three months of publication, accompanied by a fee that covers one opposing sign; additional fees apply for multiple opposing signs or multiple oppositions.
There are several grounds for opposition including rights acquired earlier, enlarged protection of well-known trademarks, and protected geographical indications or designations of origin, with specific conditions based on filing dates. Fees and specific timelines apply for each type of proceeding, ensuring fair and transparent processes for trademark registration and protection.



Figure 4.  Breakdown of Trademark Registration Process in Germany. Source: DPMA 2021.

How Long Does my Protection Last?

By registering your trademark in the German Trademark Register you secure protection across the entire territory of the Federal Republic of Germany, starting from the filing date and typically ending on the same day ten years later.

Unlike other intellectual property rights, trademark protection can be indefinitely renewed in ten-year intervals upon payment of the required fees. This flexibility allows you to renew protection selectively for specific goods and services, potentially saving on renewal costs by abandoning classes that are no longer needed.
 

How to Keep and Monitor your Registration

Using your trademark regularly is essential to keep it valid. If you don't use it for more than five years, it could be canceled upon request by others or become harder to protect in legal disputes. With thousands of new trademarks registered each year, staying vigilant and monitoring for potential conflicts is essential. As the owner of an earlier trademark, you can oppose the registration of newer ones to protect your intellectual property.
Searching for trademarks isn't just important for applicants. Even after registration, as a trademark owner, you should regularly conduct searches for new identical or similar signs. This ongoing effort helps protect their trademark and allows them to effectively defend it when needed.
 

Conclusion

Registering your trademark in Germany is a vital step in safeguarding your brand identity and securing legal protections within the dynamic German market. With Germany's robust economy, innovation-friendly environment, and significant international presence, businesses must take care to implement a clear trademark strategy to gain a competitive edge and ensure brand integrity.

By understanding the trademark registration process, the benefits of trademark protection, and the ongoing responsibilities to maintain and monitor your trademark, you can navigate the complexities of intellectual property law effectively. Whether you opt for European Union trademark registration or direct registration in Germany, each approach offers distinct advantages tailored to your business needs and expansion strategies.
Remember, trademarks are not just symbols; they represent the essence of your business and its reputation in the market. Utilize the resources and guidance available from legal experts, such as trademark attorneys, to ensure a smooth registration process and ongoing compliance with trademark regulations. Once you have your Trademark is certified, be sure to conduct proactive monitoring to protect the value of your trademark as a strategic asset. By staying informed and engaged in trademark protection, you can position your brand for long-term success and growth in the vibrant German business landscape.