Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 3 months, if no objections or oppositions arise.
If I register my trademark in Germany, do I have protection in other territories?
Registered trademarks in this jurisdiction are protected in Germany and East Germany. If the registration can be based on the European Union Trade Mark (formerly Community Trademark), the territorial limit would be all member countries of EU.
Do I need to sign a Power of Attorney?
A simple scanned power of attorney is required.
Are there any benefits from a pre-filing use of the trademark?
No. There are no benefits from pre-filing use.
Will there be problems in case I don’t use my trademark after registration?
Yes. Non-use of a registered mark can result to cancellation of registration.
What are the types of trademark that can be registered in Germany?
Marks that can be represented clearly and can make a product or service distinguishable from others are allowed for registration:
- Trade dress
- Shapes with 3 dimensions
What are the phases of application after a trademark has been filed in Germany?
The sequence of the application procedure is as follows:
Examination – Elements of the application are examined such as compliance to trademark requirements, classes of good/service, clarity of description, and deceptiveness.
Registration – After the mark was examined by the trademark office authorities, and there are no absolute grounds for the application to be refused, a certificate of registration will be issued to the applicant.
Publication – The registered trademark will then be published in the Markenblatt. The specifics of the registration will be published and be made accessible to the public. The publication phase allows third-parties to check the newly registered mark and file a complaint or opposition if need be.
What type of trademark is non-registrable?
Some marks are prohibited by this jurisdiction to be registered:
- Marks that are incompatible with Germany’s moral standards or marks that oppose public order
- Terms that have a broad meaning (generic words)
- Marks that use symbols, names or flags of regions, states, nations and international organization without permission from proper authorities
- Marks that do not display distinctive characteristics
Does Germany use the "Nice Classification" system?
The Nice Classification system is used in Germany only as a general guide.
Does the Community Trademark apply for Germany?
Yes. Germany is a member of the European Union and EUTM (European Union Trade Mark) registration system is effective in this jurisdiction.
Is there any possibility to claim priority in Germany?
Yes. The filing date in your home country can be claimed as the filing date in Germany if the following requirements are met:
- Your home country is a member of the Paris Convention
- The filing date in your home country occurred within 6 months prior to the application date in Germany
- Your home country is a member of the WTO (World Trade Organization)
- International registration can be based in Germany
What do I need to do to satisfy the use requirement?
You must use a registered mark within 5 years from the date the registration was granted or 5 years from the date the opposition was terminated. Also, “use” must be in a business scale and must occur in this jurisdiction. If the mark was registered in the European Union Trade Mark, use of the mark in any of the member state would suffice.
Once my trademark has been registered, for how many years will be valid?
The registered mark will be initially valid for 10 years computed from the date of application.
What will be the renewal date of my trademark?
You have to renew your mark 10 years from the date you filed your application.
Is it legal to use my trademark even if it is not yet registered?
Yes. You may legally use an unregistered trademark for selling goods or services.
Does having a registered trademark in Germany afford me any right?
To establish trademark rights, the owner is required to undergo registration. The “first to file” rule applies in Germany. Exception to this rule is famous marks that have already acquired a high level of reputation in doing business. Such marks are given protection even if these are not officially registered.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
Applicants are not mandated to use the mark or to intend to use the mark before applying for registration.
What are the grounds for a Trademark Application to be opposed?
Acceptable grounds for opposition include:
- A similar or identical mark was registered earlier by another person or company
- A well-known mark was copied or if it looks almost the same as a notorious mark
- The mark was registered in the agent’s name or a representative of the owner of the mark
- Rights against trade names are violated
- Absolute grounds such as deceptiveness, descriptiveness, non-distinctiveness, etc.
- Violation of prior rights such as rights to a copyrighted material, personal name, patented design, etc.
Who can contest my trademark registration?
Owners of an earlier right can challenge your registration.
Is it possible to cancel a registration?
Yes. Registration can be revoked on the grounds of:
- Against morality or public policy
- Bad faith
- Generic or common terms
- Geographical indication
- Prior rights in personal name or patented designs
- Breach of copyright
- Proprietary rights
- Descriptive, not distinctive, misleading, functional marks
- Unauthorized use of protected flags, emblems or armorial bearings
- Conflicts with rights of notorious marks and trade names
Are there any rights established by having a registered trademark?
Yes. Owners of a registered mark in Germany secure the following:
- Exclusive right to use the mark
- Right to object to later conflicting application
- Right to appeal for the revocation of a later conflicting registration
- Right to file infringement charges against third parties that use confusingly similar mark
- Right to obtain damages for infringement
- Right to warrant or authorize third parties to use the mark
- Right to appeal for the confiscation of counterfeit goods bearing the registered mark
How long is the opposition period?
The opposition period will start on the publication date when the registration was granted and it will end three months after that date.
Is Germany a member of the Madrid System?
Yes. Germany is a signatory of the international treaties, Madrid Agreement and Madrid Protocol.
Do I need to present periodic statement of use?
No. It is not mandatory to submit a periodic statement of use or any filing that would set forth the use of the mark.
When should I renew my trademark?
Succeeding renewals must be done every 10 years.
What will be the renewal date of my trademark?
You have to renew your mark 10 years from the date you filed your application.
Is there any documentation that should be presented when renewing a trademark?
No documentation is necessary since paying the renewal fee is enough.
If my trademark expires, do I have a grace period?
If the registration is already expired, you are still given 6 months to renew it.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.