The German Trademark
Trademarks are intended to function as distinctive indicators which are appropriate to distinguish goods and/or services produced or offered by one company from the goods and/or services of another company. Besides its traditional function to identify the commercial source of products and services, the trademark particularly also provides an indicator for quality or adopt advertising functions. Due to these functions, the trademark is an important marketing means.
As set forth in sec. 3 MarkenG, all different kinds of labels might be appropriate to fulfill the above purpose, as, for example, words, illustrations, letters, numbers, audible signals or tones, three dimensional presentations, including the shape of a product or its packaging, as well as colors, color compositions.
The most common types of trademarks, however, are wordmarks, figurative marks or combined word and figurative marks.
Conventionally, besides trademarks purely obtained through use of the latter, protection can be achieved by having a sign registered as a trademark in the official register of the German Patent- and Trademark Office. Registration of a trade mark will confer to its owner the exclusive right to use the trade mark in relation to the protected goods and/or services. When applying for registration of a trademark, the goods and services in respect of which the trademark is intended to be used have to be exactly specified. In order to avoid any complications during the application procedure, the terms which may be used for this purpose as well as the corresponding classes of the goods and services should correspond to the International Classification of Goods and Services under the Nice Agreement. During the application procedure, the German Patent- and Trademark Office will – besides checking the formal requirements – also examines the trademark application for so-called absolute ground for refusal. This means that signs or indications will be excluded from registration if they merely describe the kind, quality or other characteristics of the goods or services claimed. However, the German Patent- and Trademark Office will not check whether similar or identical trademarks have already been registered. After all legal requirements are found by the German Patent- and Trademark Office to be fulfilled, the trademark will be registered. After registration has been published, within three months after publication, holders of earlier rights can file an opposition in which the German Patent and Trademark Office determines whether the registered trademark and the opposing earlier right are similar or even identical so that a risk of confusion exists. If the determination of the latter is positive, the trademark will be cancelled again in the register. If no opposition is filed, the registered trademark will grant its owner an exclusive right to use the trademark in relation to the goods and services for which it has been registered. Should the trademark right be infringed by third parties, the owner of the trademark is entitled to seek injunctive relief or claim damages from the infringer. After ten years, the term of protection of a registered trademark will expire, but it can be renewed simply by paying the renewal fees for another ten years of protection. The renewal can be repeated as many times and for as many years as the holder of the trademark wants to seek for protection of his right.
The Community Trademark covers as to its area of application the entire member states of the European Union. A Community Trademark has to be applied for and registered with the Office of Harmonization (OHIM) located in Alicante, Spain in accordance with the provisions of the Community Trademark Regulations.
For applying for a Community Trademark registration, basically, the same formal requirements have to be fulfilled as for the German Trademark registration. Generally, although the application and registration procedure before the OHIM is more expensive than applying for a national trademark in one single country, as for example, in only Germany, the Community Trademark offer some important advantages, one of which being - as already mentioned above – that only one single registration procedure will provide trademark protection all across the European Union. However, one disadvantage which should be also kept in mind when applying for a Community Trademark is that if the trade mark is refused in one country, it will be invalid in all countries.
Application for an international registration of a trademark (IR mark) has to be carried out before the International Bureau (IB) of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. Applicable law and regulations for such trademarks is stipulated in the Madrid system for the international registration of marks including the Madrid Agreement and the Madrid Protocol.
The international registration of a trademark enables the holder of the latter to obtain protection in the countries which have joined the Madrid system (MMA) and/or the countries which have joined the Madrid Protocol (PMMA). However, before an application for an international registration may be filed, a national trademark has to be applied for and/or has to be registered with the competent national Patent- and Trademark Office.