FAQ - Frequently Asked Questions
 What
can be protected as a trademark?
Can
international protection be obtained for a trademark?
How
much does it cost to register your name as a trademark?
Why
must an Trademark Search be carried out in the lead up to
an application?
How
do I avoid expensive conflicts over trademarks on the Internet?
How
many registered trademarks are there?
Why
are regionally-active companies a risk group?
Where
and how do I find a new name?
How
expensive can a trademark law conflict become?
How
should I react to an dissuasion?
How
can I increase the value of my name?
Which
utilization possibilities exist for a trademark?
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What can be protected
as a trademark ?
Various trademark forms are can be differentiated:
- The word-trademark protects a word in every
form that you wish
- The word/design-trademark protects a word in connection
with one or several graphic elements
- The design trademark protects a particular graphic representation.
- Further trademark forms are, for example, a sound trademark
or 3-D trademark.
Fee
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Can international
protection be obtained for a trademark?
Apart from national trademarks in different
countries, for which however it is often required to have
a local representative in the area, there is the possibility
of obtaining an international trademark protection via the
European Community Trademark or International Registration
according to MMA and PMMA.
The European Community Trademark has, after
registration, a validity in all 15 member states of the Community.
In 2004, the number of states will be raised to 25 following
the entry of further countries. The European Community Trademark
is obtained from the Department for Harmonization in the Internal
Market, in Alicante.
At the World Intellectual Property Organization
(WIPO) in Geneva, you can apply for International Registration
for a national trademark or European Community Trademark.
This Registration is possible in the current 71 countries
who have signed the Madrid Agreement and Madrid Protocols.
By the end of 2003, the entry of the USA will allow International
Registration there also.
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How much does
it cost to register your name as a trademark?
In Germany, a national trademark is registered
with the Deutschen Patent- und Markenamt (DPMA) in Munich.
The official application fees are 300 Euro for a registration
in up to three of the 45 classes of goods and services.
For the European Community Trademark, the
relevant body is the Department for Harmonization in the Internal
Market in Alicante. Their fees are split into application
and registration fees and amount in total, for three classes,
to 2,075 Euro.
The fees for International Registration depend
on the choice of countries and classes, but will come to at
least 726 Swiss Franks.
Before each trademark application is lodged,
a professional Similarity Search should be carried out. For
the analysis of investigation reports and the carrying through
of the application, the service of a lawyer, specialized in
trademark law, is to be recommended.
Fee
structure for trademark application and searches
Why must an Trademark
Search be carried out in the lead up to an application?
It could be that pre-existing, older trademark
rights stand in the way of a successful application. These
pre-existing rights can be from all the trademarks legally
effective in Germany, i.e. German trademarks, European Community
Trademarks and International Registration according to the
Madrid Agreements.
A trademark application contains the risk
of an objection to registration from a third party, or an
erasure petition or a dissuasion, incurring liability for
costs. It is advisable to recognize, assess and avoid these
risks by a suitable search in the lead up to a trademark application.
In this connection, an investigation into
company names entered in business registers is also to be
recommended, to check for any existing older names and trademarks
of a third party which have priority.
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How do I avoid
expensive conflicts over trademarks on the Internet?
Tip 1: Before a domain registration, be absolutely
sure to carry out a Trademark Search, especially if it concerns
fantasy names or a composite name derived from fantasy names.
But even general terms like *Scout* or *Allianz* can contain
the possibility of trademark conflict. Likewise, company names
and names of personalities should be avoided.
Tip 2: With trademarks, similarities are often
enough to cause a conflict and lead to a dissuasion. Therefore
a trademark search should be carried out in the form of a
Similarity search. Important: Because, under trademark law,
similarities very often lead to dissuasion being issued, a
reliable pronouncement on the potential of conflict over a
name can only be given following a legal assessment of the
Similarity Search.
Tip 3: You should also check with international
databases. For example apart from German trademarks themselves,
European Community Trademarks and internationally-registered
trademarks also have protection in Germany.
Tip 4: When you want to obtain protection
for your domain or for your name which will go out via the
Internet, you should also apply for a trademark, for example,
with the Deutschen Patent- und Markenamt. Here you can also
protect your logo or a graphic.
Tip 5: If you want to use your domain for
a longer period, or even if you have additionally registered
another trademark, you should regularly check whether your
rights are being infringed in order, where appropriate, to
be able to react early with a dissuasion.
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How many registered
trademarks are there?
At the moment, the number of registered German
trademarks lodged with the Deutschen Patent- und Markenamt
(DPMA) stands at 743,423 trademarks. Altogether at the moment,
there are 1,250,497 active trademarks with protection in Germany
(including EU and IR trademarks). In 2002, there were 56,492
trademark applications with DPMA.
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Why are regionally-active
companies a risk group?
Regionally-active companies are a specially
high-risk group with respect to disputes over trademarks.
Often names are used, which have already been protected for
a long time by other parties with a Patent- and Trademark-Office,
without this being detected by the original trademark owners
based in another region. However, through their Internet presence
and a Domain Registration, these regional companies become
suddenly visible and receive a dissuasion from the trademark
owner, in most cases entailing high costs. Because a correct,
professional choice of name is often overlooked in small businesses,
no Trademark Investigation is carried out before the registration
of a domain; and because immaterial assets, which in stark
contrast to material assets, are managed and looked after
in a neglected way, the company loses out financially in a
big way, while simultaneously great risks of conflict are
being taken.
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Where and how
do I find a new name?
The name, the trademark belongs to the beginnings
of companies and entrepreneurial projects. The Corporate Branding
is a decisive factor for success and represents a valuable
immaterial asset for the undertaking. The professional development
of a trademark which is appropriate for the strategic vision
of the company or the product is, in these times when immaterial
resources are becoming more and more scarce, a great challenge.
Often, however, the correct, professional choice of name is
overlooked, especially in small businesses. Immaterial assets
are mostly badly administered and looked after, in stark contrast
to the material assets. The company loses enormous assets
and possibilities for successful marketing, while simultaneously
great risks of conflict are being taken. Professional name
making or name finding is the foundation for hindering conflict
situations and for building up a valuable body of immaterial
assets.
Specialist agencies take on or coordinate,
in a multi-stage customized process, all essential phases
of the brand development, which starts from name making and
ends with a completed brand development with global development
and determining of the corporate design.
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How expensive
can a trademark law conflict become?
The costs of a trademark rights dissuasion
depend on the legal costs stemming from the dissuasion. In
this connection the legal costs depend on the infringed trademark,
not as frequently accepted, on the nature of the trademark
infringement, for example - on an internet domain. So the
legal costs with respect to an unused trademark is seldom
fixed at under 25,000 Euro. If the trademark is being used,
then at least 50,000 Euro is the rule. Well-known trademarks
and trademarks connected with a large turnover will definitely
justify higher costs. Therefore, the cost of the dissuasion
already amounts to over 500 Euro on the basis of legal costs
of 25,000 Euro.
If a provisional proceeding of injunction,
main court procedure, appeal procedure before higher Court
requires the service of a trademark lawyer, the accumulated
costs climb quickly into five figures. Costs of more than
30,000 Euro in such cases are not unusual.
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How should I
react to an dissuasion?
Stated fundamentally - on receiving an dissuasion,
three different strategies can be identified:
- Acceptance of the dissuasion and Execution
of a Declaration of Misprision.
- Refusal to sign the declaration relating
to obligation and misprision.
- Anti-dissuasion and negative affirmative
action for a right.
The choice of the correct reaction to an dissuasion
in individual cases is determined primarily by its legality.
Note: Not every dissuasion is justified!
For the assessment of the legal situation
and the working-out of a suitable strategy, the employment
of a specialized lawyer is recommended.
Fee
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How can I increase
the value of my name?
After the trademark registration, a regular
monitoring of your trademark is required, in order to ascertain
the existence of trademarks with less senior priority and
to prevent trademark infringements. If this monitoring of
the trademark is not done, then dilution and obsolescence
threatens the trademark through unauthorized use by a third
party.
Likewise, it is also important to actually
use the trademark for the claimed goods and services - at
the very latest by the end of the five-year respite allowed
for this. If this use is not made, an erasure petition from
a third party could stand a good chance.
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Which utilization
possibilities exist for a trademark?
If you do not want to make use of your own
trademark, it can be offered for a licensing designed specifically
to make actual use of the trademark. The trademark owner can
give either exclusive or non-exclusive rights of use to the
trademark, rights which can also be limited geographically
or with respect to goods and services. In the case of exclusivity
he can also choose whether to give up his own usage rights.
In accordance with the contractual arrangement, the trademark
licence grants to the license holder suitable usage rights
and a right to ban against a third party. The license giver
should ensure, at all costs, that the given license is also
being used in the planned area, as well as that the quality
of the products sold by the license holder is appropriate
to the standard of the trademark.
Alternatively, the sale of the trademark is
possible. Trademark law and the regulations of the European
Community regarding Community Trademarks allow the free sale
of trademarks, even the application connected with it, as
well as partial sales of trademark rights. As the ban on blank
trademark assignments (abolition of regulations of WZG by
trademark law) has been cancelled, it is no longer required
that the trademark is used inside a business, so that an exclusive
sale of trademark rights or entitlement is possible.
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structure for trademark application and searches
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