How to file a Trademark application and protect names

With a trademark application, you can obtain protection for your name or company name. The Deutsches Patent- und Markenamt, for example, does not check whether identical or similar trademark registrations are already in existence. Before you apply with your company name, detailed investigations are therefore indispensable, in order to avoid the danger of expensive conflict. The timing of the trademark application with the relevant trademark office can be decisive with respect to later trademark legal disputes, because the one with the most senior priority, i.e. the one whose application was made first, is entitled to proceed via an erasure petition or dissuasion against other trademark applications. In the trademark application itself, in addition to the description of the trademark (word trademarks, picture trademarks, word/picture trademarks, among other description forms), the classes of goods and services for which the trademark is to enjoy trademark protection must also be given. A list with 45 classes of goods and services exists, whose classification should be used in the trademark application. Note that a subsequent extending of the goods and services catalogs is not possible.

After the submission of the official application form with the relevant patent office or trademark office, the applicant receives a receipt of delivery and information about fees, which depend on the number of classes of goods and services cited for the trademark. For national german trademarks, an official fee of 300 Euros is incurred for a trademark application up to three classes, each further class costing 100 Euros. The fees for a national trademark application therefore extends from 300 Euro to 4,500 Euro; on top of that, extra fees could be incurred, e.g. for an swift processing of the application. For the European Community Trademark, an official fee of 2,075 Euros for up to three classes is incurred (975 Euros for the trademark application and 1,100 Euros for trademark registration); each further class costs respectively 200 Euros for trademark application and for trademark registration. The cost for International Registration depends on the choice of required countries and classes, but will amount to at least 726 Swiss Franks.

With the payment of each requested fee will begin straightaway the actual checking process by the relevant patent and trademark office as to whether the requested trademark is able to get any protection at all. Definite requirements must be fulfilled before a trademarks is entitled to protection.

The trademark must be distinctive for the claimed classes of goods and services, and must have no declaration requiring it to be kept vacant. Even more obviously, royalty symbols and misleading or offensive embodiments cannot be registered as trademarks. What these regulations say in individual cases cannot be dealt with exclusively here. In short, it can be said that names which are too general for a definite product or service area, cannot be registered as a trademark. So the name 'automobile' cannot be registered as a word trademark in class 12 (cars, machines for moving, over land, in the air or on water), but could admittedly be registered in class 30 (bread, baking products, etc.). General names could certainly still became eligible for registration with the addition of image elements, if a new fantasy-like trademark is produced when viewed as a whole.

The decision about whether to allow a trademark to be registered is complex and can be influenced by the selection of the classes of goods and services and by the selection and development of a suitable trademark as a word, word/picture or picture trademark. For the issue of the goods and services lists and the clarification of the question as to whether others have already had the same trademark or company name idea earlier, you must resort to an appropriate and suitable Trademark Investigation or Business Register Investigation. With a national, European or international trademark registration, the trademark owner obtains the right to use the registered trademark exclusively in the relevant countries for the determined goods and services. If this trademark right is infringed, the trademark owner can demand an injunction to stop the unauthorized use of his trademark, and make a claim of compensation for damages. A registered trademark is often indicated by the (R) or 'TM in circle' symbol. The trademark protection period amounts to 10 years at first and can be extended after that.

You will receive further information on this theme on our FAQ page. You can read an overview of national and international trademark applications services here. The overview of investigations on trademarks, company names etc., are to be found here.