Trademark protection
A trademark can be used to identify either a product or a service and thus achieve trademark protection against others.
A trademark can basically be applied for by anyone, i.e. by individuals or by companies. Words, letters, numbers, images, as well as combinations can be protected as trademarks (word marks, figurative marks as well as word-figurative marks).
Trademark protection is established by registration with the German or European Patent and Trademark Office. It is considered formal protection throughout Germany or the entire EU. For international trademarks, a trademark registered in a particular country can be extended to other countries through the WIPO International Registration Authority in Geneva.
Upon registration of the trademark in the register, the owner acquires the exclusive right to use the trademark for the protected goods and/or services. So a kind of monopolization is taking place. Others can then no longer use the identical or similar mark for the same goods/services. The trademark owner has a right of prohibition against others who wish to use his mark.
No descriptive terms
It is not possible to use purely descriptive terms for a product or service and have them protected (for example, the term “tomato” for the sale of tomatoes; it is very possible to use the term “Apple” for computers). Such monopolization is not possible, because otherwise the normal use of language would be completely restricted.
Trademark license agreement
Brands can be sold as well as divested. The trademark owner may also allow others to use the mark in exchange for payment of a license fee. This is usually done through a trademark license agreement.
Here you will find an overview of the most important provisions that a trademark license agreement should contain, whereby this list is only exemplary and not exhaustive:
1. parties (licensor and licensee)
2. subject of the license (definition with trademark number of the register)
3. minimum standard of the products produced under the brand
4. warranty (exclusion)
5. license reference to the licensor in case of use
6. license fee (percentage of sales, annual fee, etc.)
7. accounting formalities
8. obligation to maintain the trademark by licensor
9. measures in case of attack of a third party on licensee
10. contract term
11. reasons for termination
12. modalities in case of termination of the licensing
13 Jurisdiction, Final Provisions
The individual regulations require detailed examination and consideration as to whether they are sensible and expedient in individual cases.
Own search for trademark application
When an application is filed with the Trademark Office, the Office does not check whether an identical or identical trademark has already been registered. Such a search must be carried out when applying for a trademark itself.
Only absolute grounds for refusal
The Trademark Office only examines the absolute grounds for refusal (for example, no use of state coats of arms, violation of morality, use of flags, official test marks, geographical indications, etc).
Thus, it is quite possible that a trademark application is accepted and registered, but due to a revocation or a request for cancellation by a competitor, it has to be cancelled again later or even after years. Therefore, it is all the more important to perform or have performed a thorough review prior to registration. The delimitation and the question of whether pre-existing trademarks make use and registration impossible can be difficult and legally complicated under certain circumstances.
Term trademark application
A trademark is initially registered for a period of 10 years. Within the first 5 years there is a so-called grace period for use. This means that it is not necessary to use the registered trademark without losing its protection. However, after the 5 years have expired, the trademark must be used, otherwise a third party may have it cancelled for non-use. After the 10 years, the trademark can be renewed as often as desired. However, it is not possible to extend the classes or services for which the trademark has been applied for. If the goods or services are extended, a new trademark must be applied for.
Work titles, company trademarks (= trademark law)
Company trademarks as well as work titles are also subject to trademark law, compare § 5 MarkenG. In this case, trademark rights arise simply as a result of use and do not require registration with the trademark office. This also constitutes effective trademark protection.
If, for example, you operate a business or a company, it acquires a trademark right (= company mark) for the area of the business solely through its use, provided that a third party does not already hold a prior right. So this should be well researched before starting a business.
The same applies to the production of books, songs and film productions or the organization of trade fairs, events, seminars, etc. Use alone gives rise to a right to a work title which is basically equivalent to a trademark right, unless a third party has already used this or a similar trademark before. Again, research well or have research done before using.
The law firm Rehkatsch Rechtsanwälte has specialized for many years in trademark applications, trademark licensing as well as in disputes between trademark owners. Do you need legal advice? Call us at 0221-4201074 or email us at info@rehkatsch.de.
