Why to apply for a trademark registration?
A new product name is often simply put into use on the assumption that a trademark application is not absolutely necessary, because a certain trademark protection automatically arises by starting the use of the name. However, apart from a few exceptions, trademark protection is usually only obtained by a trademark registration. As German trademark law provides for no right of “first use”, a third party who, at a later date, registers an identical or similar name in good faith as a trademark for identical or similar goods or services may even demand the earlier user to cease further use of his. Even if a trademark application is made in bad faith (by an applicant who applies for a trademark in respect of the unprotected namein use), it must first be proven that such applicant has actually acted with such bad faith, which may often cause difficulties.
If a name is also used as a business designation (i.e., not only for the identification of goods or services, but for example as a company name or domain name), protection is provided under certain conditions, but this protection only covers the business fields of use and may be regionally restricted. In case of dispute, the duration and nature of use of the namemust be proven, which may cause difficulties (especially after a longer period of time). For this reason, accompanying trademark protection is often recommendable for such company names or business designations.
If names are used which are descriptive (forthe goods and services) and the protectability is doubtful, i.e., if it is not foreseeable whether they will be considered to be registrable as a trademark and, therefore, a trademark application is not filed, there may also be the risk that a third party registers the same or a similar trademarkfor himself and the afore-described problems may arise. Such a risk can often be avoided by having a word and devicemark registered. Although a word and devicemark provides no or only limited offensive protection for the descriptive word, it safeguards one’s own use of the mark vis-à-vis third parties.
Therefore, we strongly recommend applying for a trademark registration for all product nameswhich are intended to be used for a longer period of time, also in borderline cases or doubtful cases. In this respect, it is also advisable to carry out searches before filing the application, but in any case before starting use of the mark at the latest in order to determine whether applications for registration of these or similar marks have already been filed by third parties or such marks have been registered for third parties. The protection of a trademark can be renewedevery 10 years. Unregistered mark rights generally exist as long as the mark is used.
Finally, any company seriously considering an expansion into foreign markets should immediately consider trademark protection abroad, especially for the company name, but also for product names, in good time before the planned market entry. There is no cheaper way than to protect your market entry by trademark registrations. In this way, collisions with other trademarks can often be prevented or at least recognized and resolved at an early stage.
We can offer you comprehensive services in the field of trademark law, in particular:
- Trademark, domain name and company name searches for older national and international rights
- Trademark strategy consultancy, in particular, evaluation of protectability as well as development of application and renewal strategies
- Trademark applications via various protection systems worldwide, among others, EU trademarks, internationally registered trademarks (so-called IR trademarks for over 100 countries including the EU), Benelux trademarks and national trademarks
- Long-term management of internationally oriented and also extensive trademark portfolios
- Cooperation with foreign colleagues worldwide
- Representation in opposition, cancellation and nullity proceedings before the German Patent and Trademark Office (DPMA), Federal Patent Court, EU Trademark Office (EUIPO) and European Court (EuG)
- Proceedings of/for acquired distinctiveness
- Protection of indications of geographical originaccording to EU regulations
- Delimitation, coexistence and prior rightsagreements
- License and purchase agreements
- Border seizure proceedings in cases of product piracy
- Issuance of warning letters because of trademark infringements and defense against such warning letters
- Representation in infringement proceedings before civil courts, including the deposit of precautionary protective letters in case of impending preliminaryinjunctions
- National and international trademark collision monitoring