Have your trade name checked: This is what you should consider
Finding a name for your own product or company can be one of the most important and difficult tasks for an entrepreneur or founder. After all, there is an almost infinite number of possibilities. At the same time, there is always the risk that the chosen trade name already exists in the same or a similar form and has already been registered.
In order to avoid possible obstacles to protection or collisions and thus legal difficulties, you should always check the trade name (or have it checked) before applying for a trade mark. In this article you can find out what you need to bear in mind.
Finding a trade name
A trade mark is a sign that distinguishes the goods or services of one company from those of another. Protection can be applied for various types of trade marks, including the following:
- Word mark: protects the pure name or text, regardless of font or design (example: “Coca-Cola”).
- Figurative mark: protects a logo or symbol without text (example: the Apple apple).
- Word/figurative mark: Combination of word and image (example: the Nike logo with lettering).
- Shape mark: Protects characteristic product shapes (example: the Coca-Cola bottle).
- Color mark: Protects specific colors or color combinations (example: Telekom's magenta).
- Sound mark: Protects acoustic signals (example: the Telekom jingle).
- Position mark: Protects the specific placement of an element (example: the red flap on Levi's jeans).
When choosing and designing a trade mark from the above options, it is not only important to make the right “business decision”, but also to consider the distinctiveness and potential collisions with existing trade marks. Thorough search and professional advice can help you finding the best protection for your trade mark.
Checking trade names
If a trade name is to be registered, a trade name check including a trade mark search is useful in advance. Such a check has the advantage that later legal disputes or the failure of the trade mark application can be prevented.
Checking protectability
The trade mark offices generally only examine absolute grounds for refusal, such as lack of distinctiveness or misleading information. Relative grounds for refusal, on the other hand, are conflicts with existing trade marks. These are not examined – in prosecution proceedings before the German and European Trademark Offices. The only exception: There are older, well-known trademarks (§ 37 (4) German Trademark Act).
Checking for possible collisions
Such prior rights therefore do not generally lead to a rejection in the application procedure. However, this apparent security is deceptive: There is the possibility of a later opposition or nullity proceedings initiated by a third party. Such contentious proceedings can result in considerable follow-up costs. A comprehensive trademark search should therefore always be carried out in advance in order to minimize these risks.
When setting up a business, many people come across the terms “brand”, “trade mark”, and “company”. Although they are often confused, they have different functions and legal bases:
- The company:
- Is the official name of a business
- Is entered into the commercial register (e.g. “Max Mustermann GmbH”)
- Is used for legal identification in business transactions
- Protection is subject to commercial law
- The trade mark:
- Is a label for products or services
- Is registered with the trademark office (e.g. DPMA)
- Serves to differentiate products from competitors on the market
- Protection is subject to trademark law
- The brand:
- Refers to the identity or image of a company
- Is a non-legal combination of potentially legal entities
- Can be a combination of trade marks, designs, reputation and emotions
While the company identifies the business itself, the trademark represents its offerings in particular. A business can have several trademarks that differ from the company name.
Example: The company “Procter & Gamble” has trade marks such as “Pampers” or “Gillette”. The brand “Pampers” further includes e.g. the customer’s feeling of the “go-to diaper”.
As a rule, however, company names are often also protected under trade mark law, as protection by the company is limited in general both territorially and in terms of content.
Why should I have the trade name checked?
Before applying for a trade mark, it is important to check whether the trade mark can be protected at all and that it does not infringe existing trade mark rights. If there are obstacles to protection when applying for a trade mark, the responsible trade mark office (in Germany the DPMA) will reject the application.
If the trade mark application is successful but conflicts with other, older trade marks, this can have serious consequences. We have listed some of them below:
- Warning letter
- Destruction of already labeled products and the like
- Prohibition of further use
- Deletion from the trademark register
- Preliminary injunction
- Claims for damages
All of this is not only cost-intensive, but also time-consuming and can have a considerable impact on your company's reputation. It is therefore important to have the trade name checked in advance.
Unfortunately, the DPMA does not consider trade mark conflicts during the official examination, so it is up to the rights holders to carry out their own trade mark examination or trade mark search before the actual application.
Checklist: How to protect your trade name
If you want to protect your trade name, you should check the trade name in advance. Good preparation can prevent possible legal consequences and give you more legal certainty when registering.
We have summarized what you need to consider in a checklist:
- Consider the trade name: The first step should be to determine the desired name, otherwise the examination cannot start. Marketing also plays an important role here. For example, words or neologisms with a pleasant sound and words that evoke a positive association with the product have proven successful. Do not choose a name that could be legally prohibited or is similar to other well-known trade marks.
- Check the trade mark for protectability: Next, the protectability of the trade mark is checked. Absolute grounds for refusal are, for example, lack of distinctiveness, use of state symbols or foul language. We will be happy to advise you on the legal requirements.
- Carry out a trade mark search: Identical or similar trade marks are then searched for. It is analyzed whether your own trade name does not conflict with others so that a legally secure trade mark application is possible. Such a search can take a few days to several weeks, depending on the scope. You should schedule this time.
- Consider the territorial scope of protection: The trade mark search should cover all countries in which the trade mark is to be registered now or in the future, so that no collisions can arise. For example, in Germany, within the EU or worldwide. The following applies: It is better to check thoroughly than superficially!
- Evaluate the results and take action: At the end of the examination, an experienced attorney will inform you of their assessment of the trade mark application. If trade mark protection is not possible or difficult, the trade mark can be revised or completely redesigned. However, the result may also be that the trade mark application has a very good chance of success.
- Register the trade mark: If all examination steps are positive, the trade mark can ultimately be registered. It usually takes a few weeks before it is officially registered.
Trade mark monitoring: What happens after registration
After successful examination and publication by the Office, the trade mark can then be challenged by a third party three months after publication by means of a so-called opposition. However, with a good examination carried out before the application, the risk of this is rather low.
Once you have successfully applied for your trade mark, you should ensure that subsequent third-party trade mark applications do not conflict with your trade mark. The trade mark offices do not check this either. It is therefore up to you to recognize possible collisions and take action against imitations at an early stage, as the 3-month opposition phase also applies to other rights holders and you can react during this phase.
In order to keep an eye on potential imitations, it is advisable to set up a collision monitoring, also known as trade mark monitoring. This involves regularly checking newly registered trade marks for similarity. For you to be able to fully concentrate on the essentials, it is advisable to have this done by a trade mark attorney. If there are similarities, you will be informed immediately. We will be happy to advise you on your legal options in this area.
Checking trade names: This is how a trade mark attorney can help
Before filing an application, an experienced trade mark attorney will check whether absolute and relative grounds for refusal exist and whether the trade mark is eligible for protection. Even if your own search is a good first point of reference, it should be borne in mind that the databases of the trade mark offices can generally only find identical trademarks, but that the rights of third parties may already be infringed if the trade mark is similar. The area of similarity can therefore only be determined with the existing databases by means of “manual individual searches”, which in turn (also) requires appropriate legal knowledge of trade mark law.
We are happy to assist you with a comprehensive trade mark search. To do this, we use specialized, often AI-based tools to assist us with the search. After all, expertise in dealing with legal and technical databases is required to obtain reliable results.
We will be happy to provide you with non-binding and transparent advice on the expected costs and the next steps. Please feel free to contact us.
Conclusion
A trade name should not only be checked and thought through for marketing reasons, there are also some legal obstacles to a successful and legally secure trade mark application. In order to guarantee this, it is particularly important to check the trade name which should be carried out by skilled experts. In case of doubt, this not only saves time and nerves, but also protects your reputation.