How to protect your trade mark
If you want to build a business, you should not only focus on developing products or services but also pay attention to building a trade mark. A successful trade mark creates brand recognition and can significantly boost a company's success. If you want to establish long-term recognition and a strong market position, you should protect your trade mark. In this article, we explain the purpose of trade mark registration and guide you through the process step by step.
Why should I protect my trade mark?
If you don’t protect your trade mark, you risk it being copied and possibly even registered by a third party, who could then monopolize it.
Although trade mark rights can also arise through use, the threshold for this is relatively high ("distinctiveness in trade", § 4 MarkenG), and proving its existence in legal disputes, which often occur years later, can be difficult. The rightful owner of a trade mark is generally the one who registers it first.
This also means that a third party who owns a registered trade mark can prohibit you from using a conflicting mark in case of infringement, even if you have been using it for several years. It can be difficult to take action against such a colliding trade mark registration by a third party, and this is often only possible if it was done in bad faith.
Even after years of use, without your own trade mark registration, it can be hard to defend your brand. There is no prior use right in trade mark law. In most cases, the rule is: whoever registers first, wins.
Losing a trade mark can lead to the loss of the brand’s image and recognition value that the company has laboriously built up. A registered trade mark, however, is not only a powerful marketing tool but also an asset that serves as a symbol of trust and quality for your customers.
Protecting your trade mark: This is how you proceed
If you want to protect your trade mark, there are several things to keep in mind. Not only the formalities of a trade mark registration can pose a challenge, but also the substantive preparation should be carried out carefully. In our guide, we show you step by step what you need to bear in mind.
Developing your own trade mark
The first step is to develop your trade mark. There are different forms of trade marks that can be protected, such as word marks or image marks.
When choosing your trade mark, you should ensure that it has a recognition value and is easy to remember. However, the trade mark must not be purely descriptive, otherwise it cannot be protected. Simple terms from everyday language cannot be protected and with this monopolized.
At the same time, you should not be too fixed in your ideas, as you may find later that an identical or similar trade mark already exists.
Defining the territorial scope of trade mark protection
You should also consider the geographical scope in which the trade mark should be protected. Do you want to register a German trade mark with the DPMA, an EU trade mark (EUIPO), or eventually expand to an international trade mark (WIPO)?
The scope will affect not only the complexity of the process but also the costs, which are structured based on the desired protection area. If you already know that you are building or aiming for an international business, you should prepare to protect your trade mark from imitation in all the desired regions.
Checking registrability
Before preparing the registration, you should check whether the trade mark, as it is, is registrable. This means that the sign, such as the word or logo, must be protectable for the intended goods or services. We have already mentioned potential obstacles to protection during the development process. These obstacles generally fall into two categories:
- absolute obstacles to protection (§ 8(2) MarkenG): These include a lack of distinctiveness, e.g. by the use of purely descriptive terms, and common words; deceptive or immoral trade marks.
- relative obstacles to protection (§ 9 MarkenG): These arise when the trade mark is identical or similar to existing trade marks. More on this in the trade mark search section.
Conducting a trade mark search
The trade mark search is one of the most important steps in preparing for trade mark protection. In this step, you check whether the trade mark is protectable in light of existing trade marks, i.e., whether other identical or similar trade marks already exist. Trade mark and patent offices often do not fully examine this, so depending on the country where you seek protection, you should do this on your own.
If a trade mark search is not conducted or is not carried out thoroughly and relevant older rights exist, the chances of obtaining an enforceable trade mark are low. The costs incurred during the registration process would then be “lost”, and there could be a risk of a formal warning or an injunction by the owners of existing trade marks. If there are relative or absolute obstacles to protection, the trade mark may need to be altered. Learn more about the importance of trade mark searches and why they shouldn’t be done on your own in a separate article.
Assembling the documents
Once registrability is assessed, the registration process can begin. The necessary documents to represent the trade mark, the request, and the goods and services list must be prepared. In this list, you specify for which goods and services, and in which Nice classes, trade mark protection is sought.
Registering the trade mark
Now the trade mark is submitted to the appropriate trade mark office. The application must be filed, and the registration fee paid. Only then will the application be processed. After examination, the trade mark will be entered into the trade mark register.
Waiting for the end of the opposition period
Before the trade mark is definitively registered, there is a "preliminary" registration, during which it can be challenged by third parties through an opposition – a contentious procedure before the registration office. The opposition period is three months from the publication of the application (EU trade mark) or from the publication of the registration (German trade mark). During this time, owners of older trade marks can object to the new trade mark if it is identical or too similar.
This step will reveal whether your trade mark search was thorough and if your trade mark is solid. After three months, the trade mark will be permanently registered in the trade mark register and can only be challenged through more complex invalidation or cancellation proceedings.
Filing subsequent applications
Within six months, you can extend the territorial protection, taking advantage of the priority date of the first application, for example, from Germany to the EU or the USA. After this period, territorial expansion is still possible, but the priority date will be that of the subsequent application.
Setting up collision monitoring
To protect yourself from future imitations, collision monitoring should be established. This means a law firm will continuously check whether new identical or similar trade marks are being applied for or registered. Now you are on the other side and you should monitor if others are using your trade mark unlawfully, so you can take legal action (e.g., during the three-month opposition period).
Failing to act in time could lead to weaker legal standing against imitations later on. We are happy to take on long-term collision monitoring for you and inform you when legal steps are necessary.
You want to protect your trade mark? This is how an attorney can support you
As a specialized trade mark law firm, we not only have years of experience with trade mark registration but also possess the necessary tools to support you throughout the entire registration process.
A thorough trade mark search is essential for a successful and legally secure trade mark registration. Unfortunately, a search carried out on your own regularly does not provide sufficient legal certainty.
We are also happy to be your long-term partner for ongoing collision monitoring. With aid of specialized AI-tools, we check for conflicting trade marks and provide you with reports thereof, so that you can act early against them. Meanwhile, you can focus fully on your business and competition. Our goal is to strengthen you and your business.
Conclusion
Registering a trade mark is recommended for almost every company (including start-ups and micro-enterprises). You should act as early as possible to have the greatest flexibility in trade mark registration and to avoid imitations.
However, before proceeding with the actual trade mark registration, several important steps, such as a comprehensive trade mark search, must be taken. We are happy to provide transparent and comprehensive advice on your options in a non-binding initial consultation.