What does a trade mark attorney do?
Anyone running a business and looking to register or manage a trade mark often faces significant challenges. Not only is the registration of a trade mark influenced by numerous legal questions, but its use and protection from imitations are also legally relevant. Many entrepreneurs and business owners are therefore in search of a reliable partner by their side to assist them with the complexities of trade mark law.
But when is it worth consulting a trade mark attorney? Is legal support necessary for trade mark registration? And how can an experienced law firm help you grow your business? In this article, we offer a behind-the-scenes look at a trade mark law firm.
Whether it's a trade mark application, registered design or patent - WSL Patent has been successfully helping established companies and start-ups to protect their intellectual property for 70+ years. As patent attorneys and attorneys-at-law, we have extensive industry knowledge and can advise you on all matters. Feel free to contact us for a non-binding initial consultation - whether in person at our offices or digitally.
What is a trade mark?
Everyone knows trade marks from the supermarket, movies, and television. They create brand recognition and trust in a company or product. A good trade mark can significantly contribute to a company's success.
In legal terms, a trade mark is a legally protected sign that identifies goods or services and distinguishes them from those of other companies (§ 3 MarkenG). A natural or legal person can acquire ownership of such a sign and thereby create a monopoly.
Trade marks don't necessarily have to be a word. There are various forms of trade marks that can also be used in combination, including:
- Word marks
- Image marks
- Position marks
- 3D marks
- Color marks
- Sound marks
- ...
Prosecution and litigation – responsibilities of a trade mark attorney
The responsibilities of a trade mark attorney mainly fall into the areas of prosecution and litigation. But what does that mean exactly?
The first stage of a trade mark's "life" is about prosecution. This term refers to obtaining trade mark rights through registration procedures and their preparation. This involves the following tasks:
- Drafting the trade mark application, in particular the lists of goods and services and determination of the Nice classes
- Strategic advice on trade mark law, in particular advice regarding the scope of protection of trade marks and portfolio management
- Trade mark searches
- Review of application documents
- Trade mark registration
- Conducting official examination procedures
Litigation, on the other hand, refers to (potential) legal disputes related to a trade mark. Ideally, these disputes are initiated by your side but can also be started by third parties (e.g., through a cease-and-desist letter). This includes:
- Official disputes, in particular handling oppositions and invalidation procedures to trade mark registration
- Dealing with cease-and-desist letters against your trade mark
- Court proceedings in cases of unauthorized use of your trade mark
- Collision monitoring
More information on these areas is provided throughout the article.
Is there a specialist attorney for trade mark law?
Although experienced and specialized attorneys work in trade mark law, there is no official specialist attorney for trade mark law in Germany. The reason is simple: Not all legal fields have specialist titles. Many attorneys specializing in trade mark law opt for a specialist title in intellectual property (IP) or copyright and media law.
You can find more information about specialist attorney titles in Germany on the website of the Federal Bar Association.
However, because the case law in the trade mark field evolves rapidly, continuous education on the latest decisions from offices and courts is even more crucial for a trade mark attorney than holding a corresponding specialist title.
What does a trade mark attorney do?
A trade mark attorney does not only assist with the actual registration or legal disputes with competitors or imitators. It can be beneficial to seek comprehensive advice from a competent trade mark attorney early in the development of your trade mark idea.
Let us take a closer look at the areas a trade mark attorney can assist with:
Conducting a trade mark search
Before the actual registration, a trade mark search is recommended. With specialized software, a trade mark attorney carefully checks whether your trade mark idea can actually be implemented.
By thoroughly searching the registers of trade mark offices, it is ensured that no identical or similar trade marks are already registered. Depending on which goods and services are being registered, there could be overlaps or interactions with existing protective rights. You can learn more about the trade mark search in a separate article.
Support with trade mark registration
The registration of a trade mark can also be challenging. From filling out the application form to accurately representing the trade mark and specifying the list of goods and services (sorted in Nice classes), there are many things to consider.
A trade mark attorney's job is not just to help with the trade mark registration application but also to advise you comprehensively on how and to what extent the trade mark should be registered. Our goal is always to get the most out of your trade mark.
This involves working out your trade mark representation and specifying the list of goods and services, thereby defining the scope of protection. Only by thoroughly preparing the application documents, the protection is according to your specific needs. In this respect, the results of the previous trade mark search are important for the outcome. Additionally, determining the territorial scope (Germany, EU, international) is a crucial factor for a successful registration.
Collision monitoring
After successful trade mark registration, trade mark owners and their attorneys suddenly find themselves on the other side: Instead of checking if your trade mark collides with others, it is now necessary to continuously monitor that no one else is unlawfully using your trade mark or attempting to register a similar/identical one. This collision monitoring is also handled by a trade mark law firm.
If such an incident occurs, we inform our clients and advise them on possible steps like a cease-and-desist letter or an injunction. Learn more about collision monitoring in a dedicated article.
Why a trade mark attorney is important for trade mark registration
Running a business (especially in the startup phase) is associated with high costs. So why not save money on trade mark registration by skipping the attorney?
Unfortunately, this is not advisable. The trade mark search before the actual registration is essential for the successful trade mark application and usually cannot be carried out properly by legal laypersons.
While anyone can check trade mark registers for identical trade marks, similar trade marks that could be infringed upon are harder to spot. This requires specialized software and manual verification, which an attorney handles for you. Skipping this search can lead to costly legal disputes.
The reason for this is as follows: When registering a trade mark, many trade mark offices (particularly in Europe) do not check whether similar or identical trade marks already exist on the market. They only examine the fundamental, absolute protectability of the trade mark. Therefore, anyone who registers a trade mark without conducting a trade mark search risks receiving a cease-and-desist order (warning) from owners of existing trade marks or even facing legal disputes.
In reverse, no one wants their own trade mark to be unlawfully used by others. After registration, collision monitoring is crucial to protect your trade mark.
What makes a good trade mark attorney?
A good trade mark attorney not only needs to be familiar with the applicable law as well as with the current decision practice and with trade mark registration and litigation processes but must also possess the necessary skills for trade mark searches and collision monitoring. There are AI-based tools for this, which must be used accurately and their results need to be questioned. Knowledge of software and digitalization is as important as legal expertise.
Legal expertise also includes staying up-to-date with current laws. Especially at the European level, decisions by the Court of Justice of the European Union (CJEU) continuously set new standards that influence trade mark law and the work of a trade mark attorney.
Finally, as our trade mark attorney, Dunja Tsoumanis, points out, it's not only about "excellent knowledge of the legal requirements and framework for the registration of trade marks and designs with the offices, but also an interest and understanding of your company, its products and services, and its strategic position in the market and competitive environment."
As a specialized firm for patent and trade mark law, we have the expertise and the right tools to assist with your searches. With decades of experience, we also provide comprehensive advice on possible options and give you an assessment of the market and legal situation based on a trade mark search. We are happy to handle the entire trade mark registration process for you.