Registering a trademark in Germany
A trademark is a symbol which enables one company’s product or service to be distinguished from its competitors’ products or services.
A strong trademark ensures that a product is easily recognisable, that its origin is known and that its quality is guaranteed. With a trademark, a consumer can expect a certain value and quality which, in the best case scenario, can lead to consumer loyalty. To ensure a trademark reaches its full potential, it is necessary to protect it.
Under the Trademark Act in Germany there are three ways to secure trademark protection:
- Use of a symbol in business dealings (§ 4 no. 2 Trademark Act)
- High profile (§ 4 no. 3 Trademark Act)
- Registration at the German Patent and Trademark Office (§ 4 no. 1 Trademark Act)
The quickest and most effective method of gaining trademark protection is to register a trademark at the German Patent and Trademark Office.
It is advisable to seek legal advice when wishing to register a trademark as an application to the must fulfil the requirements of the German Trademark Regulations.
For example, under § 32 of the Trademark Act the following information must be sent to the German trademark office:
- Details of the identity of the applicant
- An example of the symbol
- A schedule of the products or services for which the symbol will be used
To qualify for registration the symbol must have a distinctive character and be demonstrable graphically.
Various elements can be protected under a trademark including:
For example, the word “PUMA” shown together with an image of an animal is suitable for abstractly describing a particular product which in itself can be distinguished from similar competitor products. Furthermore, both elements are demonstrable graphically.
Before applying to register a trademark it should be assessed whether there are any ‘absolute grounds for refusal’ present (see § 8 Trademark Act). If there are absolute grounds for refusal, the trademark office will reject the application (see § 37 sub-paragraph 1 Trademark Act).
Under § 8 sub-paragraph 2 no. 1 and 2 Trademark Act the following cannot be registered:
“1. trademarks which are devoid of any distinctive character
2. trademarks which consist exclusively of signs or indications which serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or the rendering of the service, or other characteristics of the goods or service…”The intended trademark must not describe the product or service in its simple form.
That is why the word “Apple” cannot be protected where it describes a fruit, but may be protected when describing a computer.
To register a trademark at the German Patent and Trademark Office a standard fee of €300.00 is payable. This covers three designated trademark elements. For every further trademark element a fee of €100.00 is payable.
Registering a trademark internationally
Depending on its chosen marketing strategy, a business may find it beneficial to apply to the World Intellectual Property Organisation for an international trademark.
The extent of protection and cost of registration is calculated based on the number of countries in which the mark is to be protected. In general fees are payable to the authorities of the country in which the trademark is originally registered, the WIPO and to the authorities of the countries in which the trademark is to be registered (see Protocol to the Madrid Agreement).
EU-wide protection can be gained by registering a Community trademark with the Office for Harmonization in the Internal Market, which is based in Alicante, Spain. It costs €900 to apply for a Community trademark which protects up to three classes of goods and/or services. For every additional class further fee of €150 is payable.
We will be happy to advise you on how to develop your trademark strategy and which classes of products or services to register. We will also support you with the necessary legal steps.
Would you like to register a trademark? Do you have general questions about trademark law? We are here to help.
German lawyer Kilian Kost and the expert team at WILDE BEUGER SOLMECKE are available to answer your questions. Call us on +49 (0) 221 / 951 563 0.