15. October 2013
Businesses sometimes succeed in shaping a generation with their brand-named products. Many remember fondly the chocolate bar Raider, while others prefer to devour a Twix. But aren’t they the same? This seems a good opportunity to discuss the legal steps involved in registering a trademark.
Twix or Raider?
For many years the chocolate bar commonly known as Twix in the UK and United States went under the name of Raider in many European countries, including Germany. In 1991 Raider was changed to Twix to bring the chocolate bar into line with the international branding.
To celebrate its 30th anniversary, Mars Germany has announced that, for a limited period only, the name Twix will be returning to Raider.
Registering a trademark
The first step to registering a trademark is to make an application to the German Patent and Trademark Office (Deutsches Patent und Markenamt, DPMA). Patent and trademark protection begins from the day on which the application is received, although the entry in the register may only occur sometime later. Three weeks after the application is received, the DPMA will send confirmation of receipt and request payment of the administration fee. From this point on, the entry is available on the DPMA’s information system and is visible to third parties.
Following this initial registration phase, the DPMA will take around 3 months to formally examine the application for faults or grounds for refusal of trademark or patent protection. The office will pay particular attention to whether a particular product or service has unique qualities which enable it to be distinguished.
If the application passes the examination, the trademark or patent will be registered in the trademark register and published in the trademark journal.
Once the registration is published, the time limit for registering objections begins to run. Owners of earlier trademarks have three months to file their objections to the registration, if they believe that the new trademark would infringe their rights.
If a business fails to analyse the market before registering a trademark, there are substantial risks. Under § 14 of the German Trademark Act owners of older trademarks, including company symbols and business names, can seek an injunction to prevent their trademarks being used. They are also entitled to seek compensation.
It is sufficient for the applicant’s trademark to infringe the older trademark if the two display similarities, for example where the trademark itself is similar or where it is used in relation to similar products or services. If the dispute concerns a famous trademark, such as Coca-Cola or the Mercedes Star, an infringement would occur even if there is no similarity between the products or services.
The owner of the older trademark may also require the trademark applicant to disclose information on the extent of the use of the trademark and any financial information concerning its use.
Any mark which infringes the trademark owner’s rights must be removed from products. In the worst case scenario, the product itself would need to be removed from the market.
These rights exist even after years and regardless of whether the applicant for the new trademark knew of them or not.
Trademark applications should therefore not be made without the necessary preliminary research. It is highly advisable to seek legal advice from an experienced trademark and patent lawyer before making a trademark application.
Mars stated that the reason for the temporary name change back to Raider is that surveys showed that many consumers still associate Twix with Raider. Twix will be available as Raider in kiosks and petrol stations throughout Germany until the end of November.
The company is hoping that the limited edition Raider will boost its sales. In 2009 Mars quietly and secretively conducted the same marketing exercise.
There is only one thing for nostalgia fans to do, if they do want to miss out on this chocolate sensation.
For those who would prefer further information on German trademark law instead, contact our team of specialist German lawyers.
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Categories: Trademark Law