A name, a logo or a slogan – trade marks serve not only as a recognition signal and are part of a professional identity, but also provide legal protection and clear competitive advantages at the same time. Only registration, however, actually secures the registered trade mark.
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Why register a trade mark at all?
The trade mark itself serves the company as a recognition signal, creates trust and sets its own products or services apart in the market – but only registration actually secures the registered trade mark.
- Exclusive right: A registered trade mark gives you the exclusive right to use it for the protected goods and services. This applies, for example, to word marks, figurative marks or combined word/figurative marks.
- Protection against imitators: If third parties use an identical or confusingly similar sign for identical or similar goods or services, claims for injunctive relief, disclosure and, where applicable, damages may arise.
- Protection against later filings: Opposition can be filed in good time against subsequent similar trade mark applications and registrations.
What can be registered?
Far more than just a logo or a word can be registered as a trade mark. Decisive for protectability is that the sign is capable of functioning as a so-called indicator of origin – i.e. it can show the customer from which business the goods or services originate.
A prerequisite for this is that the sign has distinctiveness at all – i.e. the legal quality of being capable of functioning as an indicator of origin. This is the case when the sign can serve to distinguish the offerings of one business from those of others.
Typical signs that can be trade marks:
- Word marks such as a company name, product name or slogan
- Figurative marks such as a pure logo
- Combined word/figurative marks – i.e. name plus graphic design
In principle, even domain names, shape marks (3D shapes) and sounds can be registered as trade marks if they meet the requirements for trade mark protection.
What must be observed when filing a trade mark?
What hurdles does a trade mark application involve?
When filing a trade mark, particular attention must be paid to whether the desired sign is protectable at all and what risks the registration of the specific sign entails. This makes it possible to exclude unnecessary filing costs and possible legal disputes in advance.
Not everything can be registered
A trade mark application is excluded from the outset in particular where the sign itself already fails on absolute grounds for refusal. This is typically the case when the sign lacks distinctiveness or when it only describes the goods or services and must therefore be kept free for all competitors.
Also problematic are commonly used designations, misleading indications, violations of public policy and contained state symbols such as flags or coats of arms. These absolute grounds for refusal are examined by the DPMA in the application procedure.
A further clear exclusion case concerns shapes or other characteristic features of a product: protection is not available where they result from the nature of the goods, are technically necessary, or give substantial value to the goods (§ 3 para. 2 MarkenG).
Risk of legal dispute: earlier third-party rights
Before filing a trade mark, it is essential to check whether an earlier right of a third party exists beforehand. Because even if your trade mark can formally be registered, it can still conflict with earlier trade marks or other rights.
Important to know: The DPMA does not automatically check in the application procedure whether earlier rights exist. This is precisely why a thorough trade mark search before filing is particularly important.
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What do you need for a trade mark application?
Where do I register my trade mark?
Where you register your trade mark determines in which territory protection can arise.
- A German trade mark is filed with the DPMA – it protects in Germany.
- An EU trade mark is filed with the EUIPO – it takes effect uniformly in all member states of the European Union.
- Via the WIPO Madrid System you can apply for international protection in selected contracting states on the basis of a national or regional base mark.
Filing itself is often possible directly online, for example at the DPMA, which offers signature-free online filing, filing with a signature card and filing in paper form.
A detailed description of the various filing options can be found in our trade mark registration guide.
What is required for a trade mark application?
For a trade mark application you basically need:
- Details of the applicant
- The trade mark itself or its representation
- A list of the goods and services for which protection is sought
In particular, the list of goods and services should be carefully prepared, because the scope of protection of your trade mark depends significantly on it. A detailed description of the process of a trade mark application can be found in our trade mark registration guide.
In addition to these minimum requirements, a thorough preliminary review and search is advisable in order to exclude in particular the rejection of the application and the risk of legal consequences.
Do you need a lawyer for this?
Legal representation is not strictly required for the trade mark application. In many cases, however, legal support is advisable, in particular for the preliminary assessment of protectability, for the trade mark search and for the strategic decision as to whether a German, European or international filing makes more sense. This applies especially when similar signs already exist in the market or when objections or oppositions are to be expected.
Not sure how extensive your trade mark application is? Schedule a free initial consultation now
Costs of a trade mark application
What costs should I expect?
The costs of a trade mark application depend in particular on where the trade mark is registered and for how many classes protection is sought.
German trade mark (DPMA)
- € 290 filing fee for electronic filing (up to 3 classes)
- € 300 filing fee for filing in paper form (up to 3 classes)
- Each additional class: plus € 100
- Accelerated examination available for an additional fee of € 200
EU trade mark (EUIPO)
- € 850 filing fee (one class)
- € 50 for the second class
- € 150 for each additional class
- The EUIPO offers a fast-track procedure under certain conditions.
International trade mark registration (WIPO)
- Processing fee at the office of the base mark: DPMA = € 180, EUIPO = € 300
- WIPO basic fee for a new application: CHF 653 (black-and-white mark) or CHF 903 (colour mark) – plus further fees depending on the designated states and classes
A detailed description of the differences can be found in our trade mark registration guide.
You would like to register a trade mark or have it reviewed in advance?
Schedule a free initial consultation now
Key terms at a glance
Classes – Goods and services are divided into classes when filing a trade mark. Protection for your trade mark applies only to the registered classes.
Exclusive right – The right of the trade mark owner to use the registered trade mark exclusively for the protected goods and services.
Indicator of origin – A trade mark must be capable of showing the public from which business goods or services originate.
Distinctiveness – A sign must be capable of distinguishing the offerings of one business from those of other businesses. If this quality is absent, the trade mark is usually not registrable.
FAQ
1. Where can I register my trade mark?
At the DPMA for Germany, at the EUIPO for the entire EU, or via the WIPO for international protection in selected contracting states.
2. Do I need a lawyer to file?
No, this is not strictly required. In many cases, however, legal support is advisable, especially for the search and strategic decisions.
3. What must I bear in mind when registering my trade mark?
Above all the protectability of the trade mark, the right classes and possible earlier third-party rights. The DPMA does not automatically check earlier rights.
4. How much does a trade mark application cost?
This depends on the office and the number of classes. At the DPMA, the official fees currently start at € 290 (online); at the EUIPO at € 850.
