How to register a trademark.
Trademarks serve the purpose of "marking" goods and services – identifying them as originating from a specific company and simultaneously distinguishing them from those of other companies. In addition, consumers associate certain quality perceptions and a certain image with a trademark. Anyone who founds a company or wants to bring new products to market should therefore protect the value that customers see in a trademark through a trademark application. This legally secures the time and money invested in building a well-known name. Once the trademark application has been registered in the trademark register, only the trademark owner may use the trademark to identify the goods and services in question (the so-called exclusive right). Malicious imitators can then be prohibited from using one's own trademark (or similar signs) by legal means. This applies, for example, also when the trademark is used in a third-party internet domain.
Trademark application with or without an attorney?
In principle, anyone can file a trademark application themselves, even without an attorney. However, there is also a lot to bear in mind when filing a trademark application. The subject matter is complex and fraught with various legal challenges. Anyone who files a trademark as a layperson without specialist knowledge always risks a rejection of the submitted trademark application (e.g. due to absolute grounds for refusal). There is also the risk of a subsequent legal dispute with holders of earlier, identical or similar trademarks that were not discovered before the application.
Although it is therefore generally more than advisable to consult a specialised trademark attorney on the subject of trademark registration, this article will touch on the most important information about trademark registration and provide an overview of the following topics:
- Registering a trademark
- Trademark registration requirements
- Trademark registration costs
- Trademark registration process
- After trademark registration
- Trademark registration by specialist attorneys
Schedule your free initial consultation with our specialist attorneys now!
1. Registering a trademark
Once all preparations (such as a thorough trademark search) for the trademark application have been completed, the trademark should be registered to protect against imitators. Depending on the scope of the territory of protection, trademark applications can be filed as follows:
a) Registering a German trademark (DPMA)
A German trademark can be filed with the German Patent and Trademark Office (DPMA) either electronically or in writing (pure word marks also by fax only). For written applications, the office's form must be used.
The German trademark is always the intellectual property right of choice when the trademark is only to be used in the Federal Republic of Germany and correspondingly protected there, and/or the budget for an immediate internationalisation of trademark protection is insufficient. The trademark register is maintained by the German Patent and Trademark Office (DPMA), to which the trademark application must also be directed. The German trademark is comparatively inexpensive. The filing fees start from €300 for three trademark classes. The term of protection begins on the filing date and is 10 years. It can be renewed any number of times.
b) Registering an EU trademark (EUIPO)
The EU trademark can be filed with the European Union Intellectual Property Office (EUIPO) in writing or online.
The EU trademark, also known as the European Union trade mark (formerly the Community trade mark), is a special supranational trademark of the European Union. It offers the opportunity to obtain protection in all EU member states with a single trademark application. The EU trademark register is maintained by the European Union Intellectual Property Office (EUIPO, formerly OHIM). Compared to the impressive size of the territory of protection, registering an EU trademark is very inexpensive. A single trademark class can be filed from €850. If the use of the trademark is already planned internationally – in other words, if the sale of the product/service offering in other European countries is envisaged from the outset – a EU trademark should be registered. EU trademark protection can already be cheaper than registering national trademarks even when use of the trademark in only two or three member states is intended (e.g. Germany, Austria and the Benelux countries). The term of protection, as with the German trademark, begins on the filing date and is 10 years. It can be renewed any number of times, as with the German trademark.
c) Registering an international trademark (WIPO)
International trademark applications via the WIPO must be filed in writing using the relevant WIPO forms at the trademark office of the base trademark, which forwards the application to the WIPO after formal examination.
With an international trademark application under the Madrid System at the World Intellectual Property Organization (WIPO), protection for an already filed or registered trademark – the so-called base trademark – can be extended to over 100 other countries (including the USA, Russia, China and Japan). However, the international trademark application does not lead to the registration of a supranational trademark. Rather, the applicant receives protection under the respective national trademark laws, but only needs to submit a single application for this. This considerably simplifies the effort involved in international trademark protection. The costs of the international trademark application vary greatly depending on the territories of protection claimed. The WIPO provides a cost calculator online for this purpose. In addition, a processing fee is charged by the respective trademark office of the national base trademark. The term of protection of the international registration is 10 years and can be renewed by this period any number of times.
2. Trademark registration requirements
The registration of a trademark must meet certain formal requirements or minimum requirements in order to be legally recognised as a trademark application and to be awarded the filing date as the priority date. It must contain the following information:
- specific applicant details,
- the representation of the trademark,
- the list of goods and services, and
- for international trademark applications, the territories of protection.
In principle, trademark owners can be a natural person (private individual), a legal entity or a legally capable partnership. When representing the trademark, it must be noted that the trademark is protected only as it was filed. Later changes to the representation of the trademark are not permitted. Nor is subsequent expansion of the list of goods and/or services permissible.
3. Trademark registration costs
The costs of a trademark application consist of the official filing fees at the respective trademark offices and, if an attorney is engaged for the trademark application, the attorney's fees. The respective official costs of a trademark application can be found in the following table:
Official costs of trademark registration:
German trademark
- Filing fee: €300.00 (including the class fee for up to three classes), €290.00 for electronic filing
- Class fee: €100.00 (for each class from the fourth class onwards)
- Accelerated examination of the application: plus €200
EU trademark
- Filing fee: €850.00 (including the class fee for one class)
- Class fee: €50 for the second class, €150 for each additional class
- Accelerated examination of the application: free of charge (Fast Track procedure, if prerequisites are met)
International trademark registration
- Filing fee: 1. Processing fee for the office of the base trademark: DPMA = €180, EUIPO = €300 2. WIPO base fee for a new application without colour representation = CHF 653
- Class fee: fees are calculated based on the national filing fees of the target countries (cost calculator)
- Accelerated examination of the application: no accelerated examination possible
The legal fees for a trademark application can vary depending on the type of trademark to be filed, the research effort and the number of classes. For the (simple) trademark application of a German or EU trademark, we as a specialised trademark law firm are happy to provide you with fixed-fee offers.
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4. Trademark registration process
The trademark registration process for the German trademark and the EU trademark generally involves the following steps:
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Development of a trademark strategy, in particular selection of the territory of protection;
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Preliminary examination: absolute protectability of the sign as a trademark;
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Trademark search: identification of potentially older conflicting trademarks, and if necessary, revision of the trademark strategy based on the results;
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Drawing up a list of goods and/or services for the trademark taking into account the results of the trademark search;
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Filing of the trademark application (in writing/electronically);
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Receipt of an acknowledgment of receipt for the trademark application (in writing/electronically, depending on the form of filing);
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Payment of the trademark application costs
- for the German trademark within three months of filing the trademark application,
- for the EU trademark within one month of filing the trademark application (basic fee).
Examination of the trademark application at the trademark office:
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Examination of the minimum requirements for the trademark application (applicant, trademark representation, goods and/or services list), then allocation of a filing date;
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Examination of the absolute protectability of the sign as a trademark
If positive (+)
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Registration/publication of the trademark in the trademark register and commencement of the three-month opposition period for third parties
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Conduct of the opposition procedure if applicable, upon receipt of a third party's opposition
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Without opposition or if opposition is unsuccessful: trademark protection
If negative (-)
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Objection notice from the DPMA/EUIPO with a deadline for a response, and if applicable (partial) withdrawal of the trademark application
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Rejection decision/refusal resolution from the DPMA/EUIPO with the possibility of the trademark applicant filing a review/appeal
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If the review/appeal procedure is successful: trademark protection
5. After trademark registration
Once the trademark has been successfully filed and registered, the trademark owner enjoys its privileges: the trademark now grants an exclusive right. Only they may mark their products with their trademark. If a third party uses the trademark or a confusingly similar sign, the trademark owner can demand an injunction (e.g. by means of a cease-and-desist notice) and also assert claims for disclosure and damages. These claims can also be enforced through the courts if necessary.
The Registered Trade Mark symbol
In principle, the trademark owner may attach the popular ® symbol to their trademark after its registration. The symbol is used as an abbreviation for "Registered Trade Mark". With it, one makes clear that the respective sign is entered in the trademark register and correspondingly protected as a trademark. The ® symbol should, however, be used with caution. It may only be attached to signs that are protected as a trademark in exactly that form. Otherwise, one acts deceptively and in an anti-competitive manner. It is not permitted, for example, to attach the ® symbol to a word sign when the term is in reality only protected within a figurative mark that also contains other elements.
In case of doubt, consult our competent attorneys.
Cancellation of the trademark for non-use
The right in a trademark also comes with an obligation to use it. The trademark must actually be used in a trademark-identifying manner for the goods and/or services for which it was filed. The trademark owner has five years from registration to do this (the so-called grace period for use). If the trademark is still not used after five years, it can be cancelled again for lapse.
The trademark owner is advised to permanently monitor the trademark register after successful trademark registration for subsequent similar trademark applications and trademark registrations, in order to be able to file an opposition against conflicting, later trademarks in a timely manner if necessary.
6. Trademark registration by specialist attorneys
As a specialist law firm for trademark law, we at ab&d Rechtsanwälte have already successfully filed and defended hundreds of trademarks. We have expertise in trademark registration built up through many years of practice. On request, we accompany our clients throughout the entire trademark registration process and take over the management and monitoring of the entire trademark portfolio. Our services include in particular:
- Development of a trademark strategy, presentation of possible trademark forms and registration territories, and explanation of incurring filing costs, along with an initial forecast of the registrability of the desired sign;
- Trademark identity search;
- If desired, more extensive trademark searches such as similarity searches in the registers of the trademark offices for selected classes and evaluation of the search results;
- Assessment of protectability (relative and absolute grounds for refusal, in particular distinctiveness and need to keep free);
- Drawing up the individual goods and services list (by classes);
- Preparation of the trademark application and transmission of the application to the competent trademark office DPMA, EUIPO or WIPO
- Management of correspondence with the respective trademark offices.
Trademark applications for German trademarks and EU trademarks can generally be offered at fixed prices. Please contact us and you will receive an individual offer.
