· An article by Dr. Norman Dauskardt

1. Before the Trademark Search: Choosing the Territory of Protection

Before starting the trademark search, the question of which territory you actually want to protect your trademark in should be clarified. Because depending on the choice of territory, the trademark search must also be conducted in the relevant trademark registers in order to accurately determine whether a trademark in that territory conflicts with another trademark already filed.

There is (unfortunately) no worldwide trademark yet; in principle, every sovereign state has its own trademark law. A trademark only enjoys legal protection where it has been filed for registration (the so-called principle of territoriality). The question of territory is therefore correlated with the question of where you want to use the trademark. The territorial scope of protection also depends on the budget available for trademark protection: the larger the territory of protection, the higher the costs of the trademark application(s). From a German perspective, three trademarks are generally of interest: the German trademark, the EU trademark at the European level, and the international trademark registration under the Madrid System.

2. Checking the Trademark Name – Is the Sign Protectable?

Once clarity has been gained on the desired territory of protection, the next step is to check the trademark name to determine whether the sign is even protectable in that territory. Not every sign can or may be protected as a trademark. The trademark office examines registrability during the application procedure on its own initiative and rejects the trademark if it identifies an absolute ground for refusal.

Which trademark names can be protected?

In principle, a wide variety of sign types are protectable as trademarks, as long as they are generally suitable for "marking" products, such as:

  • Words and personal names as word marks (e.g. "Porsche", "Boss", "Siemens"),
  • Slogans as word marks (e.g. "Vorsprung durch Technik" by Audi)
  • Illustrations and logos as figurative marks (e.g. the three stripes of the adidas logo or the bitten apple of the technology company Apple),
  • Letters and sequences of letters (e.g. N-TV, CNN),
  • Numbers or combinations of numbers (e.g. 4711),
  • Combinations of the above marks, in particular word/figurative marks,
  • Sound marks (e.g. the Intel jingle or the Telekom jingle),
  • Three-dimensional designs, in particular product shapes (e.g. the Rocher ball),
  • and even abstract colour marks (e.g. the colour blue for Deutsche Bank).

Which trademark names cannot be protected?

For a sign to be registered as a trademark, it must, among other things, be distinctive and must not:

  • describe the products for which it has been filed,
  • be customary as a designation for the products,
  • deceive as to the nature, quality or geographical origin of the products,
  • violate public policy or accepted principles of morality, or
  • contain official state symbols such as state coats of arms and state flags.

For each of the aforementioned grounds for refusal, there is an almost unmanageable number of administrative decisions and court rulings. The following examples illustrate the grounds for refusal:

The sign "Auto" (car) for the goods "passenger car" cannot be protected as a trademark because it directly describes the goods and it must not be permitted to exclude competitors from the permissible use of descriptive terms. The same applies to the trademark "Apfel" (apple) for the goods "apple juice". However, the trademark "Apple" can be protected for computers, because the word "apple" has no descriptive meaning in that field. Incidentally, the German Patent and Trademark Office (DPMA) assumes that the German public understands the English language well and can translate many English words, so that descriptive terms for goods in English are usually also not registerable as trademarks.

Mere customary advertising statements and laudatory claims, such as "Value for money!", "Hot", "Brilliant" or "The Best" are also not protectable, because consumers do not recognise these as trademarks. They lack distinctiveness.

Trademarks found to be deceptive and therefore not registerable include, for example, "LACTOFREE" for the goods "lactose" or "BEST MEDICAL" for the goods "shoes".

The word sequence "READY TO F**K" within a word/figurative mark violates accepted principles of morality, as the Federal Court of Justice decided in 2012, and may not be registered. In general, it can be remembered that trademarks containing morally problematic subjects should at least be intensively examined as to whether they violate public policy or accepted principles of morality.

Why is it important to check the trademark name?

Trademark offices are strict in their rejections, and trademark applications frequently fail on the ground of lack of distinctiveness or due to their product-descriptive content. The trademark offices examine the trademark name against these two grounds for refusal very strictly. A merely indirect descriptive statement in the trademark can already lead to refusal. Legal advice should be sought early, already in the conceptual phase of the brand identity.

3. Trademark Search for Other Protected Conflicting Signs

The trademark search has the aim of identifying earlier protected conflicting signs. Neither the German Patent and Trademark Office (DPMA) nor the European Union Intellectual Property Office (EUIPO) examine during the trademark application procedure whether there are earlier protected trademarks that stand in the way of the applicant's trademark. The trademark applicant should therefore, ideally before filing the trademark application, check in the course of a thorough trademark search whether the trademark can be protected.

This is crucial for the future of one's trademark idea and the resulting brand strategy, as trademark law grants the holder of the earlier trademark an exclusive right. They can therefore prohibit the use of later identical or similar signs for identical or similar goods and services. Consequently, they can also take action against the application of identical or similar later trademarks for identical or similar products. If there is a likelihood of confusion, the holder of the earlier trademark can file an opposition against the trademark application and issue a cease-and-desist notice to the applicant. This then threatens cancellation of the trademark as well as an injunction against use and damages. Statistically, an opposition is filed against one in five trademark applications.

How is a trademark search conducted?

An online trademark search in trademark registers accessible to everyone on the internet provides initial indications as to whether there are problematic earlier trademarks:

A distinction must be made between identity searches and similarity searches.

The identity search examines whether the planned trademark is still free or already exists in the relevant trademark register and has therefore already been protected by third parties. This type of trademark search is necessary, but not sufficient for effective protection, since even merely similar existing intellectual property rights (in particular trademarks and company identifiers) can conflict with one's own trademark idea. Therefore, in a subsequent similarity search, all variations of the planned trademark should also be compared against the register.

In the similarity search, attention must be paid not only to the similarity to a trademark, but also to which trademarks are registered for similar products in the same or similar classes (the so-called Nice Classification). The key point in examining such collision risks is the so-called likelihood of confusion (cf. § 14 MarkenG, § 42 MarkenG as well as Art. 8 EUTMR, Art. 9 EUTMR). In simplified terms, a likelihood of confusion exists whenever the consumer, due to the similarity of the signs on the one hand and the similarity of the goods and services on the other, might assume that the goods and services could originate from the same company (or from affiliated companies).

A prerequisite for conducting a comprehensive trademark search including a similarity search is therefore the determination of the goods and services, at least according to the appropriate Nice classes, for which the future trademark is to be protected. Only in this way can it be accurately examined whether identical or confusingly similar signs are already protected for other market participants in the areas in which the trademark is to be used.

4. After the Trademark Search: Drawing Up the List of Goods and/or Services

Once the protectability of the desired trademark has been examined, the list of goods and services to be attached to the trademark application must be drafted. Since in principle a trademark is only protected for the goods and services that appear in the list of goods and/or services, the greatest care should be taken in preparing this list accurately.

The rule here is: as much as necessary, but as little as possible. As many goods and services as are necessary should be specified so that the trademark enjoys comprehensive protection for the entire planned business activity. On the other hand, the list should contain as few goods and/or services as possible, because the narrower it is, the lower the risk of conflict with earlier trademarks. Furthermore, a trademark must be used for the goods or services for which it is registered (obligation to use after the expiry of the 5-year grace period for use). Otherwise it can be (partially) cancelled. It is therefore inadvisable to apply for a trademark broadly covering all goods or services in a trademark class or always using the class headings.

Goods and services in the NCL and the eKDB

All goods and services are divided into a total of 45 classes under the Nice Classification (NCL). Classes 1 to 34 are classes for goods. Classes 35 to 45 are classes for services. The NCL comprises internationally established lists of specific goods and services, comprising approximately 9,000 terms in total.

Since the terms for goods and services contained in the NCL are not sufficient to cover the entire spectrum of goods and services available on the market, the European Union Intellectual Property Office (EUIPO) and many national trademark offices in Europe have created a unified classification database (eKDB) with approximately 70,000 goods and services terms, which can be researched here.

It is also permissible to use terms for goods and services that are not contained in the NCL or the eKDB. In this case, the responsible trademark offices examine the chosen terms for their specificity and correct classification, which can delay the overall trademark application process. It is therefore generally advisable to choose officially confirmed goods and services terms.

5. Advantages of a Professional Trademark Search by an Attorney

If you have discovered one or more similar trademarks during your own trademark search, it is always advisable to contact a trademark attorney. This allows the likelihood of a successful application to be better assessed and unnecessary official fees resulting from a refusal decision to be avoided. We strongly advise against filing a similar trademark "on the off chance" when a conflict (and consequent legal dispute) is already foreseeable.

When a certain risk of conflict exists, extensive expertise in trademark law is indispensable for the subsequent strategic approach. In certain cases, the list of goods and services for the trademark to be applied for can be narrowed to minimise the risk. In other cases, it may make sense to contact the holder of the earlier trademark in order to conclude a delimitation agreement or a coexistence agreement. In yet other cases, a cancellation request can be filed against an unused earlier conflicting trademark. But even when no conflict is foreseeable, it is advisable to have a professional trademark search conducted by an attorney in order to be able to reliably assess the legal trademark conflict risk at all.

Would you like to have a legally secure trademark search conducted by an attorney?

As a specialist law firm in trademark law, we at ab&d Rechtsanwälte are happy to assist you with our many years of expertise!

Get advice now