Trademark Law

Applying for a trademark – properly and strategically

A trademark registration is more than filling out a form. Anyone who proceeds without research and strategy risks rejection, opposition or a trademark that ultimately cannot be enforced. We accompany you from the initial idea to the registered trademark.

Step 1: Strategy & trademark form. Word mark, figurative mark, combination? What can actually be protected – and what cannot?

Step 2: Research. Do older trademarks exist that could conflict? We check for identity and similarity – across Germany, across the EU, internationally.

Step 3: Application. We choose the right territory (DE / EU / IR trademark), prepare the list of goods and services and handle all correspondence with the trademark office.

Step 4: Support through to registration. Office actions, oppositions, queries from the office – we respond and keep you informed.

Territory: DE, EU or international?

German trademark (DPMA) – suitable for purely nationally active companies or as a first step.

EU trademark (EUIPO) – protects in all EU Member States with a single application. The first choice for most of our clients.

IR trademark (WIPO) – for international protection beyond the EU.

Trademark monitoring – protection only really begins after registration

At DPMA alone, over 6,000 trademarks are applied for each month, plus thousands of EU and international applications. The trademark offices do not check whether new trademarks infringe existing rights. You must do that yourself. Those who do not monitor, lose.

The opposition procedure at the trademark office must be initiated within 3 months of registration of the younger trademark – anyone who misses this deadline is at a significant disadvantage.

We continuously monitor the relevant trademark registers (DPMA, EUIPO, WIPO) as well as commercial registers, online marketplaces and domain registrations. If a potential conflict is discovered, we assess it legally and discuss the appropriate course of action with you.

When a trademark is infringed

A trademark infringement occurs when a third party uses an identical or confusingly similar mark for the same or similar goods or services – without your consent. Typical situations:

• A competitor uses a similar brand name or comparable logo.
• Online retailers offer products under your brand that do not come from you.
• Domain squatting: third parties register domains corresponding to your trademark.
• Platforms such as Amazon list counterfeits under your brand name.

Our tools

Cease-and-desist letter. The first step towards out-of-court enforcement. We formulate precisely, set appropriate deadlines and prepare the next steps.

Preliminary injunction. Swift judicial protection – typically within one to three weeks. It is crucial that no time is lost: those who wait too long forfeit urgency.

Trademark infringement litigation. When out-of-court means are insufficient, we go before the Regional Court – and represent you through all instances.

Damages and disclosure. We enforce your damages claims and gain insight into the extent of the infringement – the basis for a substantive claim.

Settlement instead of litigation – when it makes sense

Not every trademark conflict has to end in court. We assess at every stage whether a settlement – for example through a coexistence agreement – is the commercially wiser solution. And then we negotiate fairly but consistently.

What is at stake with a cease-and-desist letter

A trademark cease-and-desist letter typically contains four demands:

• Injunction
• Disclosure
• Damages
• Reimbursement of cease-and-desist costs

Anyone who signs the attached cease-and-desist undertaking without review often commits to more than necessary – with long-term consequences. We assess whether the cease-and-desist letter is justified, negotiate a modified undertaking where appropriate and simultaneously prepare legal steps in case the other side does not back down.

Protective brief – acting preventively

Anyone who anticipates being the target of a preliminary injunction can respond early: a protective brief filed in the central protective brief register gives the court the opportunity to hear both sides before a decision – and in many cases prevents the issuance of an injunction without a hearing.

Defending opposition and invalidity proceedings

If opposition is filed against your trademark or an application for invalidity is made, partial or total loss of your trademark is at risk. We assess the opponent's prospects of success, formulate the defence and conduct the proceedings before DPMA, EUIPO or court.

Why ab&d

Dr. Norman Dauskardt is a Specialist Attorney for Intellectual Property Law and has conducted numerous trademark disputes in recent years – on both sides. We know how trademark offices decide, which arguments count and where the weak points of an attack or defence lie.