German Trademark Attorney, Trademark Lawyer

German Trademark Attorney, Trademark Lawyer

Lawyer for trademark law

Professional legal advice for trademarks

A lawyer for trademark law supports you with the trademark application. Because not only the use, but already the registration of a trademark can represent an expensive trademark infringement by trademark application. The help of a trademark lawyer is also necessary when it comes to the question of whether a trademark infringement has occurred. There are often complex questions to be answered here, such as whether a sign has been "trademarked," whether there is a likelihood of confusion, or whether the "exhaustion principle" permits the use of another's trademark.
Legal representation in trademark matters

At the latest when it comes to court proceedings in trademark law, for example in preliminary injunction proceedings, you absolutely need a lawyer who is authorized to represent you before the district courts. Attorney-at-law Thomas Seifried has been an attorney-at-law for intellectual property protection since 2007 and specializes in trademark law. He has over 20 years of experience in trademark law and has conducted several hundred proceedings with many demonstrable successes, before district courts and higher regional courts, the offices (EUIPO, DPMA), the Federal Patent Court and the Court of Justice of the European Union (CFI).

Court representation in trademark matters

At the latest when it comes to legal proceedings, such as preliminary injunction proceedings, you absolutely need a lawyer who is authorized to represent you before the district courts. Thomas Seifried, German attorney at law ("Rechtsanwalt"), specializes in trademark law as an intellectual property lawyer. He has over 20 years of experience in trademark law and has conducted several hundred proceedings with notable successes, before district courts and higher regional courts, the offices and the Court of the European Union (EuG).

Any questions?

Free initial assessment of your case

Give us a call or send us your message by email or via our contact form.
Your contact: Thomas Seifried, lawyer and specialist lawyer for intellectual property rights (Fachanwalt fuer gewerblichen Rechtsschutz).

Call us for a free initial assesment of your case

SEIFRIED IP
Eschersheimer Landstr. 60 - 62
60322 Frankfurt am Main (Westend)

+49 69 91 50 76 0

info@seifried.pro

Practitioner's guide to advertising law zum Werberecht by Thomas Seifried (in German)

„Rechtsicher werben", 180 Seiten, XchangeIP Verlag, in bookstores or at Amazon

Praktikerhandbuch für die Modeindustrie von Thomas Seifried und Dr. Markus Borbach

„Schutzrechte und Rechtsschutz in der Mode- und Textilindustrie", 368 Seiten, erschienen 2014 in der dfv-Mediengruppe

Free ebook on cease-and-desist letters 2021 (in German) as ePUB or PDF

Everything about warning letters and cease-and-desist declarations with penalties

Trademark law

In the narrower sense, trademark law refers to the law governing trademarks as signs or designations identifying goods or services. In a broader sense, it includes all signs regulated by the German Trademark Act (Markengesetz), including, for example, company names and work titles.

 

What is a trademark?

Trademark as a legally protected sign with a right of interdiction

A trademark is a legally protected sign (designation, logo, possibly also a color). It serves to distinguish the goods or services of one company from the goods or services of another company. A trademark is intended to indicate that the goods or services originate from a particular company (origin function). In contrast to a company mark, which identifies a company or part of a company (e.g. "Amazon"), a trademark always identifies a product (goods or services). A trademark gives its owner the right to use the protected or a similar sign for identical or similar products.

However, a logo or designation must also be "used as a trademark" for this use to be a trademark infringement in the first place.

Types of trademarks

Trademarks can be distinguished, for example, according to their geographical area of protection, e.g. as a

  • Registered German trademark
  • German utility mark
  • EU trade mark (the "European trademark"; formerly: Community trademark)
  • IR trademark, internationally registered trademark

Regardless of the geographical scope, a

  • position mark

a sign claiming protection for a specific position on a product. A

  • cerification mark, also known as a EU certification  mark, in turn, guarantees certain characteristics of a good or service wether a
  •  collective mark or a EU collective mark indicates that the goods or services protected by that mark originate from members of an association, and may only be used by them.

Trade mark filing and protection

Trade mark protection in Germany is obtained by registering a sign in the trade mark register of the German Patent and Trade Mark Office (DPMA). More or less uniform trade mark protection in the 27 member states of Europe is obtained by registering an EU trade mark with the European Union Intellectual Property Office - EUIPO.

The international registration of a German trade mark or an EU trade mark at WIPO gives the trade mark the same protection in the member states of the Madrid Agreement as a trade mark of the respective member state. Currently, 84 states and confederations of states are contracting parties to the Madrid system, including the European Union.

However, a German trade mark can also come into existence through use alone, cf. section 4 no. 2 German Trademark Act (MarkenG). The prerequisite for this is that the sign in question has acquired "reputation". In practice, these cases are very rare.

Registration is preceded by filing a trade mark application. A trade mark search is indispensable before filing the application. This is because the filing of an application for a trade mark that conflicts with an earlier trade mark already gives rise to the risk of first infringement of a trade mark right.

What can be protected as a trademark?

In principle, words, names, pictures, letter combinations, numbers, acoustic sound sequences, three-dimensional shapes, product packaging, color combinations, tactile marks, and theoretically also smells can be protected as trademarks. Trademarks, however, must be able to be represented graphically. This has not yet been achieved in the case of the latter. In any case, the filing of a chemical formula is not sufficient. Descriptive indications or other absolute grounds for refusal are not registrable as trademarks. Furthermore, the trademark may not be deceptive about characteristics of the goods/services, contrary to public order or contain official coats of arms or seals. The use of official coats of arms, flags, seals, test marks is also an administrative offense.

 

Origin of trademark protection

Trademark protection in Germany is obtained by registering a sign in the trademark register of the German Patent and Trademark Office. A more or less uniform trademark protection in the 27 member states of Europe arises through registration of an EU trademark at the European Union Intellectual Property Office - EUIPO (formerly: Office for Harmonization in the Internal Market - OHIM/OAMI).

By registering a German trademark with WIPO, the German trademark receives the same protection in the member states of the Madrid Agreement as a trademark of the respective member state. Currently, 84 states and confederations of states are parties to the Madrid system, including the European Union.

However, a German trademark can also come into existence through use alone, see Sec. 4 No. 2 German Trademark Act (MarkenG). The prerequisite for this is that the sign in question has acquired "reputation". The cases are practically very rare.

Requirements for the protection of a trademark

The most important requirement for protection of a trademark is distinctiveness. Descriptive indications, on the other hand, cannot be registered as a trademark. In addition, the trademark may not be deceptive as to the characteristics of the goods/services, be contrary to public policy or contain official coats of arms or seals. The use of official coats of arms, flags, seals, test marks is also an administrative offense and thus punishable by law. Official test marks generally bear a coat of arms, for example the German federal eagle.

In the media as trademark attorney

Attorney Thomas Seifried is the contact person for well-known media in questions of trademark law, competition law and Internet law.

What we can do for you

We advise and represent in the entire field of trademark law, labeling law and domain law. We search for conflicting trademarks and distinctive signs and constantly advise and represent in infringement cases before district courts and in appeal proceedings before the higher regional courts as well as in application, opposition and nullity proceedings before the DPMA, the EUIPO, the Federal Patent Court and the Court of the European Union.