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Attorney for trademark law Thomas Seifried has over 20 years of experience in trademark law and has also been a specialist attorney for intellectual property since 2007. He is an author of specialized books and has conducted many successful proceedings before courts and the trademark offices.
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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), for example, company logos, work titles and geographical designations of origin (e.g., "Made in Germany"). Under certain circumstances, a domain can also be protected under trademark law. German trademark law and national trademarks (registered trademark, use trademark, guarantee trademark, collective trademark, geographical designations of origin, corporate designations and work titles) are governed by the MarkenG. This is based to a large extent on the European Trademark Directive. The regulations on the uniform European Union trademarks are governed by the Union Trademark Regulation (UMV).
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.
When do you need a lawyer for trademark law?
Do you need a trademark attorney for trademark protection?
- An attorney for trademark law is already helpful for the trademark application at an office, but not absolutely necessary. However, such a lawyer can already provide valuable information in order to avoid a rejection of the trademark application. A trademark attorney can, for example, check whether a sign (logo, designation, etc.) is protectable under trademark law at all or on the scope of protection of word/figurative marks. Especially in the case of compound trademarks, he can help to point out non-distinctive or misleading components. He can also point out the appropriate trademark protection strategy in the case of applications for several countries.
- Before filing a trademark application, it is imperative to conduct a trademark search. This is because the very filing of a trademark application can cause a trademark infringement. In order to be able to carry out a trademark search at all, one must know which earlier rights can collide with a trademark to be applied for. This is not possible without in-depth knowledge of trademark infringement.
Do you need a trademark attorney in trademark infringement cases?
- In trademark opposition proceedings and cancellation proceedings before the offices (DPMA, EUIPO) and the Federal Patent Court, the engagement of a lawyer is not mandatory. However, it is strongly recommended to do so in order to avoid legal disadvantages, e.g. by failing to raise a non-use objection.
- It is also helpful to hire a trademark attorney for advice and representation in cases of trademark infringement and trademark piracy. It is true that a patent attorney can also pursue trademark infringements out of court with a warning letter wirh cease-and-desist declaration in trademark law. However, if the opponent does not issue a cease-and-desist declaration with a penalty clause and the trademark infringement becomes pending before a court by way of a lawsuit or preliminary injunction, it is imperative that you hire a lawyer. This is because patent attorneys are not allowed to appear before the competent (district) courts without a lawyer.
- It is also helpful to hire a lawyer for advice and representation in the case of infringements of company trademarks, company names and work titles and trademark infringements through Google Adwords or search engine optimization (SEO), as well as in the case of
- advice and representation in the case of geographical designations of origin (e.g. "Made in Germany").
- Whether there has been a breach of a cease-and-desist agreement following the submission of a cease-and-desist declaration with a penalty clause can often only be reliably assessed by a lawyer for trademark law. He can check whether a cease-and-desist agreement has been concluded at all and whether the contractual penalty claim is justified.
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.
This might also interest you:
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Everything you need to know about a warning letter in trademark law
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When is there a trademark infringement of a eu or german trademark and what are the consequences?
Cancellation of a German or an EU trademark at the EUIPO and DPMA
"Distinctive character" in trademark law
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