Representation before German Patent and Trademark Office (DPMA) and German trademark courts

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

However, a German trademark 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”. As your trademark lawyer from Germany, I want to mention that those cases are rather rare.

Normally though a registration is initiated by filing a trademark application. In foresight I as a trademark attorney from Germany would advise you to conduct a trademark search before filling the necessary paperwork to ensure that your trademark won’t clash with an already existing one.

In principle, words, names, pictures, letter combinations, numbers, acoustic sound sequences, three-dimensional shapes, product packaging, colour combinations, tactile marks, and theoretically also smells can be protected as trademarks. As a trademark attorney from Germany, I know that trademarks, however, must be able to be represented graphically which can pose a problem in relation to smells. If you should face such difficulties, don’t hesitate to contact me and I will help you as your trademark lawyer from Germany, to protect your trademarks in any shape or form. 

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.

• A trademark lawyer from Germany 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 or execute a trademark search. 
• Other than that, a trademark lawyer in Germany is able to create successful strategies for the protection of your trademark. 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 a trademark attorney, like me, from Germany.

Do you need a trademark lawyer from Germany 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 search for legal support in order to avoid disadvantages, e.g. by failing to raise a non-use objection.
• It is also helpful to hire a trademark attorney from Germany 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 with cease-and-desist declaration. 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 trademark lawyer from Germany. 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 trademark lawyer in Germany for advice and representation in cases 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.