Trademark Registration Germany or Europe

First of all, you do not need a trademark to use a "sign", e.g. a name or logo. It certainly does not follow from the registration of your trademark that you can use it without risk. This is because a trade mark office (DPMA or EUIPO) only examines the absolute grounds for refusal, but not the relative grounds for refusal. Accordingly, the application for a trademark itself can already constitute an infringement of trademark rights.

Rather, a trademark is a prohibition right: the owner of a trademark can prohibit others from using the trademark identically or similarly. Anyone who sets up a business and wants to sell goods or services under a certain sign is well advised to register this sign as a trademark in the countries in which they want to use it as a trademark. This is the only way to prevent others from using this trademark.

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 the European Union is obtained by registering a EU trade mark with the European Union Intellectual Property Office (EUIPO).

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

1) We exclusively advise and represent entrepreneurs within the meaning of § 14 BGB.

Trademarks can be differentiated according to their geographical area of protection, e.g. as

•     German registered trademark
•     German utility mark (rare)
•     European Union trademark (the "European trademark"; formerly: Community trademark)
•     IR trademark, internationally registered trademark

Trade marks can also be distinguished by their elements:

•     Single-letter trademarks consist of only one letter. Their scope of protection is limited, so there is rarely a likelihood of confusion with single letter marks.
•     Word marks consist of only one or more words or signs without graphic elements
•     Word/figurative marks (terminology of the DPMA and German case law) or figurative marks (terminology of the EUIPO, also for marks with word elements) are marks that contain graphic elements in addition to words or signs. The scope of protection of word/figurative marks is often less than their owners believe.
•     Pure figurative marks do not contain any words or signs.

• Abstract color marks (rare!) claim protection for a specific color for specific goods or services.
• A position mark claims protection for a specific position on a product.
• A certification mark, also known as a European Union certification mark, in turn guarantees certain characteristics of a product or service.

Trademarks can also be distinguished according to the degree of recognition. A

•    well-known trademark

has a significantly broader scope of protection than other trademarks.

• Step 1: Determine the type of trademark you want to register
• Step 2: Define the goods or services for which your trademark is to be protected. These determine the list of goods and services of the trademark.
• Step 3: Check the protectability (i.e. distinctiveness) of the trademark for these goods and services
• Step 4: Determine the geographical areas in which your trademark is to be protected. This will determine which trademark(s) you need to register.
• Step 5: Carry out a trademark search - do older identical or similar rights stand in the way of a trademark registration?
• Step 6: Select a suitable trademark office: German trademark, EU trademark, Benelux trademark, IR trademark, national foreign trademark?
• Step 7: Apply for a trademark

A special feature of the EU trademark is "seniority" (Art. 39 f. EUTMR): The proprietor of an EU trademark who is also the proprietor of an identical, earlier national trademark can declare to the EUIPO that he claims the "seniority", i.e. the seniority (filing or priority date), of the national trademark. The purpose of seniority: The trademark owner should not be disadvantaged by not renewing or renouncing the national trademark. Seniority means that the national trademark lives on in the EU trademark from the date of application. This is intended to prevent multiple protection of the same sign. This saves the trademark owner time and money. A prerequisite for the effect of seniority is therefore that the trademark owner actually surrenders his national trademark, i.e. renounces the trademark or allows it to lapse (i.e. expire) (see Art. 39 III EUTMR).

Exception: Earlier trademark invalid or expired

However, the earlier seniority of the national trademark cannot be claimed if this earlier trademark is declared invalid or revoked (Art 39 IV EUTMR).

If a trademark proprietor surrenders an earlier national trademark or allows it to lapse, but the trademark could have already been revoked at that time due to non-use, the EU trademark loses the seniority of the earlier trademark, see Art 4 of Directive (EU) 2015/2436 (EU Trademark Directive). The same applies if the earlier national trademark is declared invalid. The revocation or invalidity of the earlier national trademark must have occurred at the time of the surrender or expiry (BGH of 8.11.2018 - I ZR 126/15 - PUC II; ECJ of 19.4.2018 - C-148/17 - Peek & Cloppenburg Hamburg/Peek & Cloppenburg Düsseldorf).

The German Federal Court of Justice (Bundesgerichtshof - BGH) defines distinctiveness thus (BGHZ 167, 278, para 18 - FUSSBALL WM 2006):

"Distinctiveness is the inherent (concrete) capacity of a sign to be perceived by the public as a means of distinguishing the goods or services in question as originating from a particular company and thus distinguishing those goods or services from those of other companies."

The essential function of a trade mark is to guarantee to the consumer or end user the identity of the origin of the goods or services designated by the mark by enabling him to distinguish those goods or services from goods or services of a different origin without any possibility of confusion. By virtue of its distinctive character, a trade mark may identify the product or service covered by it as originating from a particular company and thus enable that product or service to be distinguished from those of other companies (ECJ, Judgment of. 16.9.2015 - C-215/14 - Société des Produits Nestlé/Cadbury UK Ltd).

Distinctiveness therefore means: a sign can be perceived as an indication of origin at all. The sign should be able to identify the goods or services concerned as originating from a particular company.

Distinctiveness is examined independently by the German Patent and Trademark Office (DPMA) and the European Union Intellectual Property Office (EUIPO) for each of the goods or services applied for. If the distinctive character is lacking for a product, this indicates the lack of distinctive character for the associated service (BGH, of 13. 09.2012, I ZB 68/11 - Deutschlands schönste Seiten). Criteria other than distinctiveness are irrelevant. It is therefore irrelevant, for example, a "certain excess of imagination" of the sign applied for (ECJ of 21.10.2004, C-64/02 - DAS PRINZIP DER BEQUEMLICHKEIT). Designations such as "super" or "ideal" are usually not distinctive.

Example
"SUPERgirl" is not registrable for many goods and services (BGH GRUR 2011,230 - SUPERgirl)

is descriptive for "outerwear" and therefore not protectable as a word and without graphic components (OLG Frankfurt v. 4.10.2012 - 6 U 217/11).

Example Federal Patent Court (BPatG) v. 23.11.2010 - 27 W (pat) 16/10 - MATCHWEAR:
The trademark applicant applied for registration of the designation "MATCHWEAR" as a word mark in the trademark register at the German Patent and Trademark Office (DPMA). The applicant sought protection for, among other things, "clothing, jewelry, jewelry goods as well as textiles and bedding textiles." The DPMA therefore refused registration. It considered the designation "MATCHWEAR" to be descriptive and thus not registrable: "MATCHWEAR" meant "competition clothing" and was therefore merely descriptive. The Federal Patent Court ruled in favor of the DPMA, stating that "MATCHWEAR" lacked distinctiveness (see Sec. 8 II No. 1 MarkenG). In addition, "MATCHWEAR" was a descriptive indication ineligible for protection under Section 8 II No. 2 MarkenG. Therefore, the trademark could not be registered. Only for the field of "bed textiles" the designation is not descriptive and thus only registrable for bed textiles.

The more original and individual a designation is for the product in question, the "stronger" it is. The distinctiveness of a brand can increase if the brand becomes better known, for example through intensive advertising. The brand then becomes "stronger," so to speak. A designation that is descriptive in itself and would be ineligible for protection can therefore nevertheless be registered as a trademark if it has acquired "reputation in the trade" (see below). Likewise, a weak or averagely distinctive trademark may have strengthened its distinctiveness through advertising.

Registered trademarks at least weakly original distinctive character

What is registered is considered to be at least weakly distinctive (BGH v. 02.042009 - I ZR 209/06 - POST/RegioPost). Registered trademarks are therefore considered to be eligible for protection. The objection in trademark infringement proceedings that the registered trademark is not distinctive at all and therefore not protectable is therefore unsuitable.

However, a trademark can also lose its distinctive character again if it has become descriptive for the goods or services for which it is protected due to its high degree of recognition.

Example BGH v. 23.10.2008 - I ZB 48/07 - POST II:
The designation "POST" was registered for, among other things, mail delivery services for Deutsche Post AG. Several competitors of Deutsche Post AG filed applications for cancellation against this: They argued that the trademark was now merely descriptive of these services and could no longer be protected. The trademark was initially canceled. However, the Federal Supreme Court referred the case back to the Federal Patent Court, which must now decide whether the descriptive term "POST" for mail delivery is so well known that it is nevertheless understood as an indication of the origin of the service from the company "Deutsche Post AG".

Advertising slogans are not subject to stricter requirements than other designations (ECJ, judgment of 21.10.2004 - C-64/02 - DAS PRINZIP DER BEQUEMLICHKEIT). Ultimately, however, advertising slogans must also be perceived as an indication of the business origin (ECJ, judgment of 12.7.2012 - C-311/11 P Smart Technologies ./. OHIM - WIR MACHEN DAS BESONDERE EINFACH - We make the special simple). A distinctive character was therefore denied by the case law for the designation "We make the special simple" for data recording and measuring devices.

However, the mere fact that a designation or statement can also be understood as an advertising slogan does not allow the conclusion that it is therefore devoid of distinctive character (ECJ v. 21.1.2010 - C-398/08 P OHIM/Audi - Vorsprung durch Technik; cf. also ECJ, order of 11.12.2014 - C-253/14 P - BigXtra, para. 36). Thus, advertising slogans can also be protectable as a trademark if they are distinctive. However, longer word sequences are usually not distinctive.

Example Bundesgerichtshof of 1.7.2010 - I ZB 35/09 - The Vision:
The slogan "Die Vision: EINZIGARTIGES ENGAGEMENT IN TRÜFFELPRALINEN" is not distinctive.

The EUIPO has compiled criteria that speak for a distinctive character of slogans.

Signs or elements of signs which are devoid of distinctive character in a language of the European Union are not protectable as Union trademarks (Art. 7 II UMV; ECJ v. 20.9.2001 - C-383/99 - Baby-dry).

Signs which the German public does not recognize as descriptive are distinctive and protectable as German trademarks. The German public is familiar with Italian terms frequently used in Germany such as "Monte" (BPatG v. 18.05.2022 - 26 W (pat) 28/17 - MONTES/Vino Monte) or "gusto" (BPatG v. 8.12.2022 - 30 W (pat) 533/21 - GUSTA). It does not know terms that are not typically used in Germany, e.g. "Oro" (cf. LG Hamburg v. 18.7.2018 - 312 O 398/16 - OROCHATA).

A trademark must be used before expiration of the initial five-year grace period for use. In the case of the German registered trademark, the period begins as soon as no further opposition can be filed against the earlier trademark or the opposition proceedings have ended (Sec. 26 MarkenG). In the case of the EU trademark, the period begins with the registration (Art 18 UMV). After that, a trademark owner risks serious consequences of non-use.
Repeat trademarks

Each trademark application can start a new grace period for use. For trademark owners who have not seriously used their trademark so far, or who never intended to do so because the trademark was only intended to serve as a basis for warnings and claims for damages, the renewed application of the trademark for the same goods or services may be tempting. Now the trademark owner is again spared proof of use for five years. Case law takes a differentiated view of reapplication. If the newly filed trademark is not identical with the older one, e.g. because the younger application concerns a word-figurative trademark whereas previously a pure word trademark was filed, there is no repetition application. The same applies if the geographical area does not match. Therefore, it is not a repeat application if, after filing a German trademark application, an identical sign for identical products is filed as an EU trademark (see BGH v. 24.11.2005 - I ZR 28/05 - GALILEO).

The case law on repeat trademarks

The Federal Patent Court is reticent on the question whether a repeat application is an indication for the ground for cancellation of the trademark application in bad faith (cf.BPatG v. 15.11.2017 - 29 W (pat) 16/14 - YOU & ME). The Court of Justice of the European Union (CFI) has now expressed itself more clearly in the judgment of 21.04.2021, T-663/19 - MONOPLOY. In the case, the game manufacturer Hasbro had applied for the word mark "MONOLOPOLY" over a period of more than 20 years in four trademark applications for partly identical goods and services, including games. A Croatian game manufacturer, which marketed the board game "Drinkopoly", applied to the EUIPO to have the most recent trademark declared invalid. It was said to be a repeat application in bad faith. Other reasons than evading the duty of genuine use were not apparent. The EUIPO had partially declared the trademark invalid, including for games. Hasbro took legal action against this before the ECJ. The ECJ first clarified that not every repeat application is automatically in bad faith. However, it is bad faith to apply for a trademark repeatedly in order to circumvent the proof of use. Therefore, good reasons are needed for a repeat application.

The ECJ therefore asked Hasbro about the motives for the new application. Hasbro claimed that the new application would make it easier for it to administer the trademarks. This did not make sense to the ECJ. After all, multiple trademarks cost more working time and more money. The action was therefore dismissed. The trademark is therefore no longer in force for some of the goods, including games.