Trademark

A trademark or a trademark (English trademark) was officially introduced to the trademark law reform in Germany in 1995. The trademark as a traditional name had become with the necessitated protection of services not comprehensive enough as a product meaningful. Now extended a special, legally protected trademark, which mainly serves to distinguish the goods or services of one undertaking from competing goods or services of other companies.

A brand can also be used to characterize an entire company or the services of an entire geographical location (country, region, city) and clearly distinguish themselves from competing companies or offers.

Brands can be a single presentation or a combination of one or more letters, characters, words, names, slogans, logos, icons, images, sounds, sound sequences or of manifestations and patterns of and for products of various kinds.

Trademark rights are similar to patents and copyrights intangible monopoly rights, often referred to as intellectual property.

Despite close contact points of the legal brand concept is clearly demarcated from the brand understanding in marketing. While the former naming an individual, legally protected trademark, the latter stands for the totality of the individual, often patented features of an asset that is with a brand name in conjunction (see Brand (Marketing) ).

• 7.1 Term of protection
• 7.2 Transfer and transition

Concept of "brand"

The term brand dates back to the Middle High German word " marc ", which stands for " boundary or border area " means (see also Mark ) and from the French word " marque " emerged, what about " attached to a commodity character", "mark" means ( " marquer " - mark, mark ).

While the kingdom Trademark Act of 1874 already spoke of a "brand", coined by the legislature in the Description of Goods Act of 1894, the legal term " trademark". The Trademark Act of 1936 held fast to this usage. As part of the aforementioned trademark laws in Germany were on 1 January 1995, with the introduction of the Trademark Act - ( Marks), again replaced in the legal text the trademark by the trademark, since since the late 1960s not only goods but also services under one protected characters can be sold. The term of the trade mark was not the only reason now too narrow. Even the change from the previously simpler name for a product towards the " mark" means a much more diverse become reproducing word, image, form and sound as an advertising medium, were the reason for the change of names. In literature and in common parlance the terms " trademark" and " mark" but still often used interchangeably.

According to the Trademark Act is meant by a trade mark a sign which serves to distinguish the goods or services of one undertaking from those of other undertakings ( original function ). Therefore, a brand always has a sign and a collection of goods or services, which can be distinguished by the character of the same or similar goods or services of other companies.

History

The history of the brand dates back to the time, began in the distributors that previously procured nameless bags products - mostly food - with a label, to be provided: The product was packaged in a kind of " dealer package ". Thus were - at least in the food industry - the trademarks of the first brands of its time.

However, similar efforts were also producers and artisans. So since the Middle Ages is every craftsman characters (Signet ) to a specific location, such as beams or walls.

Designations of origin, manufacturer's trademarks and logos in the sense of the trademark have been known since the ancient Greeks and can be found on pottery and figurines that were produced mainly as an export item. They were ( as now ) the quality and originality of the purchaser of the security point of sale house and their partners. The same function also had seal, this the vessels and sacks, and also among the ancestors of the "brand".

Even from antiquity are already seal and badges, or simply the use of certain forms of packaging and containers, announced that should symbolize the descent, or membership of certain products to certain workshops or production areas. What rights and obligations were associated with it, of course, is today only difficult to determine. Just like today were these characters but for a certain quality and were most likely already forged and imitated in order to simulate such.

Another root is seen in the arts. Since the Renaissance, it was common that artists no longer nameless made ​​their works, but they signed. Here distinct profile developments were soon apparent, not only in terms of craftsmanship, but also in style, conception of art and ideological point of view of the artist. Soon it came to downright worship of artist personalities. They culminated in the cult of genius around 1800. The concept of using the artist name as a trademark for artistic authorship, could be transferred to numerous creative products. Brand in this sense as labeling artistic authorship is now present also in the wide range of designs and to intellectual property rights of any other nature.

1887, the obligation to affix the label Made in Germany with the Merchandise Marks Act was introduced in the UK - but not as a symbol of quality, but to British consumers to protect them from the force as inferior competition from Germany.

Value of a brand

The value of the intangible monopoly right of a registered mark is calculated according to the sales of the proprietor and his enterprises promoting effect. The corresponding methodical evaluation can be determined either by experiment or by measuring without damaging the brand. Alternatively, detailed assessment procedures are known which decompose the overall problem into manageable subproblems. An experimental, but limited in validity replacement method is the experiment by setting up a new brand in the same market, and measuring the corresponding expenses. Therefore, the timespan of the value of a brand is almost exclusively possible only by an estimate.

Brand forms

The most common forms are the word mark and image brands. Moreover, there is the combined figurative marks. The latter consist of one word and one image component, which give an overall impression. In addition, have added other types of trade mark in recent years. The abstract color marks In particular, sound marks, smell marks, slogans and forms three-dimensional mark. The ( by European law requirements influenced ) legal developments concerning the registration of and protection area such marks in case of injury is not yet complete.

List of types of trade mark in accordance with § 6 Trade Mark Regulation and common sub-forms:

• Word mark
• Trademark Combined Mark

• Color mark
• Position mark
• Hologram brand
• Movement brand
• Olfactory

Way to trademark protection

Registration procedures ( national)

Primarily, the brand protection through registration of the mark is created. In many countries such as Germany, Austria, Switzerland and Liechtenstein regulate this national patent offices. Specifically, these are the Patent and Trademark Office in Munich, the Patent Office in Vienna, the Swiss Federal Institute of Intellectual Property in Bern and the Office of Economic Affairs ( DHS ), Department of Intellectual Property Rights in Vaduz. Almost all countries in the world have similar facilities and provisions which provide for the registration of marks. These national brands are valid only for one country. International or European brands are registered in accordance with the Paris Convention, the Madrid Agreement and the European Patent Office.

There are various ways to the emergence of brand protection. A brand can also be caused by use, provided that the mark has acquired secondary meaning ( use brand, § 4 No. 2 Trademark ). This is the case if a significant proportion of buyers of the products covered by the trademark goods and services assign this brand a company.

Moreover, also by a notorious reputation of the brand brand protection arise ( Notorietätsmarke, § 4 No. 3 Marks).

The majority of the brands in Germany are the trademarks register ( register mark, § 4 No. 1 Marks), since it requires a considerable effort to achieve secondary meaning or even notorious reputation for a brand. In general, common law trademarks can be found only in goods or services that appeal to a very small, specific audience, such as in advanced machining. The registration mark will be discussed below, is a formal, absolute intellectual property.

Trademark searches in advance of the trade mark application

Principles of research

Before the trademark registration by the applicant are some points to consider in order for the brand protection will ever be granted following the one hand and on the other is, if registered trademark optimal protection. Often companies underestimate this fact and report their new brand of ignorance on without careful preparation of the appropriate office. Is correspondingly large then the surprise when it comes to contradictions of brand owners of existing and thus earlier priority brands. The probability of matches of syllables or whole word components with new names already registered marks is increasing day by day. In trademark law sense one speaks in this case of collisions, which can have far-reaching consequences.

In addition, it is part of modern brand management to plan the brand early on and to control. Failure or delay can significantly influence the success of a new brand and in addition in case of injury of existing trademark rights lead to expensive litigation. Therefore, it is often recommended to clarify the following questions prior trademark application:

• Is the new brand still available?
• Is the acquisition of trademark protection for the new brand realistic?
• Violates the rights of third parties brand new?
• Can possible attacks on the new brand be averted?
• Who are the potential opponents, with which the new brand and their representatives have to deal with mark disputes?

The trade mark offices, especially the German Patent and Trade Mark Office ( DPMA) and the Office for Harmonisation in the Internal Market, do not consider such questions. It is the trade mark applicant itself, to ensure that the new brand does not violate any rights of other brands. Why professional trademark searches are recommended by patent and trademark attorneys and specialized research companies before any notification.

Preparing for the search

Own research or " in-house research " via common search engines can be the first step. In the next step, the appropriate databases to be searched. The search and search strategy and the associated quality of the results is dependent on the data sources used by the and the practical experience of researchers. Determines the trademark search any relevant, existing brands, as this gives the applicant the necessary security to be able to continue to operate with the new brand.

In general, a distinction is made between two types of searches brands:

Identity research

This type of search to clarify whether the new brand was already registered in the same form for the same or similar goods and / or services from the competition and registered by the respective Trademark Office. Identity in this case means absolute identity, that is, Coca Cola is equal to Coca Cola and Coca Cola and not only Koka Kola.

Similarity search

Check availability searches, whether the new brand has already been registered with the relevant trademark offices in a similar form for the same or similar goods and / or services and the appropriate trademark protection exists. Similarity means visual and / or aural similarity in this case. adidas is similar to Abibas and adi dash. For the similarity search in the normal case, the identity is checked. Professional similarity search, using appropriate algorithms to differences on the visual and phonetic similarities to identify older property rights that surpass the capabilities of the databases provided by the trademark office also available.

Carrying out the search

Before starting a search, the following questions must be answered:

• What type of search is required for the new brand?
• Which countries or economic areas to be acquired for the new brand mark protection?
• For what goods and services classes of trademark protection is to apply?

The countries and economic areas in which the new brand to be used later, determine the abzuprüfenden databases and sources. If a trademark used exclusively on the German market ( so also in the future no internationalization of the brand sought ) it is sufficient to search only in the brand portfolios of the DPMA.

For the registration of marks, it is also important for the goods and services of trademark protection is to be attained. For this serves the international brand Classification ( Nice Classification ), which breaks down the various product and service types in a total of 45 classes. The offer, which is to be named the new brand, so far determines the classes for which the protection is to be attained. Again, one should the strategic direction of the brand, including licensing note.

Example: Develop a clothing company a new brand, the trademark protection is to strive for first class 25. If you want to sell later on other products such as shoes, watches and eyewear under the brand name, the protection to the classes of these products must be extended.

After clarifying these issues is to decide whether to perform the search yourself or commissioned a research company. In this decision, the homepage of the German Patent and Trade Mark Office (DPMA ) can help. An experienced branding specialist may be due to his training and work in a better position to determine collisions of the new brand with existing brands and to give any information or to take action.

If no collision dangers seen, the registration process is first handled nothing more.

Registration procedures ( Germany )

Basis for issuing of trademark protection by a register trademark, an application which is the German Patent and Trade Mark Office ( DPMA) submitted. This application must contain information enabling it to ascertain the identity of the applicant, as well as a reproduction of the mark and an indication of the goods or services for which registration is sought ( § 32 para 2 Trademark, see trademark classification). If the application is received with those listed at the DPMA, as a so-called filing date is established ( § 33 Section 1 of the Trademark ). This filing determines the priority of the application. Although this application may initially be submitted informally, but the DPMA requires the use of the appropriate form, which can be submitted (Article 2 § 1 Marks). However, for the seniority, it depends on the application, not on the form. Is established of the filing of the brand, so this application is published ( § 33 para 3 Marks).

Then begins the check for "absolute grounds for refusal " at the DPMA. These absolute grounds for refusal are described in § 3, defined § 8 and § 10 Trademark Law. In essence, this checks whether the registration as a mark character is at all capable of distinguishing goods or services of one undertaking from those of other undertakings ( capacity to distinguish, § 3 Marks) whether the sign is represented graphically ( § 8 paragraph 1 Marks), whether the sign to the goods or services is distinctive ( § 8 para 2 No. 1 Marks), as well as a dial holding interest in the sign of competitors ( § 8 para 2 No. 2 Trademark ).

In addition, the brand must not consist exclusively of signs or indications which have become customary in the current language to designate the goods or services ( § 8 para 2 No. 3 Marks). In addition, brands are not registered, which are similar or identical to a well-known mark with earlier priority or with her. Where this examination to any objections, the trademark is registered in the trademark register. The fee for a trademark registration in Germany is 300 Euros, not to be confused with the renewal fee, see term of protection.

Is a trademark registered in the trademark register, they must be marked ® (from English " registered trademark " = registered trademark or service mark ) next to the mark by the proprietor with the symbol. However, there is no obligation to these labels.

Registration procedures ( international)

At the international level since 1883, there are the Paris Convention (PC ), are arranged in the substantially uniform rules on patents and trademarks, and since 1891 the Madrid Agreement ( MMA), which meets agreed international registration of national brands. After the so-called Madrid system, named after the Madrid Agreement and the Protocol Relating to the Madrid Agreement internationally registered marks ( IR brands) can be obtained. The responsible for this World Intellectual Property Organization ( WIPO) in Geneva issued while a bunch of IR - marks, are equal to the national brands in its scope.

Registration procedure ( European)

The Office was established for the Internal Market ( Trade Marks and Designs) for the Internal Market in Alicante by the European Community Trade Mark Regulation of the EU Mitgliedststaaten. This is responsible for the granting of Community designs and Community trade marks ( EU brands), the (currently 27) are valid in all Member States of the European Union. The administrative burden of an application is similar to the national registration.

As a further intergovernmental, but EU independent organization of 38 states of the continent, including Turkey, has for entries and European trademark law, the European Patent Office also as the regional German in Munich his seat

Registration procedure ( Anglo-American )

In contrast to Central European, German-speaking countries there are in the Anglo-American, a precursor with a legal status of the registration. Firstly, for the goods Unregistered Trademark (TM) and services for the Service Mark (SM). The equivalent entry in both hemispheres of brands then is the Registered Trade Mark, whose character is the R ® in a circle.

Another difference is also among the processed bodies. Both institutions in the United Kingdom Intellectual Property Office (United Kingdom) (IPO) established in südwalesischen Newport as well as in the United States, the United States Patent and Trademark Office (PTO or USPTO) in Alexandria in Virginia have the additional protection of intellectual copyright to the task.

Similarly as in the Anglo-American institutions in the Russian Federation carried out the registration of trademarks with patents and intellectual copyright. The registry in question here is the " Federal Service Spiritual authorship " ( Роспатент Russ patent). Awarded to The designations correspond to the three Anglo-American equivalents TM, SM and ®.

Brand monitoring

Trademark monitoring is the systematic and permanent monitoring of the relevant trade mark register possible collision brands. It is recommended after successful registration in order to defend the brand against possible dangers.

"Although the brand has been successfully registered and are no obstacles to the (future ) use, the trademark owner is far from destitute at the end and his lawyer. Even now lurking diverse dangers that destroy the value of the brand can make "

Since 2000, each year were registered nearly 70,000 new brands at the DPMA in section in Germany alone. Thus, the probability is quite high that newly registered trademarks infringe rights of other already registered and thus earlier priority brands. Add to this that the Office does not check whether there is already the same or similar marks of others brand owner in the same or similar goods and services classes.

This conscious or unconscious identity with or similarity to existing brands leads to threats such as imitation, counterfeiting, corruption, disparagement, bootlegging, dilution or confusion. The trademark owner of the existing, earlier mark becomes aware of the threat as a rule only when it is too late, that is, if the new brand has positioned and established itself on the market at the expense of the old brand. The defense of the rights of the old brand is then optionally difficult and costly.

To respond to the weakening of its own brand early, provide specialized service company to so-called brand monitoring. Their object is the mark as registered form. For word marks, this is the word or the component (s) or syllables in word -picture brand according to the word and figurative elements and figurative marks the graphic or pictorial representation. This also applies to color and sound marks. The brand is in all registers of trade marks in which it is registered and monitored in all goods and services classes in general.

Check the monitoring company at regular intervals, the corresponding trademark registrations in the relevant registers and classes on so-called collisions. That is, there are systematically identified for monitoring brand and identical optical, acoustic or conceptually similar brands.

The monitoring results get communicated in the form of so-called collision indications or monitoring reports the client ( company, attorney or law firm ). These usually contain the name of the collision brand, representation of the mark, register, goods and services classes, owners and representatives of the collision brand and information about the contradiction deadlines.

The collision Notes and the monitoring report for the proprietor or his lawyer then the decision based on whether it will take action against the collision brand and what action it is taking.

Opposition and cancellation proceedings

After the registration of the mark has been published in the Trademark Gazette, owner of registered trademarks, common law trademarks or trade names ( corporate ID and work title) with earlier priority within three months of opposition to the registration of the later mark raise ( § 42 Marks). The opposition shall be filed in writing, but need not be justified. That is needed is that the disputed mark, the opposition flag ( ie the brand or the business name with earlier priority ) and the identity of the opponent for the DPMA are detectable. This information can not be submitted after the three- month period. Here, too, is a form of the DPMA be used ( § 29 para 2, Trade Mark ).

In opposition proceedings, which is a cursory geared to a variety of cases, standardized procedure will now be examined to what extent identity ( § 9 para 1 No. 1 Marks) or confusion ( § 9 para 1 No. 2 Trademark ) between the later mark and the earlier objection mark consists. The test of likelihood of confusion is performed individually for each product or service. The more similar the individual goods or services to each other, the more dissimilar the brands / marks shall be and vice versa. In addition, the distinctiveness of the opposition flag, so its ability to be recognized by the traffic at the identical goods or services are considered. As a result, parts of the goods and services directory of the later mark, or the entire later mark can be deleted.

An objection may be based on the fact that an older, identical or confusingly similar marks or enabled a well-known mark precludes (relative grounds for refusal ), or that the mark has been registered for an agent or representative of the proprietor. When the opposition is based on an earlier registered trade mark is supported, this according to § 26 Trademark Act must also be used, provided that the owner of the later trade disputes this, unless and between the registration of the earlier mark and the publication of the registration of the later mark / or the decision on the opposition is just a period of less than five years ( grace period, § 43, Section 1 of the Trademark ).

Furthermore, the mark can be deleted after they have been registered at any time by means of a cancellation proceeding from the register. Grounds for cancellation are decay ( § 49 Marks), absolute grounds for refusal ( § 50 Marks), which means that the brand itself is not suitable as an indication of origin in accordance with § 8 MarkenG or relative grounds for refusal (§ 51 Marks), so older brands / labels. DPMA deletion on grounds of revocation § 53 or § 54 absolute grounds for refusal may be requested. In the civil courts, proceedings may be brought on grounds of revocation or cancellation existence of earlier rights in § 55

Digression: the plea of ​​non-use

The proprietor of the later mark may raise the objection of non-use in opposition proceedings.

Basically, a trademark must be used, otherwise it can be deleted on grounds of revocation according to § 53 of the Trademark. From an unused relation to the goods / services in question mark No rights can be asserted. In the first 5 years after registration but no use for the enforcement of trademark law is required, see § 26 Trademark Law. The removal of unused marks from the register is useful, as escaped characters when they are no longer needed, the public will be available again. Unlike a patent, which rewards an innovative performance, such performance can not be seen in a brand. As a consequence, the legislature has the obligation to use provided that does not apply to young brands within the grace period.

If the cancellation procedures using proven only for some but not for all products / services, then the mark for the goods / services not used will be deleted and remains with the goods / services for which the use has been demonstrated. Thus, while the brand remains in the register - finally, the DPMA not constantly control the use of a trade mark - but the one who is taken in infringement proceedings from in the mark, or the defense of non-use can raise, so that the proprietor of the earlier opposition mark no more rights can assert.

If raising the plea of non-use in opposition proceedings by the proprietor of the later mark, so of course can make use of its mark credible the opponent. The opposition has then only successful if the opponent the presumption of use succeed in doing what may prove to be difficult in individual cases. In practice, it is therefore very useful for a brand owner, old packaging of its products and the related invoices and delivery notes - beyond the legal, especially tax retention periods beyond - keep. It must be recognized, for example, as a visible label or as a concrete product description within an invoice directly visible connection of the brand with the product / service. However, the joint imprint of the goods with the brand name in a brochure with no direct link has difficulties in substantiation. The use must be clearly related to time periods and regions; proof of having sold across Europe in the last 4 years x piece is too imprecise. For substantiation also affidavits are admitted.

Principles and examples

In practice, principles which are not exhaustively described below with reference to examples found.

• Purely descriptive characters are not allowed, since they do not distinguish the goods or services is achieved (lack of distinctiveness ) and they are also required by competitors to describe their products ( Freihaltebedürfnis ). The gasoline brand so can not be registered for fuels. However, it is possible to use the term petrol for clothes, since the word " gasoline " is not a descriptive term for these goods. An exception (example Telekom ) in German jurisprudence brands that are known out of all proportion. Although " Telekom " is likely to be smooth for the sector of telecommunications descriptive, the mark in this area may take account of its reputation protection. In addition, you can proceed from these brands also against the use of goods or services that are not interchangeable with the goods or services already registered trade mark if the use for the image transfer from the famous brand is unfair ( naming a pair of pants with " Telekom " for example, could be problematic ).
• Characters official character are also not eligible for registration, even if the Red Cross is not active in the building materials sector. However, this is dependent on the individual case.
• A special case also represent characters, colloquially represent a generic term. Well-known examples are tempo, hair dryer, Nutella, scotch tape / TIXO, owl or Jeep. Such terms may lose their trademark protection, because the character no longer meets the origin function of the trade mark, if consumers are not consistently referred to the brand as a property. Consequently, the trade mark owner is forced to participate in these cases, consistently enforce its brand and thus the non-entitled to prohibit the use of the mark. Because usually large corporations have brands with such a reputation, which are then forced to take action against smaller companies here often arise cases with great media attention. Example 1: Sony lost trademark protection for its Walkman in Austria.
• Example 2: LOTTO is a generic term for number of games of chance and no brand [ BGH I ZB 11/ 04], not YELLOW PAGES.
• Example 3: The German stock exchange has in its publications permanently out that the DAX is a registered trademark. Thus, it shows the audience that DAX a "product" of a certain "production operation" and thus prevents a " depravity " of the term " DAX" a generic term.
• Example 4: In order for Google is not in danger of becoming a generic term for search engines, the first time in 2004 in the dictionary posted verb was googling in 2006 on " Google search on the internet " limited.
• Example 5: The law blog mark is not registrable for a legal blog.

• The previously permitted only at secondary meaning, not pronounceable combinations of letters ( for example, the known brands 4711, BMW) can be entered in the office today with no problems. Also single letters are possible in individual cases.

Rights conferred by a trademark (brand protection)

The trademark owner has against an infringer an injunction against the mark moderate use of the mark, if the character used with the registered mark is identical or similar to be confused and the sign for identical or similar services or goods is used, for which the mark is registered ( colloquially " piracy "). From the infringer omission, be eliminating demanded by destruction of illegally bearing the mark on goods or at least removal of the mark, information on the extent of use and damages. The damages can be calculated in three different ways: The trademark owner may require payment of a reasonable royalty, the infringer, or compensation for loss of revenue. At the request (see complaint ) of the injured is initiated criminal prosecution.

If rights of the registered mark are asserted, it must also be used, unless the brand is still in the grace period under § 26 Trademark Law of 5 years starting after registration.

According to § 4 sentence 1 of the Trademark Law Trademark protection through registration of a sign as a trade mark in a register kept by the Patent Office registers. Therefore, the public can inform you about which characteristics are protected and which are not. In this project, German Patent and Trademark Office a public register in which all bibliographic data, including the name of the proprietor, are stored.

The issue of access to documents in trademark applications (ie not yet registered brands) was last in the Supreme Court decision of 10 April 2007 I ZB 15/ 06 treated. Accordingly, trade-off between the legitimate interest of the applicant and the interest in confidentiality ( including falls the right to informational self-determination ) of the applicant. The mark applicant shall explain its reasons which militate against an inspection.

Term of protection

The term of protection is not limited. In Germany, as in Austria and Switzerland - here only since April 1, 1993, all previously registered brands have a 20 - year term - it is as from the date of application for ten years, but may impose timely payment of a fee ( 750 euros ) are often renewed for another ten years in Germany. Therefore, the trademark protection goes only through non-payment of the fee by non-use or by a " depravity " of the brand to the generic term.

The Federal Court has held in its decision of 21 July 2005 (Case No. I ZR 293/ 02) through various registered word and figurative marks the retail group Otto and the company eventually sentenced to extinction due to non-use. Here the marks were merely attached to catalogs and mailers, but not on the product itself, the Bundesgerichtshof is not seen appropriate right -sustaining use of the mark.

Transfer and transition

The right to a trade mark can be transferred to another employer under § 27 MarkenG or go by way of universal succession. The change of ownership can relate to all the goods and services, or even just parts of it. The registration of the change of owner at the German Patent and Trademark Office does not cause any fees. If only parts are transferred, however, a fee of 300 Euros to be paid.