European trademark registration – applying for a EU trademark

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European trademark registration – applying for a EU trademark

The trademark or “brand” is a company’s most important tool for representing itself. It represents your products or services to the outside world. Existing and prospective customers’ first impression of you is that communicated by your trademark. You could apply for a European trademark or EU trademark for your

company
product
service
practice, or
freelance work

An EU trademark is valid in all Member States of the European Union; a single application to the European Union Intellectual Property Office (EUIPO) is sufficient.

The EU trademark offers your product, service or company protection in all EU countries once it is registered.
In 2019, 160,377 EU trademarks were applied for, 131,815 of them from EU Member States.
The number of new registrations increases every year, and grew by an impressive 5.2% from 2018 to 2019.
Registering your trademark gives you the right to prohibit competitors from using your trade name.

We register your trademark. You focus on business.

Key points EU trademark registration

Packages
What is an EU Trademark
Procedure
Advantages and disadvantages
Costs
Register EU Trademark online

Procedure, Information & Packages

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Andre Kraus, lawyer and founder of the KRAUS GHENDLER RUVINSKIJ law firm, is your contact in matters of company formation, trade mark law, reputation protection and corporate law.

Apply online for an EU Trademark

You can apply for your EU trademark directly online, reserve a free initial consultation online or send us a message.

Free initial consultation

You will receive a comprehensive free initial consultation on filing your EU trademark. During this consultation we will clarify your open questions and advise you on the most important basic topics of the trademark application or the costs and the procedure of the application.

Application for your EU trademark

We accompany you from the identity and similarity search, the examination of the reputation, the application for the EU trademark at the DPMA up to the secure registration of the EU trademark in the trademark protection register.

Overview European Trademark Registration in Germany

Are you planning to apply for an EU trademark to protect your company, your product or your service with your individual trademark and to create a corporate identity? Thanks to our many years of experience, we can answer all your questions about EU trademarks comprehensively, quickly and professionally. Through our extensive research, we enable you to file a legally secure application in the process.

Questions like:

“How do I apply for an EU trademark?”
“How expensive is the EU trademark application?” or
“Is an EU trademark suitable for me?”,

are answered comprehensively on our site.

The professional and comprehensive preliminary examination of your word, figurative, or word-picture trademark is the basic building block for a successful registration in the trademark register. With our help you can prevent legal disputes after the trademark application and realize your desired trademark.

European Trademark Registration – our packages

€169,–zzgl. € 32,11 USt.

Markenanmeldung ohne Zusatzleistungen.
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Organisation und Durchführung
- Begleitung Ihrer Anmeldung zur Wortmarke Wort-/Bildmarke in 3 Nizza Klassen
- Erstellung W/D Verzeichnis nach aktueller Nizza-Klassifikation
- Erstellung und Durchführung der elektronischen Anmeldung beim Europäischen Amt für geistiges Eigentum
- Begleitung Amazon-Brand-Registry
Prüfung und Recherche
- Schutzfähigkeitsgutachten "START-UP"
- --
- --
- --
Markenrechtliche Rechtsdokumente
- Markenanmeldung
- W/D Verzeichnis
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€0,–zzgl. € 0,– USt.

Markenanmeldung mit Identitätsrecherche.
Mehr Informationen
Organisation und Durchführung
- Begleitung Ihrer Anmeldung zur Wortmarke Wort-/Bildmarke in 3 Nizza Klassen
- Erstellung W/D Verzeichnis nach aktueller Nizza-Klassifikation
- Erstellung und Durchführung der elektronischen Anmeldung beim Europäischen Amt für geistiges Eigentum
- Begleitung Amazon-Brand-Registry
Prüfung und Recherche
- Schutzfähigkeitsgutachten "RECHTSSICHER"
- Marken-Identitätsrecherche
- --
- --
Markenrechtlichte Rechtsdokumente
- Markenanmeldung
- W/D Verzeichnis
- Antrag auf (teilweisen) Verlängerung der Marke
- Antrag auf (teilweisen) Verzicht der Marke
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- --
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€499,–zzgl. € 94,81 USt.

Markenanmeldung mit Identitäts-, Ähnlichkeits-, und Firmennamenrecherche.
Mehr Informationen
Organisation und Durchführung
- Begleitung Ihrer Anmeldung zur Wortmarke Wort-/Bildmarke in 3 Nizza Klassen
- Erstellung W/D Verzeichnis nach aktueller Nizza-Klassifikation
- Erstellung und Durchführung der elektronischen Anmeldung beim Europäischen Amt für geistiges Eigentum
- Begleitung Amazon-Brand-Registry
Prüfung und Recherche
- Schutzfähigkeitsgutachten "PLUS"
- Marken-Identitätsrecherche
- Marken-Ähnlichkeitsrecherche
- Firmennamen-Identitätsrecherche
Markenrechtliche Rechtsdokumente
- Markenanmeldung
- W/D Verzeichnis
- Antrag auf (teilweisen) Verlängerung der Marke
- Antrag auf (teilweisen) Verzicht der Marke
- Anschreiben Verletzer - Einstellung markenrechtsverletzender Markennutzung und Drohung Anwalt
- Lizenzierungsvertrag - Gestattung Markennutzung

What is an EU trademark?

An EU trademark is a symbol that may be written, visual, acoustic or an odour. Most trademark registrations are word marks, figurative marks or word and figurative marks.

Private individuals, companies or self-employed people and freelancers can register EU trademarks. No economic purpose is required to acquire trademark protection for a European trademark.

The most common European trademarks are either a:

word mark (letter combination)
figurative mark (graphic or logo), or
word and figurative mark (combination of both previous types)

EU Markenanmeldung vom Rechtsanwalt

✔ GÜNSTIG ✔ SCHNELL ✔ RECHTSSICHER

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geprüfte Fälle

JETZT ONLINE ANMELDEN

Beauftragung herunterladen

↪ oder kostenfreie Erstberatung reservieren.

Offene Fragen? – Einfach anrufen:

0221 – 6777 00 55

(Mo. – So. von 9 – 22 Uhr / BUNDESWEIT – Dt. Festnetz)

Objectives of the EU trademark application

Objective 1
Corporate Identity

The creation of a figurative or word mark is often the first step in creating a corporate identity. A memorable name leaves a lasting impression on customers, partners or the public. Corporate identity is of enormous importance for your market position, in highly competitive industries in particular.

We help you to prepare and plan your corporate identity!
Objective 2
Unique position on the market
When your trademark is entered in the trademark register, you have a monopoly right to use your trademark in Europe. You have full control over who can use your name or logo and who cannot. You are in a position to prohibit competitors from using your name. You are even protected against the use of similar brand names or logos. Without a legally compliant EU trademark application, you have no means to defend yourself against hostile takeovers of your market share or plagiarism attempts.
Objective 3
Legally compliant and convenient

With us at your side, you can be sure that your trademark application in Europe will go off without a hitch. As a law firm experienced in corporate law, we can ensure the legal compliance of the trademark application. This protects you from later warnings or other legal disputes. At the same time, we take care of the whole application process for you.

This allows you to concentrate fully on your business while we take care of all the formalities.

EU Trademark Application in eight steps – Step-by-step procedure for applying for an EU trademark

Overview EU Trademark Registration Procedure

A trademark application proceeds as follows:

Find trade name
Check eligibility for registration
Identity and similarity search
Check for protection based on reputation
Draw up a list of goods and services
Apply for an EU trademark
Registration of the trademark and objection period
Trademark registration – 10-year trademark protection

Step 1 – Find trade name
The first step is to develop a brand name. This is a creative process that should be aimed solely at the marketing needs of your company. We subsequently take over the legal control of your brand.
Step 2 – Check eligibility for registration
A European trademark can only be protected if there are no legal obstacles. We check your EU trademark’s eligibility for registration to see if there are absolute grounds for refusal that could result from circumstances under trademark law.

Step 2 – Check eligibility for registration
Step 3 – Identity and similarity search
The check for relative grounds for refusal includes an identity and similarity search. In doing this, we examine European trademarks using the EU trademark register. If legal conflicts exist, we explore legal options for circumventing these obstacles.
Step 4 – Check for protection based on reputation
Checking for protection based on reputation is an important step in the European trademark application process. We check possible conflicts with other European trademarks. Even if they are registered in other classes of goods and services, they may enjoy special trademark protection due to their enormous reputation.

Step 4 – Check for protection based on reputation
Step 5 – Draw up a list of goods and services
The application for a European trademark is made together with entry in specific lists of goods and services. This is the only way to ensure sustainable brand protection. Nevertheless, registration must be strategic and deliberate. Superfluous registration does not only lead to trademark protection for the respective classes being lost. Deleting entries in unused classes of goods and services can involve considerable expenses.
Step 6 – Apply for an EU trademark
If all legal doubts are eliminated, the trademark application for your European trademark can be filed with the EUIPO.

Step 6 – Apply for an EU trademark
Step 7 – Registration of the trademark and objection period
Once the trademark has been registered and the application fee has been received, the EUIPO will begin examining the absolute grounds for refusal within one month. After the trademark has been registered, owners of earlier trademarks have the opportunity to file objections based on existing conflicts of law.
Step 8 – Trademark registration – 10-year trademark protection
If the trademark has been successfully registered at the EUIPO and there have been no objections from owners of older trademarks, your EU trademark will be protected for 10 years. The trademark protection may be extended after 10 years.

Step 8 – Trademark registration – 10-year trademark protection

EU Markenanmeldung vom Rechtsanwalt

✔ GÜNSTIG ✔ SCHNELL ✔ RECHTSSICHER

Über

20000

geprüfte Fälle

JETZT ONLINE ANMELDEN

Beauftragung herunterladen

↪ oder kostenfreie Erstberatung reservieren.

Offene Fragen? – Einfach anrufen:

0221 – 6777 00 55

(Mo. – So. von 9 – 22 Uhr / BUNDESWEIT – Dt. Festnetz)

Advantages and disadvantages of applying for an EU trademark

As a potential trademark applicant from Germany, you tend to have three options for filing a trademark application if your company or project operates in Germany. The application for a German, European or international trademark.

We would like to present the advantages and disadvantages of applying for an EU trademark to make the decision process easier for you.

Advantages of applying for an EU trademark

EXTENSIVE TRADEMARK PROTECTION THROUGHOUT THE EU
If the community trademark has been successfully registered, you will enjoy comprehensive trademark protection in all EU Member States from that time on. This opens the door to the Europe-wide expansion of your company.
LESS BUREAUCRATIC EFFORT: ONCE AND CONTINUOUSLY
A European trademark only needs to be registered once at the EUIPO. Potential territorial expansion or other changes in the law do not affect this. If another Member State joins the EU, trademark protection immediately extends to its sovereign territory. The application is made at the EUIPO, which itself corresponds with the national trademark offices of the Member States. Compliance with national laws is therefore superfluous. If a trademark right is infringed and a legal dispute arises from it, the action does not have to be brought before the national court of the country where the party that commits the infringement is domiciled. It is sufficient to bring a single action before the relevant EU trademark court. Each Member State of the EU must have established special trademark courts for the infringement of EU trademark law. In Germany, these are the regional courts (first instance) and the higher regional courts (second instance).
RIGHTS-PRESERVING EFFECT
If a community trademark is not used in the class of goods and services applied for within a period of five years, its trademark protection will lapse. One advantage of the EU trademark is that there is no regional restriction. If the trademark is only used within one Member State, trademark protection continues to apply for all other EU countries.
SENIORITY PRINCIPLE
In trademark law, the seniority principle is defined as the fact that, in the case of conflicting trademark protection at different levels (national, European or international), the application date is used to date the commencement of trademark protection. If, for example, a European trademark to be applied for is in competition with a national trademark already applied for from an EU Member State, the earlier application date is decisive in determining whether trademark protection was already in place. If a national trademark is converted into an EU trademark, the oldest application date of the national trademarks can be transferred to the EU trademark. The date is retained. The same applies if the EU trademark is to be converted retroactively into a national trademark.

Disadvantages of the EU trademark application

HIGHER APPLICATION COSTS
Since the trademark protection of the Community trademark is to extend over the entire area of the EU, significantly more trademarks must be researched and evaluated before the application is filed than would be the case with a national trademark, for example. This results in much greater research expenditure, which in turn results in higher costs. In addition, the basic fee for registering a European trademark is slightly higher.
HIGHER RISK OF WARNINGS

Alongside the more comprehensive trademark protection it offers, the EU trademark also has a greater potential for warnings. Potential warning letters can come from anywhere in the EU. There will therefore be more of them.

Duration of the EU trademark application

RESEARCH AND TESTING – ONE TO FIVE WORKING DAYS ON AVERAGE
Before filing your European trademark application with the EUIPO, we must ensure that there are no absolute grounds for refusal. We then conduct an identity and similarity search so that you do not risk subsequent warnings due to relative grounds for refusal. This legally demanding process normally takes up to five working days on average. In particularly urgent cases, this can often be done within 48 hours.
PREPARATION OF LIST OF GOODS AND SERVICES – TWO WORKING DAYS ON AVERAGE
Trademark protection can only apply if a correct list of goods and services has been applied for for the EU trademark. We will check your activity and within two working days (on average) we will draw up the corresponding list based on the Nice classes.
APPLYING FOR THE EU TRADEMARK – ONE WORKING DAY ON AVERAGE
Once all the documents have been prepared, the relevant searches carried out and the list of goods and services compiled, the application can be filed with the EUIPO. This usually is completed within one working day.
REGISTERING THE EU TRADEMARK – UP TO SIX MONTHS
After it has received the application and the application fee, the EUIPO will start work within one month. There is a three-month objection period for the owners of earlier trademarks. In most cases, the application is completed after six months, with the trademark entered in the register.
EU TRADEMARK PROTECTION CONTINUES – 10 YEARS
After your EU trademark has been successfully registered, you enjoy 10 years of trademark protection. After this period, a manual extension is required.

The minimum duration of the application for an EU trademark is four days from the first phone call to the application at the EUIPO. However, it usually takes up to six months until the trademark is registered. This is because the EUIPO has to check the trademark for absolute grounds for refusal, and a withdrawal period of three months is granted.

EU Trademark Registration Costs: Prices and Fees for the Registration of an EU Trademark

When registering an EU trademark, costs are incurred at the European Union Intellectual Property Office (EUIPO). The following costs and fees are incurred for filing an EU trademark registration:

	Beschreibung	Kosten (Nettobeträge)
Markenanmeldung EU	Grundgebühr des EUIPO für die Anmeldung einer EU Marke. Anmeldung unbegrenzter Anzahl von Waren und Dienstleistungen innerhalb von 1 Klasse enthalten	850,- €
Anmeldung 2 Klasse	Für die 2 Klasse	50,- €
Anmeldung je weitere Klasse	Ab der 3 Klasse für jede zusätzliche Klasse	150,- €
Markenverlängerung EU	Grundgebühr des EUIPO. Verlängerung unbegrenzter Anzahl von Waren und Dienstleistungen innerhalb von 1 Klasse enthalten	850,- €
Verlängerung 2 Klasse	Für die 2 Klasse	50,- €
Verlängerung je weitere Klasse	Ab der 3 Klasse für jede zusätzliche Klasse	150,- €

The most important tips and most frequent mistakes when applying for an EU trademark

Most entrepreneurs, founders and established businesses use a CTM as an integral part of their marketing strategy. The start-up spirit often leads to the “do-it-yourself” trap when it comes to trademark applications. However, this complex activity requiring expertise should be left to an attorney. The following tips should be taken to heart and the most common mistakes avoided.

The most important tips

Carry out trademark application before product launch

It repeatedly happens that a company markets a product or service with a name without having previously applied for a trademark. Shortly afterwards, a competitor launches a similar product or service with the same brand name, but applies for a trademark.

One possibility is that your use of the trademark will infringe the trademark rights of the competitor who actually applied later. Then your entire sales strategy will have to be revised. On the other hand, the trademark may already have achieved protection of reputation, which, however, you will have to prove at great expense. Both possibilities can be prevented by applying for a trademark quickly before the product launch.

Choose memorable brand names

Select a brand name without descriptive content or descriptive additions. Purely fanciful names are preferable to more descriptive terms. The name has distinctive character if the symbols are fanciful in relation to the goods. Symbols are fanciful if they do not disclose any property or purpose of the goods specified in the trademark application. Quantity, price or quality indications cannot be registered as trademarks.

Common methods are combining terms or modifying a term. Multi-syllable word creations or word contractions are a good option. For example, a product description can be broken down into phonetic syllables that can then be supplemented with further letters and “back-translated”. Or you can put several words together randomly but melodiously. Or use a term from a completely different area, for example Apple for computers.

In this way, you avoid choosing a brand name without distinctive character or using a word that needs to be kept free. These are never entered in the trademark register.

Trademark application as early as the conception phase in the case of good name recognition

Founders often think of a good brand name as early as the conception phase. This time is often the most creative and unbiased. A spontaneous idea can be better than later ideas, even though they were developed according to well-known systematic patterns.

A trademark application is possible without a business operation. It can be carried out by the founders as private persons. Later, the brand can be transferred to the company. Care should only be taken to ensure that the trademark does not expire again due to a period of five years without activity.

Applying for a word mark instead of a word and figurative mark

Often a word and figurative trademark is registered to protect a logo and lettering. This is a mistake. The word and figurative mark only protects the registered combination of lettering and logo. The brand name itself remains unprotected, and can still be used by any competitor.

Therefore, we advise that you apply for a supposedly “simple” word mark. It protects a term against later use, including as a word and figurative mark. Later, you can register a specific logo or word-image.

As a founder or start-up, first apply for a German trademark

If you have set up a start-up company or have an economical investment policy (e.g. bootlegging), we recommend that you first apply for a German trademark. Later, you can apply for an EU trademark or even an IR (International Registration of Marks) trademark, and thus extend the scope of protection. The German trademark will ensure seniority through its priority effect.

Using the priority of a German trademark

The German trademark has a priority effect. If you apply for a German trademark, you can transfer the priority date of the German trademark application to the application for an EU trademark or an IR trademark within six months (Section 35(1) Trade Mark Act (MarkenG)).

Applicants for a German trademark often intend to offer their goods or services abroad. Distribution in the German-speaking neighbouring countries of Austria and Switzerland is particularly likely. If, for example, the trademark is not filed in Switzerland at the same time, but for cost reasons only in Germany, the priority date of the German application can be transferred to the trademark registration in Switzerland within the six-month period. The same applies to a subsequent application for an EU trademark valid throughout the EU.

Example: In January, you register a trademark in Germany. In March of the same year, a third party applies for an identical trademark in Switzerland. Now you can take the German priority date to Switzerland up to six months after the German application, i.e. until July of the same year. If you applied in Switzerland, you would have priority over the third-party application in March, and thus the rights to the trademark.

Applying for an EU trademark when operating in at least one EU Member State other than Germany

If your service or product is sold in at least one EU Member State other than Germany, it is worth applying for an EU trademark. A German trademark would not protect your interests. Applying for one or many national trademarks in other EU countries would be too costly (and there may be a language barrier). The IR trademark would have too wide a scope.

Apply for an IR trademark if you are active in at least one WIPO Member State that is not an EU Member State

If your service or product is marketed in at least one WIPO Member State that is not an EU Member State, it is worth applying for an IR trademark. An EU trademark or DE trademark would not protect your interests. Applying for one or many national trademarks in other WIPO countries would be too costly (and there may be a language barrier).

Having the trademark’s eligibility for registration checked

It is advisable to have the trademark’s eligibility for registration checked. The trade name must not be subject to any absolute legal obstacles to protection. If there are any, the trademark application risks being rejected, and the application fee is then forfeited. If a trademark is registered nevertheless, a competitor could later apply for it to be cancelled. You risk incurring a lot of effort and high costs, especially because you will have to realign your entire sales strategy.

Having an identity and similarity search carried out

The trademark office does not itself carry out a check for conflicts with earlier trademarks. If there is a conflict, a competitor can later suddenly dun you and bring an action against you. In order to prevent this, we carry out an examination of relative grounds for refusal before applying for a trademark. For this purpose, both an identity and a similarity search are carried out. We also carry out conflict checks online and in the commercial register. In the event of conflicts, we check whether the trademark falls under legal exemptions and can still be registered.

Having a check for protection based on reputation carried out

The main purpose of having a trademark application carried out by a lawyer is to provide comprehensive protection against warnings. After a successful identity and similarity search, we therefore also carry out a check for protection based on reputation. In this way, we avoid conflicts with particularly well-known trademarks from other categories of goods or services that could conflict with your trademark.

Paying the registration fee in time

After you file the trademark application, the trademark office sends a request for payment of the registration fee. Follow up on this after you receive the message. On the one hand, a later payment delays the application for registration of the trademark. If you forget to make the payment, the registration procedure will be terminated ex officio after three months. In this case the priority of your trademark application will be forfeited.

Defending yourself in case of infringements or attacks

If your trademark rights are infringed, you should defend yourself. Do not allow trademark pirates to profit from your corporate image or devalue your brand name through pirated goods, etc.

If you are attacked by a competitor because of an alleged trademark infringement, it is also advisable to have your means of defence professionally assessed, and not to pay an excessive fine in response to an aggressive warning. For example, a review may reveal that a conflict does not exist because of the seniority of your right or an inconsistency in the fields of activity, for example, because an attacker’s trademark is not actually used.

Have your trademark infringements monitored

Have your trademark permanently monitored. For this purpose, the registration and use of your trade name and similar designations are checked at regular intervals. You will receive a message as soon as an infringement occurs, and can have your claim for damages enforced against the infringing party.

Considering a licence agreement

A trademark that has been applied for and registered gives you the right to transfer your trademark right to third parties for use – the licence right. If you have developed a strong trademark, you are entitled to take a fee from the licensee. To do this, draw up a licence agreement. The licence agreement will specify the exact modalities of the granting of the licence rights: scope, duration, licence fee, jurisdiction, etc.

Thinking about renewing the trademark

You should not forget to renew your trademark after 10 years. Otherwise, the trademark will be deleted from the trademark register ex officio – without a message to you!

The most common errors

Only a company can apply for a trademark

Anyone can apply for a trademark. Business operations are not necessary. In this way, a well-fitting name or image can be secured in an early conception phase. The trademark will be transferred to the company after it is formed.

Using the company name and waiving a trademark

In theory, trademark protection can be obtained even without applying for a trademark. For example, a company name alone could be used without registering a trademark. However, the requirements for trademark protection in these cases are very high, since it would depend solely on the degree of recognition of the symbol (Section 4(2) and (3) MarkenG). If you waive an application, you will have to prove this recognition later. This is the only way to obtain trademark protection without filing a trademark application. However, this can be complex in individual cases. Thus, the degree of recognition depends, inter alia, on the extent to which the trademark is well known and its distinctive character. The more unusual the symbol, the lower the degree of dissemination must be. All this must be confirmed by expert opinions in the event of a dispute. If in the meantime a competitor applies for the trademark, this will be to your disadvantage.

There is also obviously a risk that a trademark application will be filed by a trademark pirate or competitor. If your product or service is successful without the brand name having been protected by registration, a third party may apply for an identical or similar brand name in the meantime, before it becomes known. In this case, the conflict would prevent you from applying for a trademark later due to the relative ground for refusal.

It is therefore always advisable to register a trade name. Global corporations with well-known trade names also proceed accordingly. Coca-Cola, Mercedes-Benz and Apple have registered their brands worldwide in order to avoid unnecessary disputes and having to prove their reputation.

Failing to register a company logo as a trademark because of design protection

Business owners are often of the opinion that the company logo is protected by copyright or design law. They therefore refrain from applying for a trademark. As a rule, however, the company logo lacks the level of creativity necessary for the application of design law.

Even if the design right applies, any protection only lasts for three years. Its protection applies only in relation to identical trademarks or symbols. Protection against the use of similar trademarks can only be achieved by filing a trademark application. Trademark protection is more extensive, both in terms of time and content, than any claims for protection under copyright and design law.

Without a trademark I cannot violate trademark law

This assumption is a common misconception. Third-party symbols and trademarks can be violated by any use of the trade name. A trademark does not need to be applied for first. Otherwise, a trademark application would be pointless, and trademark protection would not protect against imitators. Many trademark infringements happen unintentionally, for example in product descriptions or model designations. Even those who do not apply for a trademark themselves should be careful when developing goods or services.

I cannot commit trademark infringement if I only sell original goods

This assumption is not entirely correct. For example, original American products cannot be sold in the EU without problems and vice versa. The trademark proprietor may prohibit third parties from marketing goods bearing their trademark without their consent. Thus, in order to enable the resale of originals, the consent of the trademark proprietor or their licensee must be obtained.

No collusion where there are several applicants

On our website, the applicant was always presented in the singular. In fact, however, it is usually common for several business partners to jointly apply for a trademark. As experience shows, business relationships can come to an end, with a dispute being the worst case scenario. It is then questionable what happens to the shared brand.

In the event of a dispute, each proprietor may, without a separate agreement, refuse to allow the other proprietor to continue using the trademark. The brand becomes virtually useless. Brand value that was previously built up together is destroyed. In order to avoid this situation, it is possible to make a provision when registering the trademark as to what is to happen when the business relationship with the trademark is terminated. For example, a company can be founded from the outset (GmbH, UG). The trademark is then registered by the company, not the applicants. If one of the partners resigns (due to a dispute) or the company is dissolved, there is a clear provision in the articles of association. Thus, in the event of a withdrawal, the withdrawing partner will receive the value of their share of the company’s assets, including the trademark share. Or their share is reduced to a stake, which does not involve any labour input, but a certain profit claim and thus profit from the trademark. Through a clever arrangement by the founders in a partnership agreement, the asset value of the brand is not lost, and all parties benefit.

Applying for a trademark and forming a company with the same name without a priority agreement

The protection of a business name, in contrast to trademarks, does not require official registration, but arises from its use in the course of business. The clue: If the business name is used before the trademark of the same name is registered, the owner of the older company has rights against the owner of the newer trademark.

If the trademark and company are owned by the same party, no problems arise. However, the trademark is not bound to the company itself and can be freely licenced and transferred. It is therefore advisable to keep the trademark outside the operational business at all times. In this way, the risks of the company cannot affect the trademark.

However, if the trademark owner loses the company (whether through investors, shareholders or insolvency), the company may refuse to use the trademark if the trademark was registered after the business name came into use.

In order to avoid this, a priority agreement can be made. In such a case, the company recognises the trademark rights with priority, and no claims arising from the business name can be asserted against the trademark.

Such an agreement should be concluded immediately after the trademark is registered. Since any disputes will largely be about dating, these steps should be officially certified by a notary.

Unnecessarily applying for an EU trademark instead of a German trademark

An EU trademark has certain advantages over an exclusively German trademark. However, applying for one is also associated with greater risk. An EU trademark enjoys trademark protection throughout the EU. However, earlier trademarks from all EU Member States may also conflict with your EU trademark. If there is a conflict in any EU Member State, the whole EU trademark will be forfeited. Anyone who does not intend to use their trademark outside Germany should therefore refrain from unnecessarily taking on a higher risk of conflict.

On the other hand, the mistake may also be to apply for a large number of national trademarks – also IR trademarks – instead of a single EU trademark. In the event of a collision, litigation would only have to be conducted in one EU state. The effect of the judgment would extend to the whole EU in order to have validity in all states.

EU trademark instead of DE trademark as basis for IR trademark

The international extension is based on either an EU trademark or a national DE trademark as a so-called basic trademark. Within the first five years after filing, the IR trademark depends on the basic trademark. If the basic trademark is lost, the IR trademark is also cancelled. The risk of an EU trademark being cancelled is much higher because it may be attacked from any EU Member State. Even if a European trademark already exists, it may therefore be advantageous and safer to use a national trademark as a basic trademark instead.

Word and figurative mark instead of a rejected word mark

If the protection of a pure word mark is refused by the German Patent and Trade Mark Office (DPMA), applicants often resort to the alternative of a mixed word and figurative mark. Their eligibility for registration is treated more generously because even descriptive and generic word elements can be offset by imaginative graphic representation, making the word and figurative mark eligible for registration. If you absolutely want to use a certain word, the figurative and word mark offers a solution.

However, it should be borne in mind that the trademark then also offers trademark protection only in the word and figurative form. Thus, competitors can continue to use the actual word, including in connection with their own goods or services. This prevents the word from being unique to you. You may not be able to create an exclusive and image-forming term. If this is your intention, you should work on another pure word mark.

Applying for a “diluted” trademark

A common mistake is to apply for a diluted trademark. What is meant by this is applying to register a combination of a core with distinctive character in conjunction with a slogan. Example: “DRAWANDA fast IT solutions”: “DRAWANDA” is the core, “fast IT solutions” the slogan. Since the trademark is registered as a whole, it enjoys protection only in the combination applied for. If imitators now change the slogan or just use the core, they create a new brand. Again, this is because your trademark protection only applies to the trademark as a whole. It is also possible that you will change the slogan later; this does not normally happen with the core. We therefore recommend that you register the core alone.

Registering a trademark inexpensively after your own research

Theoretically, anyone can use the trademark databases and registers of the trademark offices to research for themselves whether a trademark already exists and is registered. This saves money initially. Some entrepreneurs decide to register without a professional identity and similarity search, saving several hundred euros. However, in the medium term, this procedure can lead to great economic damage and immense expense.

For example, unprofessional research on one’s own initiative usually does not take the Nice Classification into account. Thus, in certain circumstances, identical trademarks may be registered for different Nice classes. Professionals will also check whether the earlier trademark already applied for enjoys a reputation or is well known (Section 4(2) or (3) MarkenG); if so, even if the Nice classes are different, no trademark application should be filed.

In particular, no similarity search is carried out. These are trademarks and symbols that are not identical, but are similar enough that trademark law is infringed. The similarity search is usually carried out with the help of computer programs, the results of which are evaluated by the expert. This is the only way to achieve a legal assessment of the hits. In the case of an EU or IR trademark application, this will be carried out in all EU Member States, or in all application states. If the importance and complexity of such searches is underestimated, a trademark application will be filed without protection against possible warnings and claims for damages from owners of conflicting similar trademarks.

When I apply for the trademark, the trademark office will check for conflicts

The DPMA, EUIPO and WIPO do not carry out their own checks for possible conflicts with existing registered trademarks. Identity searches for already existing identical trademarks or more extensive similarity searches for trademarks and symbols that are different but acknowledged to be similar must be independently arranged by the trademark applicant before the application is filed. It is worth making use of professional support.

The trademark offices only examine absolute grounds for refusal (Section 8 MarkenG). They assess the trademark’s basic eligibility for registration. In particular, the trademark office examines whether the symbol in question has sufficient distinctive character to serve as a symbol in the trade of goods and services. A review of the need for availability is also carried out on a regular basis. Here too, a lawyer will conduct an examination in order to prevent the application from being rejected ex officio and the application fee forfeited.

Incomplete or excessive list of goods or services

The scope of trademark protection is determined by the Nice classes applied for. If not all goods or services have been completely classified into classes, there is no entitlement to an injunction to cease and desist from an act that is contrary to trademark law. Trademark protection extends only to the classes applied for and cannot be extended.

A typical mistake is the separation between good and services. Online shop example: You should apply for a service if you wish to operate an online shop: retail service. The goods traded in the shop should also be protected by applications covering the corresponding goods.

Nevertheless, an excessive number of services should not be applied for. A trademark generally expires after five years of non-use. In order to avoid this, no goods or services should under any circumstances be protected whose distribution is not envisaged or is unlikely within that period.

Use of the headings of the Nice classes in the list of goods and services

It is too imprecise to use only the generic terms of the Nice classes to draw up a legally secure list of goods and services. Each class has its own trademarks for goods and services. Only a precise specification leads to more precise delimitation and distinctiveness. Otherwise, there is a risk of procedural delays and complaints.

Expiry of the objection period means security

The objection period is three months from the date when the trademark application is published in the trademark register. Within this period, objections to the registration of the trademark can be filed with the trademark office. If there is a relative ground for refusal due to an earlier conflicting trademark, the trademark may be cancelled.

It is true that after these three months elapse, no further objection proceedings may be brought before the trademark office. Nevertheless, the trademark is not safe from conflict with earlier third-party trademarks. If a competitor does not notice the conflict with their identical or similar trademark until later, they can contact you even after the deadline has expired and request that you desist from use and pay damages by issuing a warning. They can also sue you. In contrast to opposition proceedings before the trademark office, this may result in higher legal costs, but they can be passed on to you.

Therefore, it is important to conduct comprehensive identity and similarity searches before filing a trademark application.

You should also consider the possibility that the trademark will be revoked for non-use after five years – do not apply for a confusing number of goods and services.

Warnings only have legal effect after a subsequent reminder

A warning notice has legal validity from the moment of delivery. Deadlines in warnings should not be ignored. If they expire, an injunction can be issued. A reminder is not necessary. Due to the legal nature of the interim injunction, it is relatively unproblematic, provided it is conclusively justified.

So when you receive a warning, do not wait for further reminders and reminders, but react immediately. It is therefore not uncommon for the amount in dispute to rise to the order of €50,000. In the case of well-known and valuable trademarks or frequent and therefore serious interference with the trademark rights of others, the amount in dispute can be large.

Paying invoices from trademark scammers

Similarly to the registration of a newly founded GmbH or UG in the commercial register, trademark owners receive invoices deliberately issued without reason shortly after the trademark application and registration of the trademark in the trademark register. These imitate official fee notices, but are intended to induce them to pay for a service that is objectively not necessary.

In doing so, they are legally designed in such a way that you legally take advantage of a (mildly expressed) unnecessary service. A classic example is registration in a “Companies and Trademarks Register” for a fee in the mid three-digit range. Rip-off artists make use of the public trademark register and exploit the inexperience of new trademark owners. Ignore dubious letters; apart from the trademark application fee, you will not be asked for any further payments. In case of doubt, we are at your disposal for further questions.

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EU-Markenanmeldung

26 Jun 2024/0 Kommentare/in EU Marke anmelden

Sehr geehrte Damen und Herren, ich möchte für einen Kunden eine Wort-/Bildmarke in der EU anmelden. Hierzu hätte ich Fragen, z. B. bzgl. der Förderwürdigkeit. Es wäre sehr freundlich, wenn Sie mich einmal zurückrufen. Meine Rufnummer lautet: 01794943739 Vielen Dank. Mit freundlichen Grüßen A. Pawlowski

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Sehr geehrte Damen und Herren für meine Artikel plane ich eine Marke in der EU einzutragen. Haben bei Ihnen gelesen es gibt eine KMU Förderung. Wie funktioniert diese bei der Bestellung der Dienstleistung in Ihren Portal? Wird die Förderung durch Sie beantragt oder muss ich das selbst übernehmen? Wird die Förderung garantiert ausbezahlt? Und wann? […]

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Sehr geehrte Damen und Herren, wir möchten gerne für eine Firma in Shanghai eine EU-Markenteintragung veranlassen. Ich habe mich heute morgen bereits telefonisch bei Ihnen gemeldet und um Rückruf gebeten, da die Zeit aber etwas drängt, melde mich noch einmal parallel per Kontaktformular bei Ihnen. Auf Ihrer Website sind die Kosten sehr schön aufgelistet, möchte […]

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Sehr geehrte Damen und Herren, meine Tochter möchte eine EU-Marke (Wortmarke) anmelden. Die anzumeldende Klasse(n) müssten noch eruiert werden. Mit welchen Gesamtkosten (Anmeldegebühr, evtl. weitere Klasse und Anwaltskosten) müsste gerechnet werden? Über eine zeitnahe Rückmeldung wäre ich sehr dankbar. Mit freundlichen Grüßen Angelika Semsch

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Trademark registry in EU

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Objective 1

Objective 2

Objective 3

EU Trademark Application in eight steps – Step-by-step procedure for applying for an EU trademark

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Step 1 – Find trade name

Step 2 – Check eligibility for registration

Step 2 – Check eligibility for registration

Step 3 – Identity and similarity search

Step 4 – Check for protection based on reputation

Step 4 – Check for protection based on reputation

Step 5 – Draw up a list of goods and services

Step 6 – Apply for an EU trademark

Step 6 – Apply for an EU trademark

Step 7 – Registration of the trademark and objection period

Step 8 – Trademark registration – 10-year trademark protection

Step 8 – Trademark registration – 10-year trademark protection

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Advantages and disadvantages of applying for an EU trademark

Advantages of applying for an EU trademark

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The most important tips and most frequent mistakes when applying for an EU trademark

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