Trademark application

There are many good reasons to register a trademark and secure a certain sign for yourself. We have summarized our top 3 below.

Safety
In Germany, the principle of “first come, first served” applies. Whoever applies for a trademark first will own it in the future. So if you want to make sure that your trademark is not snatched away before your eyes by another applicant, you should register it in good time. We recommend doing this at least six months before the planned start of use.

Monopoly right
A registered trademark grants a monopoly on a specific sign. The trademark owner is generally entitled to prohibit others from using an identical or confusingly similar sign for goods and services that are identical or similar to the products for which the trademark was registered. The extent of this prohibition right depends on the circumstances of the individual case. If your competitor copies your trademark, we will be happy to advise you.

®-Symbol
One of the great advantages of a registered trademark is that you can use the ® symbol, i.e. write an “R” in a circle after your brand name. Such a symbol has an important marketing and advertising effect. To ensure that this effect is not exploited unlawfully, it is even legally protected. Anyone who uses the symbol without having a registered trademark is acting unfairly and can be warned for a fee.

A German trademark has various advantages over a so-called European Union trademark. First of all, a German trademark is significantly cheaper. The official fees of the DPMA start at EUR 290 (for up to three Nice classes), whereas the official fees at the EUIPO start at EUR 850 (for a single Nice class).

In addition, the risk of your trademark coming into conflict with older third-party rights is significantly lower. This is because a German trademark can only be attacked on the basis of rights that are protected in Germany. In contrast, an EU trademark can be attacked on the basis of any earlier right that applies anywhere within the EU. For example, the owner of a French trademark could attack a European Union trademark, but not a German trademark.

The great advantage of a European Union trademark is its regional scope of protection. While the German trademark only provides protection within our national borders, the EU trademark is valid throughout the entire territory of the EU. Although registering a European Union trade mark is more expensive than registering a national trade mark, it usually pays off if you would otherwise register separate trade marks in three or more EU member states. Seen in this light, a European Union trademark is relatively inexpensive.

We are often asked whether it is better to register a word mark or a word/figurative mark. There is no universal answer to this question. We often hear that a word mark has a wider scope of protection and that it is therefore worth more in case of doubt than a figurative mark. However, it is true that the protection conferred by a word mark is not greater, but different. It is not for nothing that valuable trademarks are usually protected by parallel registrations of both trademark forms – figurative marks usually even in black and white and in color at the same time.

A trademark protects a very specific sign for very specific goods and/or services. To ensure that it is clear for which products protection is to be claimed, the goods and services for which the trademark is to be registered must be specified when registering the trademark. To simplify this and create a uniform international standard, a special classification system was agreed at a diplomatic conference in Nice in 1957. A new edition is published by WIPO every five years, which has also been updated with an annual version since 2013. The Nice Classification is now used in more than 140 countries, including Germany. The system classifies all conceivable goods and services into a total of 45 classes (34 classes of goods, 11 classes of services).

The creation of a professional list of goods and services based on the Nice Classification is of the utmost importance. If you claim too little protection, you devalue the trademark. If you claim too much protection, you provoke avoidable conflicts with third parties. And if you formulate the list incorrectly, this can lead to the registration list being drawn out and you may have difficulties in subsequently extending the trademark to other countries. If you register your trademark through us, you don’t have to worry about this. You simply tell us which goods and services you need protection for. We will then “translate” this information into a list of goods and services tailored to your needs, taking brand strategy considerations into account.

A distinction must be made between official fees and lawyers’ fees. The official fees for a German trademark start at EUR 290, for a European Union trademark at EUR 850. When it comes to legal fees, you can benefit from our experience and routine in trademark applications and conducting availability searches. We offer both at fairly calculated fixed prices starting at EUR 299.

The DPMA states that the average duration of a registration procedure is 3 to 4 months. However, if you prepare the application well and try to avoid objections, it is often quicker. If the registration is urgent, it is also possible to request an accelerated examination for an additional fee.

Anyone who registers and uses a trademark without having carried out an availability search beforehand is walking into a trademark dispute with their eyes wide open: not only is there a risk of opposition by owners of older third-party rights, but also the threat of a warning letter, injunction and infringement proceedings. This can quickly become expensive. To avoid this risk, we carry out professional availability searches. In doing so, we not only point out risks, but also ways in which these can be minimized.