Trademark registration - register a trademark

Your expert lawyer for registering your trademark

Brands are much more than just symbols or names on products. They serve to identify a company's goods and services and at the same time distinguish them from competing products. Consumers also associate brands with certain quality expectations and a specific image. 

To ensure that no third party can use your brand and benefit from its value without authorization, a trademark registration is required. Through a successful trademark registration, trademark owners obtain the exclusive right to use the trademark to label their products and services. If a registered trademark is nevertheless used by other market participants without authorization, the trademark owners have various legal steps at their disposal to take action against the trademark infringement.

Registering a trademark is therefore crucial to protect the value that customers see in a brand from misuse, to maximize business opportunities (e.g. by licensing to third parties), and to legally secure the investments made in brand development.

But trademark registration involves much more than just filling out forms - it is a strategic move that should not only be precisely planned, but also carried out in a legally compliant manner. Without the appropriate expertise, however, this is difficult to accomplish and usually requires professional support from a IP lawyer. 

As specialized lawyers for intellectual property we at ab&d Rechtsanwälte have in-depth specialist knowledge and many years of experience in dealing with trademark registrations. From the development of your trademark (property rights strategy) to the correct trademark registration (national and international) and the resolution of conflicts before trademark offices - we are at your disposal throughout the entire trademark registration process and support you with a clear strategy, clever tactics and personal advice to protect your trademark in the best possible way.

Would you like to register a trademark with our expert support? Our experienced intellectual property lawyers in Germany are available for a non-binding and free initial telephone consultation and will be happy advise you and your company both nationwide and throughout Europe.

Your lawyers for trademark registrations:

Specialist lawyer for intellectual property rights

Before trademark registration: Consulting on trademark development and trademark types (IPR strategy)

The earliest possible consultation on trademark law by intellectual property lawyers is advisable, even before a brand is developed from a marketing perspective. This is because a brand strategy can only be successful if it serves as a basis to avoid trademark infringements and if the brand is actually registered as a trademark. Here in particular, the correct type of the trademark, its protectability, and the selection of the protected territory play a significant role.

We will be happy to assist you in the development of your trademark and provide information about the possible types of trademarks, territories of protection as, well as the corresponding opportunities, risks and costs associated with the trademark registration, in order to establish an optimal IPR strategy for your business needs.

Types of trademarks

In principle, future trademark owners can register a variety of forms as a trademark, as long as the specific trademark is legally protectable and there are no grounds for refusal. Protectable means in particular distinctive and non-descriptive (see also: "Examination of the protectability and registrability of your trademark"). The law mentions words, letters, images, numbers, sounds, three-dimensional shapes and also colors, holograms and multimedia signs that can be protected as trademarks ( § Section 3 (1) MarkenG and also Art. 4 UMV).

Trademark protection territory

The correct choice of the protected territroy and thus also the type and number of trademarks to be registered is essential so that you can successfully enforce your trademark against trademark infringers later on. In principle, you should always protect your trademark in the territory in which you also offer your goods and services. The majority of our clients register a German trademark or a Union trademark (with protection throughout the EU). However, it is also possible to register individual national trademarks in the markets in which you want to be active.

Examination of the protectability and registrability of your trademark

Not all trademarks are registered by the trademark offices. Once the trademark application has been filed, a strict examination of registrability is carried out by the relevant trademark office in order to keep the trademark register as free as possible of inadmissible signs (refusal of registration in the case of absolute grounds for refusal).

The essential requirements for protectability and registrability are regulated in the §§ 3, Section 8 MarkenG (for German trademarks) or Art. 7 UMV (for Union trademarks). One of the most important requirements is distinctiveness. Distinctiveness means the specific ability of the sign as a trademark to distinguish the goods and services from those of other market participants. In the case of fanciful names, this is generally unproblematic. On the other hand, purely descriptive signs - i.e. those that describe goods and services in terms of type, quality, quantity, intended purpose, value, geographical origin, etc. - are not distinctive. There is a need to keep them free for general use.

A simple example: The term "car" cannot be registered as a trademark for motor vehicles because it directly describes this product and must therefore be kept free for all competitors. Moreover, this term would not even be recognized as a trademark by consumers due to its lack of distinctiveness.

The topic of the protectability and registrability of trademarks is very complex and characterized by a large number of legal precedents. If you have already developed your trademark and would like to avoid unnecessary rejection costs we at ab&d Rechtsanwälte will be happy to examine the protectability and registrability of your trademark and inform you whether and why your trademark can or cannot be registered in the trademark register.

Identity and similarity search for older collision trademarks (Europe-wide and worldwide)

Anyone who registers a trademark that is already protected, risks facing an opposition to the trademark registration and, if the trademark is used in commerce, also a warning. That is why it is crucial to use a so-called identity search to determine whether your sign is actually still available or whether it has already been protected as a registered trademark by a third party (relative protectability).

However, although the identity search is necessary, it is not sufficient for comprehensive protection. Because not only identical earlier trademarks, but also only similar older property rights (in particular trademarks and company symbols) could conflict with your trademark idea. In this case, the older sign will always prevail (so-called principle of priority). If you apply for a conflicting trademark and even use it, an opposition in trademark application proceedings or even a cease-and-desist letter due to trademark infringement by the rights holder of the earlier trademark may result.

Therefore, following the identity search, we also carry out a similarity search in which all variations of the intended trademark are carefully compared with the trademark register. This additional step ensures that not only identical trademarks but also potentially confusing variations are captured.

The linchpin here is the so-called likelihood of confusion (cf. § Section 14 MarkenG, § Section 42 MarkenG and Art. 8 UMV, Art. 9 UMV). Put simply, this always exists if the target group could assume that the goods and services could come from the same company (or related companies) due to the similarity of the signs on the one hand and the similarity of the goods and services on the other.

For example, the trademark "BMV" would be highly similar to the famous trademark "BMW" in the field of motor vehicles, so that there would be a likelihood of confusion. The trademark owner of "BMW" could prohibit the registration of the trademark "BMV" and its legal use.

Identity and similarity searches are therefore essential in order to identify potential trademark conflicts at an early stage and to ensure comprehensive and effective protection of the trademark. Our dedicated team of IP lawyers not only has the necessary specialist knowledge, but also many years of experience in conducting professional trademark searches. So you can be sure that your trademark is not only legally protected, but also optimally secured against similar variations.

Register a trademark (German trademark, EU trademark, IR trademark)

We register German trademarks for you at the DPMA, Union trademarks at the EUIPO, and also international trademarks (so-called IR trademarks) through the WIPO.

For the corresponding trademark registration, we are happy to handle the entire trademark application process for you, which we will carry out as follows after developing the intellectual property rights strategy, checking the protectability and registrability as well as the trademark search:

  • Drafting a customized list of goods and services (the motto here is: as much as necessary, but as little as possible)
  • Electronic application of the trademark, if applicable disbursement of the application fees (upon request, accelerated application procedure)
  • Monitoring the registration process and, if necessary correspondence with the trademark office until registration
  • Archiving of the trademark certificate in copy (we send the originals to our clients)

After the trademark has been registered, we are listed as your trademark representative in the trademark registers. This allows third parties to see immediately that you were accompanied by an expert intellectual property lawyer when registering your trademark.

Legal support for problems with trademark registration

We will be happy to handle all correspondence with the relevant trademark offices (DPMA, EUIPO or WIPO) for you in German and English and, if necessary, also conduct administrative and judicial proceedings in order to successfully register your trademark in the trademark registers.

We review and discuss with you in particular objections to your trademark application (e.g. due to formal errors), rejection notices (e.g. due to alleged lack of protectability of the trademark) or notifications of oppositions regarding the trademark registration. As expert lawyers for intellectual property rights we always find a solution for all conceivable reactions of the trademark offices and represent you and your trademark in particular:

  • in opposition proceedings against the trademark registration initiated by owners of earlier rights (cf. § Section 42 MarkenG, Art. 46 UMV)
  • in applications for declarations of invalidity of trademarks due to absolute grounds for refusal, which can be submitted by anyone (cf. § Section 50 MarkenG, Art. 59 UMV)
  • in applications for declarations of invalidity of trademarks due to relative grounds for refusal, which can be filed by holders of prior rights (cf. § 51 MarkenG, Art. 60 UMV)
  • in applications for a declaration of revocation for trademarks, that have not been used, which can be provided by anyone (§ 49 MarkenG, Art. 58 UMV)
  • in complaints and appeal procedures against lower-instance decisions of the trademark offices on the Federal Patent Court or the CFI (General Court of the European Union)

After trademark registration: Execution of trademark transfers and preparation of license agreements

As soon as a trademark is registered, third parties can be granted a right to use the trademark for a fee or free of charge through a license. License agreements often arise, e.g. within franchise models or for tax reasons, if the ownership of the trademark and the operating business are to be separated. The essential contents of a license agreement should include the following regulations:

  • Type and scope of the right of use (simple license, exclusive license)
  • License location and duration
  • Remuneration (license fee)
  • Termination options
  • Non-aggression pact and conduct of the contracting parties in the event of trademark infringements by third parties

Our specialized intellectual property lawyers will be happy to advise you on the sense and expediency of a license agreement, support you in drafting the content and negotiate it with the potential contractual partner.

In addition to the granting of trademark licenses, a partial or complete trademark transfer is also possible after the successful trademark registration. In order to carry out a trademark transfer, a transfer process and the correction of the trademark register are generally required. The object of the transfer is the existing trademark, which is transferred to a new owner. Such a change of ownership is governed by the law in which the trademark was registered. If a German trademark is to be transferred, this must generally be done in accordance with German law, regardless of where the respective parties are domiciled. In principle, the transfer can be made informally, but a written contract is highly advisable, not least to provide evidence. In order to ensure that all relevant aspects are taken into account when drawing up the contract, it is essential to consult an expert lawyer.

If you want to sell or acquire a trademark, we, as experienced lawyers in IP will be happy to assist you with the drafting, negotiation and review of your trademark transfer agreement. Of course, we also update the company data in the trademark register, extend trademark protection and convert trademarks if necessary.