Trademark and brand law is one of the main areas of practice for our in-house lawyer and patent attorney, who represent your interests as independent professionals. Our in-house lawyers have many years of successful experience working for both German and numerous international clients. The size of our clients’ companies ranges from one-man small businesses to international corporations.
Are you looking for a lawyer who can advise you on trademark law matters? The trademark law services we provide to our clients range from initial consultation, which is particularly important for smaller companies without their own lawyers, to trademark registration and enforcement of property rights against infringers. Along the way, we always take care to find a solution that best suits your needs and possibilities. Together with you, we develop a tailor-made concept and put it into practice.
What We Do
Our services include
- Advising on trademark protection strategies
- Drafting lists of goods and services
- Conducting searches for earlier rights of third parties
- Filing and prosecuting trademark applications
- Monitoring registered trademarks
- Advising on agreements (i.e. co-existence or licensing agreements)
- Litigation, infringement proceedings
- Revocation/cancellation proceedings
Protection Strategies
During the initial consultation, it is important to develop a suitable protection strategy that offers the most comprehensive protection possible while making sensible use of resources. Our in-house lawyer and patent attorney consider the client’s objective protection needs and the means available to them.
To this end, the following questions, among others, must be clarified:
- The sign: Possible variants are words, pictures, letters, numbers, sound, three dimensional forms, colors and position trademarks.
- The goods and services: What does the client already offer in the market, what does he intend to offer over the next months, what is likely to be offered by the client within the next three to four years?
- The territory: In which countries is protection really needed? Is Germany sufficient or is protection further desired in another country, the whole European Union or selected countries worldwide?
- Search: Which already existent trademarks, company names, domains, titles can possibly oppose registration and use of the trademark?
- Cost: What can be achieved within a predetermined budget of the client?
Trademark Applications
Our in-house lawyer and patent attorney, who are licensed professionals, handle the registration of trademarks with the relevant offices. It is not significant whether you want to register a German trademark, a European trademark, an international trademark, or an international registration in individual countries. If local representatives are required for certain countries, they have a dense network of correspondent attorneys worldwide who will carry out your order locally with the same competence and reliability.
Brand Research
In most cases, trademark rights only arise once a sign has been entered in the trademark register. Only then can they be enforced against third parties. It is often assumed that trademark registration can generally help to protect one’s own business field everywhere—even against third parties who have older rights. However, this is not the case. In trademark and brand law, the priority principle applies. This means that in the event of a conflict, the party whose trademark or brand was created first and is therefore older has the better rights (or the better “cards”). Trademarks can therefore only protect one’s own business field against infringements that occur after the trademark has been applied for and registered.
On the other hand, even with your own registered trademark, it is possible to infringe on older rights of third parties and then be sued by these third parties for injunctive relief, damages, and the like. To prevent this, it is advisable to always conduct a search for such older third-party rights that could conflict with your application and use before applying for a trademark and, in particular, before starting to use a trademark.
Trademark Infringement
In the event of a trademark infringement, our in-house lawyer and patent attorney will represent your interests as independent professionals in enforcing your claims against infringers of your trademark rights and in defending you against claims asserted against you. In doing so, he will represent you in infringement proceedings before German courts, as well as in national and international opposition and cancellation proceedings before the German Patent and Trademark Office (DPMA) and the Office for Harmonization in the Internal Market (EUIPO). With the help of our dense global network of correspondent attorneys, they will also arrange for litigation and proceedings abroad on your behalf.
Administration And Monitoring
Even after your trademark has been registered, we will, of course, continue to assist you in maintaining your intellectual property rights. A registered trademark is only as valuable as its administration and monitoring.
Our in-house attorney and patent attorney, as professionals in their own right, take care of managing deadlines and ensure that timely renewals are made when the term of protection expires. Upon request, they monitor new applications by third parties for similarities and possible infringements of your trademark’s scope of protection. Relevant hits are then forwarded to you so that you can decide on the necessary next steps.
Title Rights
Trademark law explicitly protects work titles. Names or particular labels of
- print work (such as books, newspaper, magazines),
- cinematographic work (such as cinema movies, TV programs),
- sound work (such as music pieces, radio dramas, radio programs),
- stage entertainment or
- other comparable work (such as computer programs, computer games, multimedia products)
bestow upon the authorized user an exclusive right to use the title. Thus, the owner of the right is entitled to demand compensation and damages or a termination of the infringing actions from an illegitimate user of an identical or similar title that can easily cause confusion among the relevant public.
Title protection exists from the moment the title is first used. Even though it is not necessary to register the title to gain full protection, it still has to be distinctive or must otherwise have acquired a secondary meaning as a trademark.
Regardless of an actual use of the title, protection of a work may also be obtained by simply announcing the title in a so called “title protection notification” (Titelschutzanzeige), as long as the related work is published within a reasonable time frame afterwards.
Our in-house lawyer, who is a licensed professional, will advise you on choosing a suitable title, check the protectability of the title, draft title protection notices, and assist you with their publication.
Worth Knowing
- Trademark protection in Germany may result from registration or from mere use of a sign. In the latter case, it is to be determined in each individual case whether the extent of use is sufficient in order to establish trademark rights.
- A trademark only protects those goods and services for which it is registered and/or earnestly used in the market. In the context of a trademark application, drafting the list of goods and services is very important and should not only cover the current business area; possible emerging activities in the future should also be taken into consideration.
- German and Community trademarks do not have to already be present in the market upon application. In fact, the proprietor is granted a so-called grace period of five years during which he must start earnest use of the trademark for the registered goods and services. If he does not take advantage of this grace period, his trademark may be cancelled upon request of a third party after those five years as well as after any further period of five consecutive years of non-use.
