Before filing a trademark application, a comprehensive availability search is essential. The search must cover: existing registered trademarks with the German Patent and Trademark Office (DPMA) and the European Union Intellectual Property Office (EUIPO), pending applications, and earlier rights including trade names, company names, and domain names that could conflict with the proposed trademark. Identifying conflicts before filing prevents the waste of filing fees on a trademark that cannot be registered or that would infringe an existing right.
Trademark applications can be filed at three main levels: nationally with the DPMA (covering Germany only), as a European Union Trade Mark (EUTM) with the EUIPO (covering all 27 EU member states with a single application), or internationally through the WIPO Madrid System (covering multiple countries with one application). The choice of filing strategy depends on where the trademark is to be used, the budget available, and the commercial importance of each territory. We develop filing strategies tailored to your commercial needs.
A registered trademark must be actively used and maintained to retain its validity. A trademark that has not been genuinely used for a continuous period of five years is vulnerable to revocation for non-use. The trademark must also be renewed every ten years. Beyond these formal requirements, active trademark portfolio management involves monitoring for infringing uses and applications, enforcing the trademark against infringers, and keeping the registration aligned with the actual commercial use of the mark.
Trademark disputes arise in various contexts: opposition proceedings before the DPMA or EUIPO against a conflicting trademark application, infringement proceedings before the civil courts against unauthorized use of a trademark, and revocation or cancellation proceedings against an existing trademark. We represent trademark owners in all types of trademark disputes, both offensively (asserting our clients' trademark rights) and defensively (resisting unjustified claims). Early, expert handling of trademark disputes maximizes the prospects of a favorable outcome.
Under German and EU trademark law, any sign capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of other undertakings can be registered as a trademark. This includes: words (including personal names), logos, slogans, colors, shapes, sounds, and combinations thereof. The mark must be distinctive — descriptive terms or common words cannot be registered as trademarks. Before filing, a legal assessment of the registrability of the proposed mark is strongly advisable.
A registered trademark is initially valid for ten years from the filing date. It can be renewed indefinitely for further periods of ten years, provided the renewal fees are paid. Unlike patents, trademarks can theoretically last forever — as long as they are renewed and genuinely used. The unlimited duration of trademark protection makes it an exceptionally valuable intellectual property right for strong, well-established brands.
A DPMA trademark (registered with the German Patent and Trademark Office) covers only Germany. A European Union Trade Mark (EUTM) registered with the EUIPO covers all 27 EU member states with a single registration. An EUTM is cost-efficient if protection is needed in multiple EU countries, but has the disadvantage that if a conflict is found in one member state that prevents registration, the entire EUTM application is affected — it may be possible to convert the EUTM application into national applications in unaffected countries.
Yes. Trademark infringement does not require that the infringer has a registered trademark — it requires that the sign used infringes someone else's trademark rights. If you use a sign that is confusingly similar to an existing registered trademark for identical or similar goods or services, you are liable for trademark infringement regardless of whether you have your own trademark registration. This underscores the importance of conducting a clearance search before adopting and using a new brand.
A trademark application may be rejected for various reasons, and different legal remedies are available under Sections 64-66 of the German Trademark Act (MarkenG). The most common grounds for rejection are absolute grounds for refusal under Section 8 MarkenG (e.g., lack of distinctiveness, descriptive character) or formal deficiencies. If your application is rejected, you have several options: You can file an appeal with the Federal Patent Court within one month of receiving the decision (Section 66 MarkenG). Alternatively, you can modify the application to overcome the objections, or submit a new, amended application. Submitting evidence of acquired distinctiveness under Section 8 (3) MarkenG is often particularly effective – this applies when an originally descriptive term has gained distinctiveness through intensive use in the market. It is crucial to observe deadlines carefully and seek professional support, as the chances of success depend on the quality of the arguments and the evidence provided.
