Legal Basis of Trademark Law in Germany
German trademark law is a part of labelling law and therefore a subcategory of intellectual property law. The German Trademarks Act forms the legal basis for trademark law in Germany. The object of protection in trademark law – the trademark – has been given a legal definition in § 3(1) of the Trademarks Act. This law states:
“All signs, particularly words including personal names, designs, letters, numerals, sound marks, three-dimensional designs, the shape of goods or of their packaging as well as other wrapping, including colours and colour combinations, may be protected as trade marks if they are capable of distinguishing the goods or services of one enterprise from those of other enterprises.”
According to this law, all characters (words, images, letters, numbers, sound signs, and three dimensional designs) can be protected as trademarks if they are suitable for drawing a distinction between the goods and services offered by one business from those offered by another. Trademark protection results in, first of all, an exclusive right of use, as well as a right to stop third parties from using the trademark without being entitled to do so.
However, it is noted by §3(2) Trademarks Act that the following cannot be considered a trademark:
Signs consisting exclusively of a shape
- which results from the nature of the goods themselves;
- which is necessary to obtain a technical result; or
- which gives substantial value to the good
The German Trademark Act outlines the law in Germany relating to the requirements for trademark protection, the limitations of such protection, the penalties for breaches of trademark law and much more.
Creation and Protection of a Trademark
Under § 4(1) of the Trademarks Act, a trademark comes into existence through its entry in the trademark registry. It is then protected by trademark law in accordance with the principle of priority, under which the trademark that has been registered first has priority vis-à-vis one that has been registered later. However, there can be certain obstacles to registering something as a trademark. Thus, under § 8 Trademarks Act, nothing can be protected as a trademark where an “absolute obstacle to protection” applies. This will be the case, for instance, where the material in question lacks the necessary distinctiveness, where a commonly used word is meant to be used as a trademark, or where the material cannot be expressed graphically.
§ 8(2) Trademark Act provides the full list of those trademarks which will not be considered. Here are some of the more common grounds for a trademark to not be considered.
The following trade marks shall not be registered
- which are devoid of any distinctive character for the goods or services;
- which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services;
- which are contrary to public policy or to accepted principles of morality;
- which have been applied for in bad faith.
In addition, there are relative obstacles to protection, such as similarity to another trademark or priority taken by another trademark due to an earlier trademark registration. However, relative obstacles to protection have to be asserted in litigation. Where trademark law has been infringed, claims for an injunction or damages can be asserted via a warning letter. Further, there may even be a claim for destruction of the infringing material.
Working with an experienced legal professional is the surest way to secure and protect your company’s trademark. Use the contact form below this article to get in contact with our trademark lawyers.
Wordmarks & Figurative Marks
Trademarks play a large part in our everyday lives. Products offered by well-known producers are more successful, are quickly recognised by customers, and are thus often of great value. Further, people tend to associate trademarks with a particular level of quality, or a reputation. Therefore, innovatively labelling your products does not only serve brand recognition, but also has an advertising function for a particular product. Trademarks are protected by the law of intellectual property to prevent other producers from using the name and labelling of a trademark for their own products. This useful step enables producers to market different products to potential customers exclusively under one brand, while using different associations.
Trademark Registration in Germany
This requires the registration of your trademark. Factually, registration itself is a simple process. However, on the legal level, many questions will often arise prior to this. Has a similar trademark already been registered? Am I still allowed to register my own trademark at all? What is the scope of trademark protection? Our trademark lawyers will answer any questions you may have about trademark law and will help secure your rights.
What is a “Wordmark”?
A wordmark can consist of words and letters, as well as numbers and other characters. Such a mark is protected in any form. This includes capitalisation or lack thereof and common spellings. Letters and numbers, as well as commonly used symbols and punctuation marks (such as “:,+,-,?,!“), count as “characters”.
“Figurative Marks” and “Word and Figurative Marks”
Characters that go beyond the scope of a wordmark are often classified as figurative or “word and figurative marks”. Wordmarks whose main feature is the visual design of the writing are also considered word and figurative marks. Relevant criteria are, for instance, whether the words are printed in bold or in italics, and their position in different lines or overall. Further, the writing in a word and figurative mark is not necessarily protected, as the visual design is the protected matter in this case.
Figurative marks are images and elements which do not contain any elements of writing. These distinctions can be fluid. Trademark registration may, in some circumstances, not be possible or, due to a lack of protected elements, helpful. Our lawyers will advise you in all trademark law questions, in particular relating to trademark examination, protection, and registration.
In-Court Representation with German Trademark Lawyers
Where possible, and where in our clients’ interest, our lawyers will look to resolve disputes outside of court. This is usually a time-saving and cost effective means of resolving disputes. However, this is not always possible. There are times when a warning letter and other out of court mechanisms are not enough of a deterrent. Should this occur our lawyers will be available for in-court representation. We will represent you both at the lower levels and to the appellate stage in front of the Federal Patent Court in Munich and beyond where necessary. You can be certain that our lawyers will provide a thorough analysis of your case and expert guidance throughout.
Our lawyers are experienced in their dealings with the German legal system and will take the lead in your legal work. However, we will work closely with you to ensure that there are no surprises or conflicts within our strategy by the time it reaches the court.
Expertise in Trademark Law
Our services as trademark lawyers extend to when your company is applying for a trademark and also to when you have an established trademark. We will be by your side in in-court proceedings as well as out-of-court advice and legal supervision. Our lawyers will inform you of the options available to you in the case of a dispute. Whether this involves issuing warning letters and seeking interim injunctions to advising you on which trademarks are particularly valuable to your business. Our lawyers will ensure that your intellectual property is protected.
Should your company have been accused of breaching German trademark law it is also important to consult with a German trademark lawyer. Our legal team will examine the claims made and determine the best course of action for your firm based on the circumstances. It is important not to panic in such a situation and to take the time to consult with experts. Our lawyers will provide the clear advice needed based on their experience in this legal field.
- Trademark searches
- Representation in court
- Cancellation proceedings
- Trademark registration
- Renewal of registration
- Transfer of trademark
- Enforcing trademark rights
- Drafting of contracts
- Declarations of discontinuance
- Warning letters
- Trademark monitoring
- Licence agreements