The key to successful trademark registration

However, trademark registration is not just a mere formality. The legal requirements and risks associated with trademark registration are often underestimated. Those who proceed without a plan risk objections, refusal of protection, oppositions, or a scope of protection that is later found to be insufficient.

A trademark application is not only successful when it is registered, but when the protection is long-lasting, strategically meaningful, and legally enforceable.

To achieve this, the following points should be considered:

1. Choosing the right trademark idea

Not every sign is suitable as a trademark. 

Descriptive terms or commonly used designations generally do not have sufficient distinctive character. In addition, symbols that violate public order or morality should be avoided. The depiction of national coats of arms, national flags, or other national emblems should also be avoided. Otherwise, the trademark may be rejected on the basis of absolute grounds (cf. Section 8 of the German Act on the Protection of Trademarks and other signs [MarkenG]; Art. 7 EUTMR). 

Therefore, it should be checked whether the trademark is legally protectable as early as the development stage.

2. Comprehensive trademark research

In order to minimize the risk of subsequent conflicts, it is advisable to have a careful trademark search carried out in advance. 

Some trademark offices, such as the German Patent and Trademark Office (DPMA) or the EUIPO, do not automatically check whether earlier rights of third parties conflict with the application upon receipt. However, earlier identical or similar trademarks may be invoked against the application in opposition proceedings (before the expiry of the opposition period) or in cancellation proceedings (after the expiry of the opposition period). This can lead to a complete or partial refusal of protection based on relative grounds  (cf. Section 9 MarkenG; Art. 8 EUTMR).

In addition, the owner of an earlier trademark may prohibit the actual use of an identical or similar sign – and, if necessary, enforce this right in court.  

Finally, it may be advisable to conduct a commercial register search in Germany for older, identical, or similar company names. These could also hinder a successful trademark application.

In principle, therefore, professional research helps to identify potential “show stoppers” and risks at an early stage and to avoid costly conflicts or subsequent rebranding.

3. Precise list of goods and services 

In Germany and the EU, trademarks are not protected “generally” but for specific goods and services. The Nice Classification is used for this purpose: An internationally standardized system that divides goods and services into a total of 45 Classes (Classes 1-34 for goods, 35-45 for services).

Choosing the right goods and services or Classes is crucial to the success of the trademark. Not only current business activities should be taken into account, but also future strategic orientation. 

An incorrect or overly narrow selection of Classes can result in the trademark remaining unprotected in precisely those areas where protection is needed. There is a risk of gaps in protection, which competitors could potentially exploit to their advantage. At the same time, an unnecessarily broad application, especially in Classes that are not relevant to the applicant, causes avoidable costs.

Creating a customized list of goods and services is therefore a demanding challenge, and the support of an expert can be advantageous in order to secure trademark protection in a targeted and efficient manner.

4. Legally sound application

The formal application to the trademark office requires clear information about the trademark, the applicant, and a properly drafted list of goods and services. It should be noted that the application requirements vary depending on the country and type of trademark. 

In any case, the subject matter of the trademark must be clearly identifiable (cf. Section 8 (1) MarkenG; Art. 4 (b) EUTMR). This can pose a particular challenge for the applicant, especially in the case of non-traditional types of trademarks (such as sound marks, motion marks, or three-dimensional marks). 

Furthermore, it should be noted that any subsequent modification of the application is generally not possible. Graphical representation, words, colors, or similar elements cannot be changed once the application has been filed with the DPMA or EUIPO. Only the selected goods and services can be reduced; however, an extension is not possible.

Thus, even minor inaccuracies can significantly affect the scope of protection of the trademark or lead to objections. 

5. Active trademark protection after registration 

Registering the trademark does not mark the end of the work.

A trademark only realizes its value in the long term if it is actually used, regularly monitored, and consistently enforced when necessary. After the grace period expires (five years after registration in Germany and the EU, respectively), the registration may be at risk of (partial) revocation if a third party files a revocation action and the mark has not been put to genuine use.

It is also advisable to continuously monitor the market and new trademark applications, or to have them monitored, in order to be able to take early action against identical or similar signs. If no timely action is taken, third parties’ legal positions may become established and sustainably weaken one’s own trademark protection.

Active trademark monitoring and enforcement is therefore an essential part of a long-term and valuable trademark strategy.

6. Well advised is better protected 

At first glance, a trademark application may seem straightforward, but in practice it often proves to be legally challenging. The devil is in the details. 

The foundation for sustainable trademark protection is laid even before the application form is filled out. Weaknesses or inconsistencies often only become apparent in the event of a conflict, i.e., precisely when corrections involve considerable effort or are no longer possible.

As specialists in trademark law, we are happy to support you in 

• developing a legally sound and future-proof trademark,
• realistically assessing risks based on comprehensive researches,
• defining the optimal scope of protection, and
• ensuring a legally secure trademark application.

In this way, we ensure together that your trademark is not only registered, but also delivers the protection your business truly needs. Please do not hesitate to contact us.