Signs, logos etc. for particular goods and/or services suitable to distinguish the goods and services of one company from those of another company can be protected as trade marks. Words, letters, numbers, illustrations, audio signals, three dimensional objects and other creations can be protected as a trade mark.
German Trademark
Filing procedure
A German trademark application has to be filed with the German Patent and Trademark Office. The day on which the application has been submitted is called the filing date. Unless a so-called priority has been claimed, the filing date will be the key date for a possible examination of the relative grounds for refusal of protection.
A trademark application is subject to examination referring to absolute grounds for refusal of protection by the German Patent and Trademark Office. Generally, the examination is carried out in written statements by the Examiner in charge of the German Patent and Trademark Office and the applicant or his authorized patent attorney to discuss the prerequisite of protection of the trademark applied for.
Within 3 month after publication of the trademark registration, opposition can be filled by a third party. In such opposition proceedings, the trademark registration is examined versus the relative grounds for refusal of protection (preiously filed trademark applications and registrations).
Terms of protection
The so-called absolute grounds for refusal of protection are examined by the German Patent and Trademark Office. The two criteria examined are the lack of any distinctiveness and that the basic trademark needs to be kept free for public use.
Relative grounds for refusal of protection can be asserted against the registration of a trade mark by any third party. Relative grounds for refusal of protection are identical or similar previously filed trademarks or registered trademarks and company names.
Term
A trademark´s term is 10 years from the filing date. Protection can be extended by a further 10 years.
Five years after the trademark´s registration a compulsory use requirement becomes effective. If the trademark is subject to compulsory use, it has to be used in such way that rights are preserved. Otherwise the trademark could be cancelled upon request of a third party and rights based on the trademark registration cannot be claimed any more.
EU trade mark
Filing procedure
A EU trade mark application has to be filed with the European Office for Intellectual Property (EUIPO), Alicante. The day on which the application has been submitted is called the filing date. Unless a so-called priority has been claimed, the filing date will be the key date for a possible examination of the relative grounds for refusal of protection.
A EU trade mark application is subject to examination referring to absolute grounds for refusal of protection by the EUIPO. Generally, the examination is carried out in written statements by the Examiner in charge of the EUIPO and the applicant or his authorized patent attorney to discuss the prerequisite of protection of the trade mark applied for.
Within 3 month after publication of the trademark application, opposition can be filled by a third party. In such opposition proceedings, the trade mark application is examined versus the relative grounds for refusal of protection (previously filed trademark applications and registrations).
A European trade mark comes into effect in all countries of the European Union.
Terms of protection
The so-called absolute grounds for refusal of protection are being examined by the EUIPO. The two criteria examined are the lack of any distinctiveness and that the basic trademark needs to be kept free for public use.
Relative grounds for refusal of protection can be asserted against the registration of a trade mark by any third party. Relative grounds for refusal of protection are identical or similar previously filed trade marks or registered trade marks and company names.
Term
The EU trade mark´s term is 10 years from the filing date. Protection can be extended by a further 10 years.
IR- or International Trademark Registration
Registration procedure
An IR-Trademark application has to be filed with the WIPO (OMPI) in Geneva or with the German Patent and Trademark Office in Munich or with the EUIPO, Alicante. The day of the filing is called the filing date. This date is, if a so-called priority is not claimed, the key date for a possible examination of relative protection impediments.
A trade mark protection for a large number of countries can be achieved with one international application for an IR-Trademark. After an executed registration the IR-Trademark is protected in every designated country in the same way as if it was filed there directly.
Prerequisite for an IR-Trademark registration: According to the MMA (= Madrid Trademark Agreement) an IR-Trademark registration is only possible if the trade mark is already registered in the country of origin (national trade mark registration in a country in which the applicant has his place of residence or his subsidiary or it is his nationality). According to the PMMA (protocol to the Madrid Trademark Agreement) an IR-Trademark registration is already possible if a respective national trade mark application has been filed.
Every IR-Trademark depends on this basic registration or basic application (see above) during the first five years from the date of the international registration, i.e. when the basic trade mark is cancelled (MMA) or the basic application lapses (PMMA), the protection of the IR trade mark will be void.
Duration of Protection
An IR-Trademark lasts for 10 (according to PMMA) or 20 (according to MMA) years after the filing date. It can be extended by another 10 years without limitation of the maximum term.