Trademark application: strategy, protection and trademark infringement
What to consider before filing a trademark application?
Company startups usually cannot do without a meaningful brand presence. Before filing a trademark application, the following basic points should be clarified:
- Which signs, shapes, colors, etc. do I want to protect?
- Which goods or services do I want to protect?
- How extensive should the trademark protection be?
The more precisely a trademark protection is thought through, the lower the risk of a later warning from third parties who presumably own older property rights.
Which trademark form suits the company?
When founding a company, the word/figurative mark is often the best solution for trademark protection. It protects the company name linguistically and the corresponding company logo visually. A word mark can also provide additional flexibility. Since trademark protection is designed for ten years, you should consider long-term developments.
How are goods and services protected?
Within the scope of a trademark application, a division into 45 Nice classes takes place. These are divided into classes 1 to 34 for goods and classes 35 to 45 for services. Legal advice can minimize the risk of possible warnings if very detailed products or services are to be protected.
Where should the trademark be protected?
When setting up a company for the German market, a trademark application for Germany via the German Patent and Trademark Office (DPMA) is usually sufficient in the first instance. Alternatively, a Union trademark offers protection throughout Europe. In addition, trademarks can be registered internationally for individual countries.
What cannot be protected?
Descriptions for very general objects, goods or services (such as “table” or “car”) cannot be protected. This also applies if the description is in a common other language, such as English. Coats of arms, flags and anything contrary to morality or public order are also not protectable.
Why should the domain be chosen to match the trademark?
Trademark protection exists for a word/figurative mark or a word mark for a very specific combination of signs. You have to register the matching domain through a provider. In order to be found by customers and to be protected here as well, it is advisable to design the character combination in the same way as for the trademark.
What is a trademark infringement?
A trademark infringement occurs when a registered trademark is used against the will of the trademark owner. Causes can be the identical or similar use of the signs and optics, if goods or services are designed the same or very similar. It can occur within the scope of a trademark application or when working without a trademark of one’s own. Within the scope of a trademark application, trademark owners of older protective rights have the possibility to file an opposition against the new trademark. Therefore, it is advisable to monitor one’s own trademarks.
Conclusion
A well thought-out trademark application in advance protects against trademark infringements and warnings from third parties. Legal advice here can uncover and prevent potential trademark conflicts before they arise.
