Home
Legal Issues on Trademarks,
Names and Domains
Here you will find answers to general and frequently
asked questions on trademarks, trademark law,
trademark protection and trademark applications
- questions answered by the lawyer Karsten Prehm.
If you require specific legal advice, which can
be provided in accordance with official fee schedules
or cost liabilities, please refer to a lawyer
of your own choice. In the Legal
Directory on Markenplatz, you will find
competent lawyers who specialize in trademark
law, copyright law and competition law.
This information, focusing on the situation in
Germany and Europe, is provided by Karsten Prehm,
Germany, specialist lawyer for trademark issues
(www.markenservice.com)
and associated member of the german editorial
team of Markenbusiness. We welcome international
editorial contributions to these and other questions
concerning legal issues to do with intellectual
property.

FAQ - Frequently
Asked Questions:
What can be protected
as a trademark?
Can international protection
be obtained for a trademark?
How much does it cost
to register your name as a trademark?
Why must an Trademark
Search be carried out in the lead up to an application?
How do I avoid expensive
conflicts over trademarks on the Internet?
How many registered
trademarks are there?
Why are regionally-active
companies a risk group?
Where and how do I
find a new name?
How expensive can a
trademark law conflict become?
How should I react
to an caution?
How can I increase
the value of my name?
Which utilization
possibilities exist for a trademark?

What can be
protected as a trademark?
Various trademark forms are can be differentiated:
- The word-trademark protects a word in every
form that you wish;
- The word/design-trademark protects a word
in connection with one or several graphic elements;
- The design trademark protects a particular
graphic representation;
- Further trademark forms are, for example,
a sound trademark or 3-D trademark.
Top
of page

Can international
protection be obtained for a trademark?
Apart from national trademarks in different countries,
for which however it is often required to have
a local representative in the area, there is the
possibility of obtaining an international trademark
protection via the European Community Trademark
or International Registration according to MMA
and PMMA.
The European Community Trademark has, after registration,
a validity in all 15 member states of
the Community. In 2004, the number of states will
be raised to 25 following the entry of further
countries. The European Community Trademark is
obtained from the Department for Harmonization
in the Internal Market, in Alicante.
At the World Intellectual Property Organization
(WIPO) in Geneva, you can apply for International
Registration for a national trademark or European
Community Trademark. This Registration is possible
in the current 71 countries who have signed the
Madrid Agreement and Madrid Protocols. By the
end of 2003, the entry of the USA will allow International
Registration there also.
Top
of page

How much does
it cost to register your name as a trademark?
In Germany, a national trademark is registered
with the Deutschen Patent- und Markenamt (DPMA)
in Munich. The official application fees are 300
Euro for a registration in up to three of the
45 classes of goods and services.
For the European Community Trademark, the relevant
body is the Department for Harmonization in the
Internal Market in Alicante. Their fees are split
into application and registration fees and amount
in total, for three classes, to 2,075 Euro.
The fees for International Registration depend
on the choice of countries and classes, but will
come to at least 726 Swiss Franks.
Before each trademark application is lodged,
a professional Similarity Search should be carried
out. For the analysis of investigation reports
and the carrying through of the application, the
service of a lawyer, specialized in trademark
law, is to be recommended.
Top
of page

Why must an
Trademark Search be carried out in the lead up
to an application?
It could be that pre-existing, older trademark
rights stand in the way of a successful application.
These pre-existing rights can be from all the
trademarks legally effective in Germany, i.e.
German trademarks, European Community Trademarks
and International Registration according to the
Madrid Agreements.
A trademark application contains the risk of
an objection to registration from a third party,
or an erasure petition or a dissuasion, incurring
liability for costs. It is advisable to recognize,
assess and avoid these risks by a suitable search
in the lead up to a trademark application.
In this connection, an investigation into company
names entered in business registers is also to
be recommended, to check for any existing older
names and trademarks of a third party which have
priority.
Top
of page

How do I avoid
expensive conflicts over trademarks on the Internet?
Tip 1: Before a domain registration,
be absolutely sure to carry out a Trademark Search,
especially if it concerns fantasy names or a composite
name derived from fantasy names. But even general
terms like *Scout* or *Allianz* can contain the
possibility of trademark conflict. Likewise, company
names and names of personalities should be avoided.
Tip 2: With trademarks, similarities
are often enough to cause a conflict and lead
to a dissuasion. Therefore a trademark search
should be carried out in the form of a Similarity
search. Important: Because, under trademark law,
similarities very often lead to dissuasion being
issued, a reliable pronouncement on the potential
of conflict over a name can only be given following
a legal assessment of the Similarity Search.
Tip 3: You should also check
with international databases. For example apart
from German trademarks themselves, European Community
Trademarks and internationally-registered trademarks
also have protection in Germany.
Tip 4: When you want to obtain
protection for your domain or for your name which
will go out via the Internet, you should also
apply for a trademark with, for example, with
the Deutschen Patent- und Markenamt. Here you
can also protect your logo or a graphic.
Tip 5: If you want to use your
domain for a longer period, or even if you have
additionally registered another trademark, you
should regularly check whether your rights are
being infringed in order, where appropriate, to
be able to react early with a dissuasion.
Top
of page

How many registered
trademarks are there?
At the moment, the number of registered German
trademarks lodged with the Deutschen Patent- und
Markenamt (DPMA) stands at 743,423 trademarks.
Altogether at the moment, there are 1,250,497
active trademarks with protection in Germany (including
EU and IR trademarks). In 2002, there were 56,492
trademark applications with DPMA.
Top
of page

Why are regionally-active
companies a risk group?
Regionally-active companies are a specially high-risk
group with respect to disputes over trademarks.
Often names are used, which have already been
protected for a long time by other parties with
a Patent- and Trademark-Office, without this being
detected by the original trademark owners based
in another region. However, through their Internet
presence and a Domain Registration, these regional
companies become suddenly visible and receive
a dissuasion from the trademark owner, in most
cases entailing high costs. Because a correct,
professional choice of name is often overlooked
in small businesses, no Trademark Investigation
is carried out before the registration of a domain;
and because immaterial assets, which in stark
contrast to material assets, are managed and looked
after in a neglected way, the company loses out
financially in a big way, while simultaneously
great risks of conflict are being taken.
Top
of page

Where and how
do I find a new name?
The name, the trademark belongs to the beginnings
of companies and entrepreneurial projects. The
Corporate Branding is a decisive factor for success
and represents a valuable immaterial asset for
the undertaking. The professional development
of a trademark which is appropriate for the strategic
vision of the company or the product is, in these
times when immaterial resources are becoming more
and more scarce, a great challenge. Often, however,
the correct, professional choice of name is overlooked,
especially in small businesses. Immaterial assets
are mostly badly administered and looked after,
in stark contrast to the material assets. The
company loses enormous assets and possibilities
for successful marketing, while simultaneously
great risks of conflict are being taken. Professional
name making or name finding is the foundation
for hindering conflict situations and for building
up a valuable body of immaterial assets.
Specialist agencies take on or coordinate, in
a multi-stage customized process, all essential
phases of the brand development, which starts
from name making and ends with a completed brand
development with global development and determining
of the corporate design.
Top
of page

How expensive
can a trademark law conflict become?
The costs of a trademark rights dissuasion depend
on the legal costs stemming from the dissuasion.
In this connection the legal costs depend on the
infringed trademark, not as frequently accepted,
on the nature of the trademark infringement, for
example - on an internet domain. So the legal
costs with respect to an unused trademark is seldom
fixed at under 25,000 Euro. If the trademark is
being used, then at least 50,000 Euro is the rule.
Well-known trademarks and trademarks connected
with a large turnover will definitely justify
higher costs. Therefore, the cost of the dissuasion
already amounts to over 500 Euro on the basis
of legal costs of 25,000 Euro.
If a provisional proceeding of injunction, main
court procedure, appeal procedure before higher
Court requires the service of a trademark lawyer,
the accumulated costs climb quickly into five
figures. Costs of more than 30,000 Euro in such
cases are not unusual.
Top
of page

How should
I react to an caution?
Stated fundamentally - on receiving an dissuasion,
three different strategies can be identified:
1. Acceptance of the dissuasion and Execution
of a Declaration of Misprision.
2. Refusal to sign the declaration relating to
obligation and misprision.
3. Anti-dissuasion and negative affirmative action
for a right.
The choice of the correct reaction to an dissuasion
in individual cases is determined primarily by
its legality. Note: Not every dissuasion is justified!
For the assessment of the legal situation and
the working-out of a suitable strategy, the employment
of a specialized lawyer is recommended.
Top
of page

How can I increase
the value of my name?
After the trademark registration, a regular monitoring
of your trademark is required, in order to ascertain
the existence of trademarks with less senior priority
and to prevent trademark infringements. If this
monitoring of the trademark is not done, then
dilution and obsolescence threatens the trademark
through unauthorized use by a third party.
Likewise, it is also important to actually use
the trademark for the claimed goods and services
- at the very latest by the end of the five-year
respite allowed for this. If this use is not made,
an erasure petition from a third party could stand
a good chance.
Top
of page

Which utilization
possibilities exist for a trademark?
If you do not want to make use of your own trademark,
it can be offered for a licensing designed specifically
to make actual use of the trademark. The trademark
owner can give either exclusive or non-exclusive
rights of use to the trademark, rights which can
also be limited geographically or with respect
to goods and services. In the case of exclusivity
he can also choose whether to give up his own
usage rights. In accordance with the contractual
arrangement, the trademark licence grants to the
license holder suitable usage rights and a right
to ban against a third party. The license giver
should ensure, at all costs, that the given license
is also being used in the planned area, as well
as that the quality of the products sold by the
license holder is appropriate to the standard
of the trademark.
Alternatively, the sale of the trademark is possible.
Trademark law and the regulations of the European
Community regarding Community Trademarks allow
the free sale of trademarks, even the application
connected with it, as well as partial sales of
trademark rights. As the ban on blank trademark
assignments (abolition of regulations of WZG by
trademark law) has been cancelled, it is no longer
required that the trademark is used inside a business,
so that an exclusive sale of trademark rights
or entitlement is possible.
Top
of page

These informations focusing the situation in
Germany and Europe are provided by Karsten Prehm,
Germany, specialist lawyer for trademark issues
[ www.markenservice.com] and
associated member of the german editorial team
of Markenbusiness. We welcome international editorial
contributions to these and other questions concerning
legal issues on intellectual property.

|