Trademarks are among the essential intellectual property rights of companies and artists. Building a strong brand is an essential marketing strategy, and giving the brand the best possible protection is vital. In the case of newly developed trademarks, this is done by registering the trademark at the trademark offices. Many questions arise here, which I would like to address briefly.
1. What trademark form?
Trademarks can be applied for in different forms, e.g., as pure word marks (words, sentences, letters, numbers, word combinations), figurative marks (e.g., logos and graphics without word elements), word/figurative marks (a combination of word and figurative signs), color marks, sound marks, and other forms of trademarks.
In most cases, the question arises as to whether a trademark should be applied for as a pure word mark, figurative mark, or also in combination (word/figurative mark). In the case of figurative marks, the question also arises as to whether an application should be made in black and white or in color.
The following applies here: If you have developed a strong word, the pure word mark is preferable. Then you can also assert yourself against other word/figurative marks with the pure word mark if your word is used as an essential component there. However, if you have developed a trademark with a weak word that has little distinctiveness or which must remain free, it may only be eligible for protection in conjunction with a distinctive image addition.
With regard to whether a figurative mark should be applied for in color or black and white, it depends on the circumstances. In most cases, the application in black and white is advisable, because then one can also defend oneself against identical or similarly colored marks of other companies, as there is always the risk of confusion. However, this is different if the special color design is essential for your brand. If you then only have a black-and-white trademark application, it may happen that a court decides that you are not using the registered black-and-white trademark in a “rights-preserving manner” despite the actual use of your colored trademark. If a trademark is not used in a “rights-preserving manner” for a period of five years, third parties can file an application for cancellation or, in the event of a lawsuit, raise an objection of non-use, with the result that your action can be dismissed due to lack of use.
2. Search
Once you have developed your meaningful trademark, I advise you to do careful research. The trademark offices also offer online search masks for their databases. There you can check to what extent identical or similar trademarks already exist. You can also see whether trademark applications have already resulted in “oppositions” from other trademark owners or whether trademarks have been deleted.
In addition to the databases of the trademark offices, I also advise you to search in the usual search engines (Google, etc.) since your new brand may conflict with more than just other trademark names. The owners of other name and trademark rights (e.g., company names, domain names, stage names, work titles) may also be able to take action against your trademark under certain circumstances. Trademark disputes can be very expensive due to the high amounts in dispute.
3. Germany or EU or worldwide?
Trademarks are national rights. If you apply for a trademark in Germany, you do not acquire trademark protection outside of Germany. So you have to decide which countries you want to claim trademark protection for and file trademark applications for each country. Within Europe, registering an EU trademark at the European Trademark Office (EUIPO) is the most cost-effective way, as you automatically have protection in all EU member states. International trademark applications outside the EU are more difficult. In this case, it often makes sense to extend the trademark protection of a national trademark or EU trademark via WIPO.
Ultimately, it depends on the market for your goods and services as well as the available budget. A national German trademark can be applied for as little as EUR 290.00 (online) or EUR 300.00 (paper) for three classes, while an EU trademark for three classes would cost EUR 1,200.00. The extension of trademark protection via WIPO to other countries (e.g., U.S., Japan, etc.) would incur further costs in the four digits, especially since national lawyers must also be involved depending on the country.
4. Which classes?
When filing a trademark application, you need to decide on the individual goods and services for which you want to claim protection. According to the trademark classification (Nice classification), goods and services are divided into 45 classes. For brands in the entertainment sector, service class 41 (entertainment, cultural activities) is usually relevant. Depending on the area of activity, class 9 (sound and video recordings, downloadable music) or class 25 (clothing, etc.) are usually chosen.
When registering goods and services, it is necessary to choose reasonable and realistic terms within the classes. The following applies here: If you overshoot the mark here and register the trademark for all conceivable goods and services that may not be relevant to the business at all, you increase the risk of conflicts with other existing trademarks. However, if you are too careful when registering and forget important terms, you will not be able to add them later. Ultimately, this is again a question of the planned use of the trademark and the budget, as a larger number of classes is also accompanied by higher fees.
5. Do it yourself or through a lawyer?
You do not need to call in a lawyer to apply for a German trademark or an EU trademark. This may be different when applying to foreign trademark offices outside the EU. However, it makes a lot of sense to have the trademark application carried out by a lawyer. This is because a lawyer advises you on the questions of protectability or inability to protect and is already in a position to evaluate possible trademark conflicts. In my experience, most lawyers charge either hourly rates or flat fees. As long as it is not a matter of complicated expert opinions, however, the lawyer’s fees are kept within a manageable range. In the end, this is money well spent. This is because you can expect cease-and-desist letters from other rights holders especially if you have become successful in your market and have achieved a corresponding level of brand awareness. It may well be that you will be sued by an owner of an earlier right only after five or ten years of successful business activities and will then be sued for information about all trademark uses in the past, payment of damages, or restitution of profits as well as reimbursement of all costs.
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