A similarity search goes much further than a pure identity search. In a similarity search, we commission an external IP search service to create a very extensive trade mark search supported by a computer algorithm. We usually receive several hundred search hits, which we subsequently analyse manually.

If you order a similarity search for a German national trade mark from us separately, you pay a flat rate of €500 net. This already includes the costs incurred by us for the external commissioning of the IP search service.

A similarity search gives you much greater certainty than is possible with an identity search. With an identity search, you always run the risk of overlooking similar trade marks that are likely to be confused with your sign. This increases the risk of costly trade mark conflicts.

Registration of the trade mark gives you the sole monopoly right to use the sign in question for the goods and/or services named in the application. You can therefore demand that anyone else refrain from using your trade mark and, if necessary, claim damages from imitators and free riders.

So if you have developed a new term or designed a new logo, you should first register a trade mark and only then go public with it. Otherwise, there is a risk that a competitor will protect the term or logo and you will lose out.

An absolute worst-case scenario is if you build your company on a trademark term, forget to register a trademark and then find out several years later that there is a competitor who has registered "your" term. In such a case, your own company may have to be renamed, which can threaten its existence.

So if you want to use a new trade mark or a new company name, you must first make sure that the new name does not infringe the existing name or trade mark rights of third parties. This point is not examined ex officio during the registration procedure.

Any sign or term can be registered as a trademark. Whether trade mark protection can be obtained depends on whether the term/sign applied for has sufficient distinctiveness, only then will the German Patent and Trademark Office classify the application as eligible for protection.

A trade mark can be protected in various ways. For example, you can protect the company name or product name as a word mark or protect a logo in the form of a word/figurative mark or figurative mark. Word marks must consist of one or more words (letters).

No, the German Patent and Trademark Office only examines the so-called "absolute grounds for refusal", in particular whether the trademark has sufficient distinctive character for the goods and services named in the application. This is not the case if the trademark is descriptive. Owners of earlier property rights are themselves responsible for monitoring and defending their registered trademark rights. The German Patent and Trade Mark Office does not concern itself with which earlier trademark rights already exist during the application and registration process.

It can therefore happen that your trademark application goes through without any problems, i.e. is registered without objection/rejection, but then a trademark owner comes forward in opposition or cancellation proceedings and requests the cancellation of the registered trademark.

For this reason, we recommend that you do not just blindly register any trademarks, but always carry out an identity search or, even better, a similarity search in advance. This is the only way to ensure that your trademark application does not infringe existing trademark rights.

German national trademarks can be registered at the German Patent and Trade Mark Office (DPMA).

The European Intellectual Property Office (EUIPO) is responsible for European Union trademarks (formerly: "Community trademarks").

International trademarks can be registered via the World Intellectual Property Organisation (WIPO).

If you file a trademark application via Markenportal.net, you do not have to worry about the right way. We will develop the filing strategy for you and give you our recommendation.

Based on Section 3 of the German Trademark Act (MarkenG), all signs, in particular words including personal names, images, letters, numbers, sounds, three-dimensional designs including the shape of a product or its packaging and other forms of presentation including colours and colour combinations, which are capable of distinguishing the goods or services of one company from those of other companies can be protected.

This list of sign shapes in Section 1 MarkenG is not exhaustive. What all signs have in common, however, is that they must be capable of being represented graphically (Section 8 (1) MarkenG). As a second requirement, Section 3 (1) MarkenG stipulates that these signs must have distinctive character.

Graphic representation

Graphic representability does not mean that only signs that can be directly represented graphically are eligible for trade mark protection. It is sufficient if they can be represented indirectly. The sound mark, for example, can only be perceived as a sequence of tones, i.e. not visually. However, this tone sequence can be represented by means of notes and therefore fulfils this requirement. Odour marks can be cited as a counter-example. Theoretically, you can describe the odour or even describe the composition by specifying a chemical formula. However, this description does not reflect the odour itself, but only the odour-carrying substance. In addition, only a very small proportion of the public is able to understand a chemical formula. A description of the odour in words cannot describe the odour itself with sufficient certainty. Due to the very narrow interpretation of this criterion by the European Court of Justice (ECJ), odour marks are therefore not registrable.

Distinctiveness

According to the general definition, distinctiveness is the inherent capacity of a trade mark to identify the goods/services covered by the trade mark application as originating from a particular undertaking and thus to distinguish those goods/services from other undertakings and to guarantee their identity of origin.

If this definition does not mean anything to you, it is because, although it gives a rough indication of what is meant by distinctiveness, it offers hardly any concrete indications for a legal examination of distinctiveness in individual cases.

It is therefore necessary to consult a knowledgeable lawyer who is familiar with the supreme court judgements of the ECJ and the Federal Court of Justice (BGH). However, these supreme court judgements only offer an approximate guide for the individual case, as it is inherent in the problem of distinctiveness that two identical cases can never be decided.

Word mark

It is a form of trade mark consisting only of words, numbers, letters or other characters. It must be reproduced in standard characters (Section 7 MarkenV) and can only be registered in the standard print font (Arial).

However, the protection of a registered word mark generally includes all customary forms of reproduction, in particular upper and lower case letters or uniform upper or lower case letters and the alternation of customary fonts.

Graphic adaptations are not permitted; this is reserved for word/figurative marks.

Examples: Microsoft, VW

Can I have a logo protected?

To protect a logo, you must register a figurative or word/figurative mark.

Figurative marks are images, figurative elements or illustrations (without word elements). This means that all visual images that are suitable for distinguishing the goods or services of a company from those of other companies are possible and can be registered and protected as a figurative mark at the DPMA.

A word/figurative mark is a permanent combination of textual and graphic elements in one representation. It must not be possible to represent it using a standard typewriter, otherwise it will be considered a word mark (see "Word mark").

Protecting a logo has the advantage that certain words are not eligible for protection in the case of a pure word mark, as they fulfil a descriptive function and there is therefore a need to keep them free. This problem can often be avoided by creating a word/figurative mark by editing it graphically, but at the same time the word element remains recognisable.

Protecting a company name - How can I protect a company name?

A company name can be protected in a variety of ways, both as a word mark and as a figurative mark or a combination of both as a word/figurative mark.

In principle, there are no further restrictions for a company name than for a product name, for example (see "Trade mark application", "Word mark", "Protect logo"). In particular, it must be ensured that no identical or similar trade mark is registered and that the trade mark does not fulfil a descriptive function.

Whether the company name has existed longer than an identical trade mark is irrelevant, as only the date of registration is relevant

Protecting a name - How can I protect a name?

A name can be protected in a variety of ways, both as a word mark and as a figurative mark or a combination of both as a word/figurative mark.

In principle, there are no further restrictions for a name than for a product name, for example (see "Trade mark application", "Word mark", "Protect logo"). In particular, it must be ensured that no identical or similar trade mark is registered and that the name does not fulfil a descriptive function.

Whether the name has existed longer than an identical trade mark is irrelevant, as only the date of registration is relevant.

Can I have an advertising slogan protected?

Advertising slogans can be protected as word marks, so-called multi-word marks, Section 3 (1) MarkenG.

They must have distinctive character, i.e. they must distinguish the goods and services of one company from those of another company. This is not the case if the slogan only describes or advertises the product. Short, concise slogans that do not refer to a specific product but are formulated in abstract terms are most likely to be registrable.

Example: "I love it" (catering), "The joy of driving" (car manufacturer)

Although there are no legal concerns, we advise against using a trademark before it has been registered.

The " trademark" as a protected legal right only comes into being when it is entered in a register (DPMA, EUIPO, WIPO), retroactively with the priority of the application date. A sign only becomes a "registered trademark" once it has been registered.

However, it is possible to use an unregistered trademark in the course of trade at any time. However, it does not necessarily enjoy protection. Anyone could therefore register it as a trade mark and secure the exclusive right to use the mark in the course of trade. It does not matter who used the trademark first, but who applied for it first.

We therefore advise you to register all signs that are important for your company as quickly as possible and to create facts.
Although a sign can also achieve such a level of recognition through use in the course of trade that trademark protection within the meaning of Section 4 MarkenG arises, the hurdles for this are extremely high and, in practice, numerous difficulties of proof arise and one is dependent on the weal and woe of the competent court.
Due to the economic relevance of trademarks and because of the legal certainty that a trademark registration offers you, you should not rely on a court granting you an unregistered user trademark or a company trademark right within the meaning of Section 5 MarkenG.

Imagine a competitor were to have your company name or logo, or even a similar name or logo, protected as a trademark!

He could then try to prohibit you from offering certain goods or services under the logo or company name you are using.

In the worst case, you would have to rename your company.

If you have a properly registered trademark, this can generally no longer happen to you.

We strongly advise you to carry out a thorough and detailed trademark search before applying for a trademark.

In principle, anyone can carry out such a search themselves. However, in order to be able to carry it out effectively and with a claim to completeness, relevant experience is required.

A search program (DPMAregister) is available on the website of the German Trade Mark and Patent Office (DPMA), which must be used to clarify whether an identical or similar trade mark has already been registered before registration. In addition, a DPMA trademark search remains relevant even after registration in order to be able to take action against subsequent registration of an identical or similar trademark and thus defend your own trademark. Use of the database is free of charge.

The search effort differs depending on whether it is a word mark, word/figurative mark or figurative mark.

While it may be sufficient to enter the name and search for variations in the database to search for matching features for a word mark, searching for a figurative mark is much more complicated.

Each geometric shape has an associated code (e.g. for circles, squares, triangles, etc.). By combining different codes, figurative marks containing these geometric shapes can be described and found. If the marks are also colored, the color code is also required.

In addition, names and logos used in the course of trade may infringe other trademark rights, even if they have not been registered in trademark registers. You should therefore also search for identical or similar names in Internet search engines, telephone directories, commercial registers, title protection advertisements and/or industry or other product directories.

A complete trademark search is therefore not the same as a trademark search on the DPMA website.

A professional trademark search is characterized by the fact that all available means for trademark searches are optimally utilized and therefore the result is complete. A legal layman often does not know which search terms to start with for a word mark. It is also not always easy to decide whether two trademarks are similar. For example, the Higher Regional Court of Hamburg (judgment of 26.11.2009 - 3 U 201/08) assumed a similarity between "Red Bull" and "Bullenmeister". The same court also ruled that the signs "solarscout24" and "scout24" could be confused with each other (OLG Hamburg, judgment of February 24, 2009, 312 O 668/08). These two examples show that the likelihood of confusion is often unclear and can only be clarified by a court decision.

While a specialized lawyer must be expected to know these judgments and come to a well-founded conclusion in individual cases on the basis of them, this is hardly possible for a layperson.

Overlaps with other areas of law are possible, particularly in the area of copyrights and design rights (design rights). As there is often a creative process behind the creation of a trademark, trademarks can enjoy copyright protection. However, this arises independently of an application or registration but automatically as soon as the trademark is "finished".

The provisions of the German Commercial Code on company law are completely different. A company can be registered as a trademark on the basis of the MarkenG. However, this does not change the commercial law dimension of this term.

The relationship with unfair competition law (UWG) is different. According to the conventional view, trademark law is only a part of general competition law. The UWG protects competition from unfair business practices. The unauthorized use of a trademark can then constitute an unlawful act under both the Trademark Act and the Unfair Competition Act. However, protection under the UWG goes further than that of trademark law: an act can be relevant under competition law even though it no longer falls within the scope of trademark protection, keyword comparative advertising, if a brand name is merely mentioned.

The value of a company consists not only of its turnover, company real estate or patents, but also of the non-material value of its brand or brands. A company is able to obtain more money for its own product simply through the branding and the positive associations associated with the trademark among consumers. A registered trademark therefore has its own intangible value, which can also be capitalized in the balance sheet.