Businesses are very likely to operate for decades as a particular company or offer goods and / or services under a specific name without protecting the company / name by law. The importance and necessity of such protection usually becomes apparent only when another entrepreneur or even competitor applies for such protection and may then exclude others (including the entrepreneur) from its use although they have been working with the affected good / service / name for decades.
In this context, the former user then not only loses a costly built reputation but is even targeted as a trademark infringer himself.
Yet, the registration of a trademark at the German Patent and Trademark Office (DPMA), on a European level at the Office for Harmonization in the Internal Market (OHIM) or at the World Intellectual Property Organization (WIPO) can be achieved relatively quickly and cheaply.
Within the framework of trademark law, the protection of goods and / or services, of company names as well as geographical indications of origin and work titles can be demanded from these authorities or organizations. In the area of national law and the competences of the DPMA, three types of trademarks are permissible:
- a word (word mark)
- the combination of a word with a logo (word and figurative mark);
- a logo (figurative mark).
Among other things, the decision of an entrepreneur for a certain brand is generally dependent on whether the name is an original creation of the entrepreneur (= invention) and / or whether the entrepreneur has already occurred in connection with the name under a certain logo in the past.
Finally, a trademark is registrable only if it is sufficiently distinguishing the goods and / or services from those of another company (sufficient distinctiveness) and as long as the designation or name is not kept for the general public to describe or designate certain goods and / or services (requirement of availability). It goes without saying that certain words may not be blocked for the supply of goods and / or services because their use is essential for a functioning trade and every entrepreneur.
The owner of a registered trademark has the exclusive right to act in business dealings under this name and to exclude third parties from the use of this name. Third parties may only appear in the business dealings with the trademark owner's consent under an identical or similar name in an identical or similar goods and / or services sector.
Rights of the trademark owner
If a third party uses the trademark of a trademark owner without his consent and offers goods and / or services that don't originate from the trademark owner and the third party therefore acts contrary to the foregoing explanations, a trademark infringement will occur.
The trademark owner may then claim from this third party (i) omission (ii) information about the utilization, (iii) compensation for the use and (iv) the reimbursement of attorneys' fees for the prosecution.
The claim for damages in favor of the trademark owner can be based on three different calculation methods. The trade mark owner may (i) firstly demand the payout of all the profit the third parties has generated with the sale of the goods or (ii) secondly demand the potential profit the owner would have generated with the sale of the goods; (ii) he may thirdly claim a notional license fee that another potential third party would have paid to the trademark owner for the use of the brand.
Due to the obligation of the third party who has used the brand owner's trademark unlawfully to reimburse the attorneys' costs to the trademark owner, a legitimate warning for trademark infringement can also be executed without costs for the trademark owner, if the cautioned third party is sufficiently solvent.
We are happy to advise you in advance of a trademark application about the signification of a registration as a national, a Europe-wide or a worldwide brand.
In this context, we will take care of the complete trademark application step by step while creating an index of goods and / or services and additionally research in advance for earlier trademarks with the same profile. After all, you do not want to be targeted by brand owners who have already submitted and registered your preferred trademark earlier. Because in that case, you can ultimately very quickly become a trademark infringer.
In addition, we can assist you in defending your trademark against new registrations, especially within the DPMA and the OHIM. There are already simple remedies available to counter new registrations.
In addition, we take care of pre-litigation warnings for trademark infringements and if necessary, enforce your trademark rights in the context of a preliminary injunction and if applicable, in the context of subsequent principal proceedings against third parties.
The preliminary injunction process gives you the opportunity to first reach a quick but only provisional settlement of the claim for cease, whereby the preliminary injunction is issued by the courts on a regular basis on the day on which it was requested by us. In the context of a principal proceeding you can finally enforce all four claims against the trademark infringer as a trademark owner.
Due to the high object value for trademark right (infringement) proceedings, we recommend the recourse to an experienced lawyer.
We have already filed a large number of trademark applications with the DPMA and the OHIM and have defended a large number of trademarks in opposition proceedings at the DPMA and subsequently in complaint procedures at the Federal Patent Court (BPatG).
Furthermore, we have obtained preliminary injunctions against trademark infringers in a large number of courts throughout Germany or enforced trademark rights against trademark infringers in principal proceedings. At the same time, we have fended off warnings for trademark infringement and represented alleged trademark infringers in preliminary injunction processes or principal proceedings.
If you intend to register a denomination or have received a warning for alleged trademark infringement or if you are a trademark owner and want to verify the utilization of a third party, simply contact us by phone or e-mail. We are very happy to help.