Filing a German or European trademark application

Trademarks protect your company and product names, logos and slogans from third-party use.

A list of goods and services must be filed with the trademark application. This should be prepared in detail, as no terms can be added after filing. In addition to word and figurative marks, trademarks can also be applied for as shape, position, pattern, color, sound, movement, multimedia, hologram or e.g. olfactory marks.

For a successful trademark application the following requirements must be met:

• the trademark must not be descriptive for the goods and services applied for (so-called absolute grounds for refusal) Example: A trademark "apple" for fruit & vegetables would not be possible.
• the trademark should not be confusable with already existing trademarks (so-called relative grounds for refusal)
• the trademark must be used commercially (which must also be verifiable after the so-called grace period for use)

With a registered trademark you can take lifelong action against plagiarism of your products.

Protect your company name and logo as well as your products, especially if a patent application is not possible or not desired. With your own trademark you can also file oppositions against new trademark applications of competitors and, in case of doubt, enforce claims for injunctive relief, damages and information.

Trademarks offer many advantages:

• Unlimited renewal possibilities for a sustainable brand development
• Basis for claims for royalties, injunction and damages
• Significantly strengthened negotiating position vis-à-vis business partners, investors and competition

Trademarks can be filed nationally for Germany, as a Union trademark for the entire EU and internationally via the Madrid system..

Depending on the desired area of protection, trademarks can be registered nationally or internationally:

• at the German Patent and Trade Mark Office (DPMA) for national protection
• at the European Union Intellectual Property Office (EUIPO) for EU-wide protection

Subsequently, a trade mark applied for can also be extended internationally through the Madrid System. The fate of the application then depends on the basic trademark for five years.

In some cases, an additional national trademark may even make sense, since trademarks in Germany cannot be cancelled after ten years due to absolute grounds for refusal.

The trademark application must not collide with existing rights..

The Trademark Office does not check whether a new trademark application collides with similar trademarks (so-called relative grounds for refusal). Therefore, a search for earlier rights should definitely be carried out before filing.  

Furthermore, when preparing the list of goods and services, care should be taken to provide for possible restrictions in the scope of protection. This allows for corresponding possibilities of amendment, for example in opposition proceedings, and prevents the imminent loss of the entire trademark protection.

The registration of your trademark takes only from a few weeks to a few months.

If the list of goods and services has been carefully drawn up, immediate registration of the trademark can usually be expected. This will be delayed accordingly if the examiner finds absolute grounds for refusal and an argumentation or adjustment becomes necessary.

With the registration or publication the opposition period of three months starts, during which the owners of earlier marks can indicate a potential conflict with their existing rights. If an opposition is received, it is often helpful to agree on a coexistence agreement and to restrict the list of goods and services.

The sound preparation of a trademark application costs about 400-750 EUR.

Usually the costs for a trademark application are composed as follows:

• Preparation and filing of the trademark application: approx. 400-750,- EUR plus VAT (depending on complexity)
• Identity and similarity research: approx. 100 up to 5.000,- EUR plus VAT (depending on the desired risk coverage)
• Official fees: approx. EUR 300-1,200 (depending on the office, no VAT obligation)

Realistically, an average of about EUR 850 for a German application and about EUR 1,850 for an EU-wide application can be expected. Good search results can usually be achieved with approx. 1.000,- EUR and reduce the risk of collision considerably.