Trademark Registration Process

1. It Begins with an Idea

A trademark registration always begins with the idea, the creation of a trademark as a word or graphic or combination of word and graphic.

2. Research

Before registering or even using a trademark, one should always conduct research to determine whether this or a similar trademark has already been registered by a competitor for similar or identical products.

Such research should not be limited to checking only for identical prior registrations. Injunction claims also exist when a younger trademark is similar to an older one.

So the question arises: When are two trademarks considered similar?

Whether such a similar prior registration exists is evaluated on a case-by-case basis according to various criteria. The more similar the trademarks are, the further apart the products registered under the trademark must be – and vice versa.

This comparison of trademarks and goods or services can be very difficult in individual cases. Experience and knowledge of the essential decision-making considerations of trademark offices and courts are necessary. An applicant is often not in a position to carry out this examination properly.

We support our clients by analyzing the relevant trademark registers, as well as commercial registers and further research on the internet and regarding domain pre-registrations.

3. The Application

If the research has not revealed any conflicting prior registrations, the actual application can begin.

Here, the area of goods and/or services for which protection is sought must be defined.

On the other hand, consideration must be given to which regions the protection is needed for. The answer to this question determines which office or offices the registration will be applied for.

If a trademark is to be used in Germany alone, it is generally advisable to apply for protection at the German Patent and Trademark Office (DPMA).

If it is intended to use the trademark immediately or within a period of 5 years in other EU countries, one can alternatively or cumulatively apply for protection as a so-called Community trademark (often called EU trademark) at the European Union Intellectual Property Office in Alicante (European Trademark Office – EUIPO).

The costs of such an application depend on the number of classes of goods or services for which trademark protection is sought.

A careful selection of these goods and services is important. After the application, this list can only be restricted, not expanded, and can only be changed to a very limited extent. If areas have been forgotten, a new application may have to be made in case of doubt. High additional costs are the result.

Good advice helps to avoid mistakes.

4. The Application Procedure

The application procedure is divided into the official examination procedure, in which the registrability of the trademark is examined according to formal criteria, and the opposition period, in which owners of older trademarks or business signs can file an opposition against the trademark.

To avoid errors, legal assistance is at least advisable for this, even if legally speaking, a trademark could often be registered without legal assistance.

a) Examination Procedure

Each application is examined by an examiner at the respective office for formal criteria, including the naming of the applicant, payment of official fees, and absolute grounds for refusal that prevent registration. The list of goods and services for which trademark protection is sought may also be clarified.

The processing time varies greatly depending on the office. At EUIPO, with a “smooth” process, this procedure can be expected to be completed within 1 to 2 months.

At the DPMA, processing often takes between 6 and 12 months. However, processing can be shortened to usually a few days to about 3 months by paying a so-called acceleration fee. A reduction is also possible by choosing from a list of terms already examined and recognized by the DPMA. Then one can take advantage of the time benefits of the so-called fast-track procedure; a partially automated examination significantly accelerates the process.

b) Opposition Period

After completion of the examination procedure, the trademark is announced (EUIPO) or registered and published (DPMA). With this day, the 3-month opposition period begins, during which holders of earlier rights, especially trademarks or business designations, can file an opposition against the trademark application. This period cannot be shortened.

At the latest when an opposition has been filed, legal assistance is regularly factually mandatory (EUIPO) or at least strongly recommended (DPMA).

In the opposition procedure, the legitimacy of the opposition is then examined. The duration of the procedure often takes 1-2 years.

c) Registration

If the examination procedure and the opposition period have been successfully completed, and any oppositions have been overcome, the trademark is registered as legally binding. The trademark is then valid for 10 years and can be renewed any number of times.

It should be noted that the trademark must be put into use within 5 years at the latest, otherwise it will be canceled ex officio (rarely) or upon request by trademark owners. This also applies in the case where a trademark that was originally used has not been seriously used for more than 5 years.

Legal assistance is urgently required in such procedures.

5. Extension of Protection to Other Countries

After a trademark application, an extension of the trademark to other countries can be requested.

This can be done through separate applications in the desired countries. It is more cost-effective to apply for a so-called International Registration centrally at WIPO in Geneva. This is always possible when the country for which protection is sought has joined the Madrid Agreement or the Protocol to the Madrid Agreement.

We would be happy to inform you about the possibilities and support you in selecting countries and the appropriate application strategy.