A trademark is a sign that serves to distinguish the goods or services of one company from those of other companies. It can, inter alia, consist of words, letters, numbers, images, colours, shapes or a combination of these elements. Trademark protection is obtained, among other things, by registering with the competent authority, such as the German Patent and Trademark Office (DPMA) or the European Union Intellectual Property Office (EUIPO).

There are several types of trademarks:

• Word marks

Word marks can consist of single or multiple letters, one or more words, numbers and standard typographical characters (e.g. ? and !). They protect these in all forms of representation, e.g. in upper and lower case, in all fonts and font sizes.

In the European Union, signs in the alphabet of any member state language can be protected as word marks, e.g. even Cyrillic or Greek. German word marks can only be registered in the Latin alphabet. Signs consisting of words or letters from another alphabet (e.g. Chinese characters) can only be protected as figurative marks.

• Figurative marks and word/figurative marks

Figurative marks can consist of individual or multiple graphic elements or a combination of words and graphic elements (so-called word/figurative marks). In addition, word elements that are, for example, coloured or designed in a special font, span multiple lines or consist of letters from non-EU alphabets fall under this type of mark.

• Other types of trademarks

In addition, many other signs can be protected as trademarks, e.g. sounds as sound marks or individual colours or colour combinations as colour marks. The prerequisite is always that the sign can be reproduced in a suitable form, which is why, for example, smell or taste marks can currently not be registered in the EU. In practice, however, these special forms play only a very minor role.

By applying for and registering a trademark, you can protect your signs quickly, effectively and cost-efficiently, thereby securing the exclusive right to use the sign in connection with the products or services you offer. A registered trademark protects against imitation and misuse, strengthens the identity and trust in your company and gives you claims against third parties who use your trademark without your permission.

In some cases, signs that have not been entered in a trademark register also enjoy trademark protection. These are, firstly, so-called "use marks", which arise through their use in the course of business and are protected as trademarks if they are sufficiently well known to the relevant public (so-called "market recognition"). Secondly, trademarks that are not used domestically but are nevertheless well known there can enjoy protection if they have so-called notorious recognition. However, market recognition regularly requires that at least 20% of the relevant public recognise the sign as an indication of origin. Notoriousness is often only affirmed if the degree of recognition is at least 60%. In the event of a dispute, both must also be proven by means of costly opinion polls, so that trademark registration is generally preferable.

Trademark protection can be obtained nationally, regionally and internationally:

• Germany: By registration with the German Patent and Trade Mark Office (DPMA).
• European Union: By registering with the European Union Intellectual Property Office (EUIPO), which grants trademark protection in all EU Member States.
• Internationally: Through the Madrid System via the World Intellectual Property Organisation (WIPO), which grants trademark protection in over 100 countries. Alternatively, national trademarks can be registered in almost all countries around the world.

The following points in particular must be taken into account when registering a trademark:

• Goods and services

A trademark is only protected for those goods and services that are specified in the application. On the one hand, the corresponding list of goods and services should take into account possible business developments and therefore not be formulated too narrowly, as it cannot be expanded retrospectively. On the other hand, an overly broad list carries a higher risk that the trademark will infringe on the prior rights of third parties. In addition, the trademark must be used for all registered goods and services after the expiry of the so-called grace period, otherwise it may be cancelled upon request by third parties.

• Applicants

You should consider whether to register your trademark in the name of your company or a natural person (e.g. the founder and managing director of the company). Depending on the legal form, registering the trademark in the name of the company may be advantageous due to the associated limitation of liability. Registering the trademark in the name of a natural person may provide better protection against the insolvency of the company.

• No absolute grounds for refusal

During the registration process, the competent trademark office checks whether there are any absolute grounds for refusal that would prevent your trademark application from being approved. In particular, your trademark must be distinctive, i.e. it must be capable of distinguishing your goods or services from those of other companies. In addition, your trademark must not consist exclusively of signs or indications that, for example, describe the goods and services applied for or have become customary for their designation. Trademarks must also not contain any misleading information or violate public policy.

The examination of your trademark application by the DPMA and the EUIPO usually takes four to six months. During this registration process, the offices check in particular whether the application meets all formal requirements and whether there are any absolute grounds for refusal. If the examination is positive, your trademark will be entered in the register and published at the same time. Unlike the DPMA, however, an application to the EUIPO is only registered after the three-month opposition period has expired.

Neither the DPMA nor the EUIPO check whether your trademark infringes any earlier rights during the registration process. This is only checked by the respective office upon request by a third party in the context of opposition or cancellation proceedings. It is therefore advisable to have a professional search carried out for possible conflicts with earlier trademark rights before filing an application.

Within three months of the publication (EU) or registration (Germany) of a trademark, a third party may file an opposition if they believe that this trademark infringes their prior rights (e.g. a registered trademark). The competent trade mark office then first checks whether the opposition is formally admissible and then gives the owner of the trade mark application the opportunity to comment. If the office concludes that the trade mark application does indeed infringe rights, it will be cancelled in whole or in part. Both parties can appeal against the decision.

Yes, a registered trademark can be cancelled even after the opposition period has expired. First, this can happen as a result of invalidity proceedings because the trademark was registered despite absolute grounds for refusal or infringes earlier rights. Second, the trademark can be declared invalid – by the Trademark Office or a court – because it has not been sufficiently used. Finally, the trademark owner can also simply renounce the trademark by making a declaration to the Trademark Office or not renew its protection, which also results in the trademark being cancelled.

Yes, after a so-called grace period for use has expired, trademarks must be used "genuinely" by the owner for all registered goods and services within the territory of protection. During the grace period for use, the owner can prepare for the use of the trademark and make the necessary investments. For German trademarks, this grace period begins as soon as no further opposition is possible; for EU trademarks, it begins upon registration. In both cases, it lasts five years.

Genuine use generally requires that the trademark be used – at most – in a slightly modified form and to a certain extent for the registered goods and services. Otherwise, the trademark may be declared invalid upon request by third parties. In addition, no claims against third parties can be asserted on the basis of a trademark if the third party rightly objects to the lack of use of the trademark.

German trademarks and EU trademarks are generally protected for an unlimited period of time, as long as they are not declared invalid or cancelled for other reasons. However, protection must be renewed at a cost every ten years after registration.

If third parties use your trademark without permission or, for example, cause a likelihood of confusion with your trademark by using similar signs for identical or similar goods and services, you are entitled to various claims. The most important claims are aimed at preventing further infringements, compensation for the damage suffered as a result, and information about the extent of the infringements.

In many cases, trademark infringements can be permanently stopped by issuing a warning letter with a request to submit a cease-and-desist declaration with penalty clause. To do this, you should hire an attorney specialising in trademark law, whose costs are usually reimbursed by the opposing party. It is always necessary to engage an attorney if you wish to enforce your claims in court.

In addition to registered trademarks, other signs may enjoy trademark protection as well. 

These include, firstly, business names. These are company names that are used in the course of business as the name, company name or special designation of a business or company. Furthermore, this includes work titles, i.e. names or special designations of printed works, films, sound recordings, stage works or other comparable works.

Secondly, so-called geographical indications of origin are also protected, i.e. names of places, regions, areas or countries, as well as other information or signs used in the course of business to identify the geographical origin of goods or services.

In addition, signs may also be protected under civil name law and tort law (e.g. domains) and under regulations such as unfair competition and copyright law.