Checklist for trademarks applicants
1. Signs which are easy to remember and to defend (high distinctiveness)
Choose a distinctive word, logo, picture or other sign which can be easily defended. It is recommended to choose marks which do not describe your goods or services or any characteristics of them.
If you are trying to find a word mark for your product, you could for instance start by breaking up the product description into phonetic syllables and combining them with additional letters to invoke the desired pronunciation. Compositions coined from several words can turn out to be powerful marks (e.g. spiced ham -> SPAM). Moreover, it is worth considering choosing a dictionary word which is not in any way associated with your goods or services (e.g. apple for computers).
We generally recommend that you use descriptive terms rather than terms which are purely abstract. This also applies to English words with little distinctiveness.
Consider carefully the choice of the sign for your goods or services in order to save yourself the expenses of making an application which has little or no chance of being accepted for registration.
2. Searching trademark registers in order to avoid trademark infringement
Having a trademark search conducted by a trademark attorney is necessary or at least recommendable prior to making a trademark application. A simple trademark search in databases which are generally accessible allows to cut research costs.
If you prefer – and if you want to avoid any research costs – you can carry out your own search by means of search engines in the internet. You should also search for domain names (taking into account different spelling and most common endings).
Furthermore, German, European and foreign trademark offices offer free text search facilities on their websites. However, the searches that you can carry out using these facilities are limited to finding identical marks or marks starting with the letters you type in. They are not full trademark search facilities, so you cannot use them to see definitely if an earlier mark already exists which would be confused with yours.
3. Do not give up immediately if similar marks already exist (danger of confusion)
Your trademark attorney must check in detail whether there is a real danger of confusion, i.e. whether both your sign as well as your goods or services are similar to those which have been already registered from the point of view of law.
Your trademark application is unlikely to be accepted for registration if somebody else has already applied for an (almost) identical sign for (almost) identical goods or services.
However, even if there is a danger of confusion, coexistence of signs is also possible. You can agree with the owner of the earlier mark upon drawing a dividing line between both marks. It is also possible that the earlier mark has not been used fully and as a result some of the rights under trademark protection have been lost.
4. Removing all descriptive or misleading components
You should avoid using any descriptive components in the mark, generic terms, legal forms in case of company marks or other additions which are not distinctive. It would be theoretically possible to register a trademark “IBM Computer Consulting GmbH”. However, removing the components “computer” and “consulting” – being terms which cannot be monopolised – as well as the legal form component “GmbH” (German abbreviation for limited liability company) would make the mark “IBM” stronger.
5. Making a trademark application (registration)
Having chosen the word, picture, logo or other sign for your mark with the above tips in mind and after carrying out a professional search, you can now make an application for registration. Filling in the application form you will have to provide a representation of your trademark, list all the goods and services you trade in or plan to trade in using the mark, write the type of mark you are applying for as well as state the scope of protection desired.
6. Using the trademark in the registered form (use and dilution)
If the trademark examiner does not raise objections or you can overcome any objections raised, your application is advertised in the Trademark Journal. Then there is a period of three months for anyone else to oppose the registration of your mark. If no one opposes your application, your trademark is registered.
You must use your trademark in the registered form within five years from the registration at the latest. If you fail to do so, those infringing your mark can point out non-usage and thus disable you from taking any action against them.
Should third parties infringe your trademark and should you not take any action against them or should you conclude licensing agreements with them, the trademark can “dilute”. Then it is no longer possible to proceed against trademark infringements.
7. International trademarks (priority)
If you apply for an international trademark application within six months from the trademark registration, the date of the German application will be considered valid for the international application, too.
It is of course possible to apply for an international application at a later point in time.