TRADEMARKS

Basis for each trademark in Germany and Europe forms a registrable sign, e.g. a logo, a sound, a jingle, a shape, a position trademark as well as even more „abstract signs“, such as tactile trademarks or hologram trademarks. The sign is combined with a list of goods and services, for which the trademark shall be registered and used.

During the initial five years from date of filing, you do not have to use your registered trademark in Germany and the European Union. If the trademark is not used thereafter, the trademark can be deleted from the register upon request by a competitor. Different to the US, you do not have to frequently file proof of use, though.

The sign of a trademark does not have to be a visible sign. The sign can even be a sound or a jingle. The sign cannot be a smell in Germany and in the EU as there is no legally reproducible way to register a smell and to keep the smell “stored”. Furthermore, the sign must have inherently the abstract ability to be recognizable as a sign of a trademark.

The sign must not be needed by other market participants to describe their own products and services, now or potentially in the future. Furthermore, the sign must be able to distinguish products and services from one company from the products and services from another company. This holds true for linked companies as well. If either of these characteristics is missing, a trademark cannot be registered. In case you want to use a quite generic term as sign for your products and services, you may think about a word and figurative mark, which combines text and figurative elements. Therein it is important not to use figurative elements which are frequently used and customary for advertising.

A trademark infringement is generally the use of a trademark which is identical or similar to a legally valid trademark without permission of the proprietor, potentially leading to trademark confusion. In other words, a trademark infringement is based on the question if the average consumer – the “legal reference” – would have confused the signs, when labeling identical or similar goods of the legally valid trademark in the list of goods and services and the goods and services the potentially infringing sign is used for. An infringement is therefore based on three main aspects, the similarity of the signs, the similarity of the goods and services and the scope of the trademark which might be infringed.

No, in principal trademarks in Germany and in the European Union might come into force by use of a sign for respective goods and services, if the average consumer would recognize the sign as a link to a certain company providing the respective goods and services it is used for. Nevertheless, there are big disadvantages when trying to rely on “use trademarks”. You will have to prove that the trademark was already known as a respective trademark at the time of a potential infringement. Furthermore, the demands in tracking the development of your use trademark are much higher, when compared to registered trademarks. Legal certainty is reduced when compared to the registered trademarks up until the question of infringement is to be decided by a court. Therefore, registering a trademark should be the way forward in most cases.