Trademark protection is an essential component of intellectual property and ensures exclusivity and protection of brand identity. Trademark protection refers to trademark law, which grants industrial property rights to signs that identify goods and services of a company.

Signs may consist of words, letters, numbers, images, colours or combinations.

Table of contents

  1. What is trade mark protection?
  2. The application procedure for trade marks
  3. Trade mark protection and its infringements
  4. Enforcement of trade mark rights
  5. Why is trade mark advice important?
  6. Current court decisions on trade mark protection
  7. Trade mark protection: the key to success and reputation in competition

What is trade mark protection?

In today’s globalised and digitalised world, trademarks are an important factor for the success of a company. They create trust, recognition and differentiation among customers and can have a high economic value. In order to protect trademarks from imitation and misuse, there are various legal instruments, which are explained below

  • Trademark protection describes the legal protection of a trademark against unauthorised use by third parties.
  • A trade mark is a sign intended to distinguish the goods or services of one company from those of others.
  • Trade mark protection arises through registration in the trade mark register at the German Patent and Trade Mark Office or through use in the course of trade.
  • It grants the owner the exclusive right to use and exploit the trade mark.
  • Trade mark protection can be infringed if an identical or similar trade mark is used for identical or similar goods or services without the owner’s consent.
  • Trademark infringement can be punished under civil law with claims for injunctive relief, damages and information, and under criminal law with fines or imprisonment.

The application procedure for trade marks

The trade mark application procedure is a crucial step in ensuring the protection and enforcement of trade mark rights. This section discusses the various aspects of the trade mark application procedure in detail.

1. Legal basis for the application procedure
In Germany, the application procedure for trade marks is governed by the Trade Mark Law(MarkenG). At the European level, the European Trade Mark Regulation(EMV) is relevant, while international trade mark applications are governed by the Madrid Agreement and the Madrid Protocol.

2. Competent trade mark offices
Different trade mark offices are responsible for filing a trade mark application, depending on the geographical scope of the trade mark protection:

  • German Patent and Trade Mark Office (DPMA) for national trade marks
  • European Union Intellectual Property Office (EUIPO) for EU trade marks
  • World Intellectual Property Organization (WIPO) for international trade marks

3. Application procedure: Steps and requirements
The application procedure for trade marks consists of several steps and requirements that must be fulfilled in order to ensure a successful registration:

I. Trade mark search
Before applying for a trademark, it is advisable to conduct a trademark search to identify possible conflicts with existing trademarks and minimise the risk of rejection or opposition.

II. Application form and fees
Filing a trade mark application requires the completion of an application form, which must include information about the trade mark, the applicant and the classes of goods or services claimed according to the Nice Classification. There are also application fees, which vary according to the number of classes claimed.

III. Examination of registrability
The competent trade mark office examines the application as to its registrability, i.e. whether the trade mark fulfils the legal requirements under Sec. 3 Trade Mark Law or Art. 4 EMC. These include, inter alia, distinctiveness, lack of misleading character and non-infringement of earlier rights of third parties.

IV. Publication and opposition period
After successful examination, the trade mark is published in the trade mark register and is subject to trade mark protection. From the date of publication, third parties have a period of three months to file an opposition against the registration of the trade mark.

V. Registration and Term of Protection
If no opposition is filed or if an opposition is rejected, the trade mark is registered and trade mark protection begins. The term of protection in Germany and the EU is 10 years from the filing date and can be extended for another 10 years at a time by paying a renewal fee.

In summary, the application procedure for trade marks is an important step to ensure the protection and enforcement of trade mark rights. Knowledge of the legal principles, examples and recent court decisions is crucial to ensure the success of a trade mark application.

Trade mark protection and its infringements

The trademark owner has the exclusive right to use or license the trademark. He can therefore take action against third parties who use his trade mark without permission for similar or identical goods or services and thus commit a trade mark infringement.

A trade mark infringement can have serious consequences, both for the infringer and for the infringed party. The infringer can be sued for injunctive relief, damages and destruction of the infringing goods. The infringed party may suffer considerable damage to its reputation, turnover and market position. In order to avoid or prosecute a trade mark infringement, it is therefore advisable to conduct a careful search for existing trade marks and, if necessary, to consult a specialist trade mark attorney.

An example of a trademark infringement is the case “Lindt & Sprüngli AG v Hauswirth GmbH”, which was decided before the European Court of Justice (ECJ). The plaintiff was the owner of a three-dimensional EU trade mark for a chocolate bunny with a red bow around its neck.

The defendant also marketed a chocolate bunny with a red bow around the neck, but without the embossing “Lindt Goldhase” on the foil. The ECJ found that the defendant had infringed the plaintiff’s trade mark because the two bunnies had a high degree of visual similarity and consumers could not tell them apart.

Enforcement of trade mark rights

Enforcement of trademark rights is an important aspect of trademark law that helps companies protect their trademarks and fight injustices such as trademark infringement and unfair competition. In this section, we will take an in-depth look at the different legal options for enforcing trade mark rights.

Trademark rights can be enforced on a civil and criminal level. On the civil law level, the trademark owner can take action against trademark infringements by claiming injunctive relief, damages and information. The relevant legal basis in Germany can be found in the Trademark Act (MarkenG), in particular in §§ 14-19 MarkenG.

An example of a civil enforcement of trademark rights is the case “adidas v. Puma” from 2016. In this case, adidas sued Puma for the use of two parallel stripes on sports shoes, which were said to constitute a trademark infringement of adidas’ well-known “three stripes” trademark. The Düsseldorf Regional Court (Case No. 4a O 66/16) ruled in favour of adidas and ordered Puma to cease and desist, pay damages and provide information.

On a criminal level, trade mark infringements can be punished with a prison sentence of up to three years or a fine pursuant to Section 143 MarkenG. In particularly serious cases, such as commercial trade mark infringement, the prison sentence under Section 143a MarkenG can even be up to five years.

A recent court decision that illustrates the criminal prosecution of trademark infringement is the case of the Federal Supreme Court (BGH) from 2020 (Case No. I ZR 153/17). In this case, an online trader was convicted of selling counterfeit luxury watches. The BGH confirmed the trader’s conviction for trademark infringement and clarified that the sale of counterfeit branded products is punishable.

In addition to civil and criminal measures, there are other ways to enforce trademark rights, such as the so-called “border seizure ” procedure, in which customs authorities can seize and destroy counterfeit goods at the borders.

Why is trademark advice important?

Trade mark advice is vital for businesses and individuals who want to protect their trade marks and maximise their value. Expert advice from an experienced lawyer or trademark consultant can help identify and avoid potential legal problems, optimise trademark strategy and act effectively in the event of trademark disputes.

Below are some reasons why trademark legal advice is important:

1. Trademark selection and review

  • A trademark consultant can assist in selecting a trademark that is both registrable and protectable.
  • A trademark search can be conducted to identify and avoid potential conflicts with existing trademarks.
  • For example, in the case of Apple Corps v. Apple Inc. (2006) from the UK, it can be shown that a careful trademark search and advice on the selection of a trademark can help to avoid lengthy and costly litigation.

2. Trademark application and administration

  • An experienced professional can help with filing a trade mark application with the relevant trade mark office such as the German Patent and Trade Mark Office (DPMA) or the European Union Intellectual Property Office (EUIPO).
  • Trade mark protection advice can also help with the management of trade mark portfolios by ensuring that trade mark rights are renewed and managed in a timely manner.

3. Protection against trademark infringement and unfair competition

  • A trademark attorney can help companies effectively enforce their trademark rights and fight trademark infringement and unfair competition.
  • In the context of the aforementioned case “adidas v. Puma” (2016), trademark law advice helped adidas to successfully enforce its trademark rights and claim damages.

4. Licensing and cooperations

  • Trademark law advice can help draft and negotiate licensing and cooperation agreements to maximise the value of the brand and minimise legal risks.
  • The case of “Marvel vs. NCSoft” (2004) from the USA shows the importance of trademark law advice in the drafting of licence agreements to avoid possible infringements and litigation.

5. Case law and legislation

  • Trademark lawyers always keep abreast of current court decisions and legislative changes and can advise companies accordingly.
  • For example, in the case “Sky vs. SkyKick” (2020, ref. C-371/18), the ECJ provided important guidance on the registration and protection of trade marks in the EU, which is relevant for trade mark law advice.

Overall, trade mark legal advice is crucial for companies and individuals to effectively protect their trade marks, minimise legal risks and maximise the value of their trade marks. By working with an experienced attorney, businesses can strengthen their legal position and be more successful in the long run.

Current court decisions on trademark protection

In trademark law, there are always significant court decisions that shape the existing law and clarify the application of trademark standards. Some current court decisions in trade mark law from different countries and jurisdictions are presented below:

  1. ECJ: Sky v SkyKick (2020, Case C-371/18)
    This case dealt with the question of whether a trade mark can be invalid for “indefinite” goods and services. The ECJ ruled that a trade mark can only be declared invalid if the application was made in bad faith. This ruling has far-reaching implications for trade mark registration and protection in the EU.
  2. BGH: Oreo v. Milka (2020, Ref. I ZR 163/17)
    In this case, the Federal Court of Justice (BGH) in Germany ruled that the design of the packaging of Milka chocolate biscuits did not constitute an unfair imitation of the well-known Oreo biscuits. The BGH found that the packaging design did not constitute a trademark infringement and did not mislead consumers.
  3. US Supreme Court: USPTO v. (2020, No. 19-46)
    In this case on trademark protection, the US Supreme Court ruled that a generic domain such as “” can enjoy trademark protection if it is perceived by consumers as a trademark. This ruling has implications for the protectability of domain names under US trademark law.
  4. UK Supreme Court: Unilever v Shanks (2019, UKSC 45)
    This case concerned an employee’s compensation for an inventive mark he developed while employed by Unilever. The UK Supreme Court ruled that the employee should receive fair compensation for his invention as it had brought significant economic benefits to the company. This ruling has implications for the rights of employees in relation to trade mark inventions.
  5. ECJ: Gözze Frottierweberei v. EUIPO (2021, ref. C-678/19 P)
    Here, the ECJ had to decide whether a three-dimensional trade mark consisting of the shape of a towel roll can enjoy registration protection. The ECJ ruled that the mark was not protectable because it was devoid of distinctive character and consumers would not perceive the mark as an indication of origin.

These recent court decisions in trade mark law illustrate the diversity and complexity of issues dealt with in different jurisdictions. They also show how case law is continuously evolving and adapting to changing market conditions and consumer expectations. Businesses and trade mark owners should stay abreast of the latest developments in order to effectively protect and enforce their trade mark rights.

Trademark protection: key to success and competitive reputation

Trademark protection is an important aspect of intellectual property that enables companies to stand out from their competitors and identify their products or services. It also provides legal protection against imitation, confusion or unfair competition. In this context, trademark protection requires careful selection, registration and monitoring of the trademark as well as effective enforcement in case of infringement. Trademark law is thus an investment in the success and reputation of a company.