It is important to know that the competent offices do not check in the application procedure (trade mark) whether there are already older identical or similar trade marks of competitors that may conflict with your sign. The examination of trade mark protection and the proper and professional determination of the scope of protection is therefore the responsibility of the applicant or his lawyer and should be given high priority.
Our law firm specialising in trademark law therefore recommends that you conduct a trademark search before applying for a trademark, whereby it should be checked whether your sign has already been registered as a trademark in an identical or similar form or whether other rights could conflict with your trademark. In this way, you avoid unnecessary costs due to rejection of registration by the competent trade mark office and avoid disputes relating to trade mark infringements.
We will be happy to advise you on this and handle the trade mark application for you, including the necessary correspondence with the relevant national, European or international office. In addition, we always support you in checking the trade mark name by means of a comprehensive DPMA trade mark search.
When applying for a trade mark, we first examine the absolute grounds for refusal. These can be, for example, a lack of distinctiveness in comparison to other signs, a lack of trade markability due to a descriptive character for a category of goods or the use of a national emblem such as an official seal or coat of arms in the trade mark. An entry in the register will also not be made if it is contrary to public decency or public order.
As part of an identity and similarity search, we check for possible collisions with existing signs. This is important because third parties can assert these so-called relative grounds for refusal in opposition proceedings if they fear a likelihood of confusion with their own applied for or registered trade mark and can thus ultimately prevent the registration of their trade mark. After our review, you will receive a risk analysis with a detailed research report.
We support you professionally and competently with trademark research, trademark registration and trademark law. Our legal team will check your brand name and support you in protecting your product and company trademarks. We emphasise quality, cost transparency and speed.
Even after a trade mark application has been filed, we recommend that you have a trade mark search carried out at regular intervals in order to identify new registrations that are identical or similar to your trade mark, as these can dilute and thus weaken the scope of protection of your trade mark. To avoid this, you could, for example, file an opposition with the international offices or initiate cancellation proceedings so that the newly registered trademark is deleted from the register. Alternatively, however, you should try to defend yourself out of court in advance by issuing a warning. We will be happy to advise you on your individual options.
You should also know that a sign does not automatically obtain protection for all of your company’s products and services, but that specific goods and services must be defined with the help of a list before the trade mark application is filed. All goods and services are divided into 45 classes according to the so-called Nice classification.
The success of a trade mark application depends on which Nice classes are selected and to what extent. Before you register a trade mark, you should think about which products and services you want to offer and sell within the next 5 years.
If you go too far in describing the potential goods and services, there is a risk of conflicts with other trade marks and, if necessary, a refusal of registration.
If you are too narrow, you unnecessarily restrict the scope of protection of your trade mark and at the same time your own room for manoeuvre for the future.
In order to guarantee the best possible protection for you and your company, we work with you to coordinate in detail the list of goods and services that is tailor-made for you.
white ip | Patent & Legal sees itself as your specialised lawyer for national and international trademark law and also advises clients as a trademark lawyer in Dresden, Munich, Chemnitz and Leipzig.
You build the future. We create the framework.