Trademark Registration – But right

||| by Christian Zierhut

© 2005-2018

Brands can be protected in almost all countries.

The author explains everything related to national and international trademark protection, which brands exist, what can be protected, how to monitor and defend brands.

Dear clients and readers,

Successful brands occupy the consciousness of consumers

” A certain territory” .

Anyone who thinks like this easily discovers the strengths of their brand management.

The starting point for this is the brand-strategic approach of looking at the brand like a general who wants to conquer and defend a position of power, ultimately a territory.

” Territory of the brand” refers to the exclusive area of ​​competence or competence that a brand has occupied in the minds of people.

In the foreground, therefore, is not that a brand in all markets, submarkets and segments is present in total, but conquers a specific territory in the mind.

Think of Miele. Present is the brand in markets as diverse as coffee makers, cooker hoods, irons and hair curlers. But Miele enjoys a supremacy only with the washing machines.

A brand can only develop its economic value added for a company if it can occupy a comparable ” exclusive sphere of power” in its minds. We know brands that enjoy clear supremacy: IBM for computers, Porsche for sports cars, Nivea for cosmetics, Duracell for batteries, Nescafé for instant coffee, Tempo for paper handkerchiefs.

At the same time, however, countless brands are present in any number of markets without occupying a position of power somewhere in the minds of people.

But a brand is only as big and powerful as the territory that conquers it in people’s minds!

I. What can be protected? with Trademark Registration

Not only words or images can be protected, but also letters, numbers, advertising slogans, three-dimensional shapes, smells, melodies and color marks.

	description
words	The most common word markers are registered, such as “Persil”, “GMAIL” or “Microsoft”. Personal or company names can also be protected, eg “Siemens”, “Marlene Dietrich”.
letters	Even letter combinations can be protected as word marks, such as the letter sequence “BMW” for motor vehicles, “IBM” for computers or “FAEMA” for coffee machines.Individual letters can also be protected as Trademark Registration, eg C or Z !!, if the graphic design goes beyond the “customary advertising standard”.
figurative marks	Protective as a brand are two-dimensional images and illustrations, eg the exclamation mark of JOOP ! on jeans.
numbers	Also numerals in numbers or advertised, such as “QUATTRO”, “DREIER” for motor vehicles, “4711” for perfume, are protectable.
letters  number combinations	Letter-number combinations such as “@ ON2” for advertising services are protected as a trademark.
Word sequences (slogans)	Protective are also slogans such as “stinginess is cool” u. “I’m not stupid” for consumer electronics, “not always, but more and more” for beer, or the slogan “radio from here, radio like us” .
Word / image  Brands	It is also possible to protect Trademark Registration with word and image components, such as the Bayer Cross.
To dye	The color “Lila” for Milka brand chocolate was considered as eligible for protection. For yellow pages the yellow pages were considered to be protective. Normally, individual colors are not considered protectable, as they should be freely usable by anyone. Protective is also the concrete composition of several colors. The protectability of the colored VISA logo even without the name “VISA” was affirmed, for example, for “finance”.
Three-dimensional shapes	Protective are three-dimensional forms, as far as they have a certain originality. Three-dimensional shapes, which have only generally common and simplest design or whose forms are purely technical, are not protected as a trademark. For example, the illustration of the Lego stone or the “Granini bottle” were judged to be protectable due to their original bulbous design.
Melodies and sound sequences	Protective tunes are also considered to be tunes, such as the theme tunes of broadcasters or commercials such as “Nothing is impossible – TOYOTA” .
odors	Odors can also be protected as trademarks if they can be represented graphically or by explanation. For example, the odor of perfumed tissue or perfume may be trademarkable.

< The brand gives the holder the opportunity to make the mark the subject of a license and thus to grant third parties the use of the mark against payment of a license fee .>

II. What conditions are there for Trademark Registration?

First of all, it should be carefully examined whether the chosen brand is protectable .

With regard to the ability to protect, the responsible trade mark office examines whether the Trademark Registration application conflicts with statutory grounds for refusal. In particular, the Office examines the need for free-standing, ie whether the mark is directly descriptive of the goods or services claimed.

In practice, the question of distinctiveness and the examination of whether a descriptive statement requiring disclosure is of the greatest importance.

In doing so, the mark must always be assessed with regard to the goods or services designated by the applicant for identification.

When selecting the name to protect, care must be taken as well as in the search for possible collisions.The final decision is whether and in what form trademark protection can be obtained.

Example: The term ‘apple’ is not distinctive for the product ‘fruit’ and is therefore not eligible for protection since it is not considered by the market to be distinctive of the product in question and therefore not as an indication of a particular company.

In rare cases, Trademark Registration protection comes about without prior registration.

However, this only happens if a sign has gained market validity as a trademark within the relevant public. Traffic validity means that a sign is due to extensive

Is so well-known to the public involved that the traffic in the sign is indicative of a particular company or manufacturer.

For example, the Mc Donald’s brand would enjoy brand protection even without being registered in the register as a traffic-fined brand.

In addition, prior to filing a Trademark Registration, a search should be carried out for older identical or confusingly similar trademarks and company names. This prevents that older rights are not violated and the newly registered trademark must be deleted.

III. Classification according to goods and / or services

A Trademark Registration is always registered for certain goods and / or services. Decisive is the official classification according to the International Classification of Nice (NCL). This contains all conceivable goods and services in 45 classes.

< The correct allocation of each individual product or service requires some experience and should, in case of doubt, be left to an experienced lawyer>

The terms of goods and services listed in the classification are generic terms that refer to the fields to which the goods or services are generally assigned. The official classification is therefore only a coarse division, which requires supplementation in individual cases. This is particularly important because the list of goods and services determines the scope of protection of the brand.

The preparation of the goods and services directory requires great care:

Once the filing of a trade mark with a specific directory has been filed once with the Trademark Registration Office, the list can subsequently only be limited but can no longer be extended.

If a product or service has not been clearly and correctly classified using the classification, the filing date relevant to the seniority of the trade mark may be lost as the trade mark must be re-registered.

With regard to an international registration, the list of goods and services of the basic brand should already be prepared with such care that the objections of the foreign Trademark Registration offices are avoided as far as possible.

It is not possible to make a generally binding statement as to whether the list of goods and services should be formulated more abstractly or specifically, but depends individually on the brand and the search results.

Within six months of the filing date of a trade mark application, trade mark applications may be filed in foreign countries which may claim the date of the first application (the so-called “priority”) in order to be effective.Even after expiry of the six-month priority period, applications can still be submitted abroad. However, the priority of the first login is lost. The first application is usually submitted domestically and called “basic mark”. While an IR trademark requires a mark registered in the country of origin (“home mark” or “basic mark”) under the Madrid Trade MarkAgreement (MMA), a trade mark application is sufficient under the Madrid Trade MarkAgreement (PMMA). The following should be noted: The IR mark must be used within six years of registration. The IR brand is tied to the basic brand for five years. If the basic mark goes down during this period, the IR mark also goes under. However, a national trademark application can still be filed. This can claim the priority of the IR brand. The term of protection of an IR mark is ten years and can be extended as often as desired.

IV. Trademark protection abroad

In principle, Trademark Registration can be registered in any country worldwide, eg as a Japanese or Brazilian brand, at the respective Trademark Registration offices.

§ IR mark (WIPO)

Example: A holder of a German trademark would like to extend its protection to Liechtenstein, Switzerland, the Czech Republic and Poland. In this case, an application for international registration will be filed with WIPO in Geneva on the basis of the German mark (basic mark).

In order to enable applicants to register trademarks faster and more cheaply, a large number of countries, including most of the countries of Western and Eastern Europe, have become a special association for the international registration of trademarks (IR trademarks), the so-called Madrid Agreement about the international registration of trademarks and the Protocol of the Madrid Agreement.

With the IR brand, therefore, inexpensive (from € 499 incl. 19% VAT plus official fees) can be achieved at the same time with a single application for Trademark Registration protection in many countries.

These agreements make it possible to file a single application for international trademark registration with the WIPO (World Intellectual Property Organization) in Geneva, instead of a large number of national filing procedures. The prerequisite for the application for international registration is that the applicant has a so-called basic mark in a Contracting State.

The audit is the same as for individual national Trademark Registration applications. Accordingly, in each claimed country, contradictions based on prior rights can be raised. In each country, the respective Trademark Registration office can check the brand for absolute grounds for refusal.

The protection period is 10 years and can then be extended as often as desired.

List of all 80 members of the Madrid Agreement and Protocol:

http://www.wipo.int/members/en/

Albania (A & P)

Algeria (A)

Antigua and Barbuda (P)

Armenia (A & P)

Australia (P)

Austria (A & P)

Azerbaijan (A & P)

Bahrain (P)

Belarus (A & P)

Belgium ^* (A & P)

Bhutan (A & P)

Bosnia and Herzegovina (A)

Botswana (P)

Bulgaria (A & P)

China (A & P)

Croatia (A & P)

Cuba (A & P)

Cyprus (A & P)

Czech Republic (A & P)

Democratic People’s

Republic of Korea (A & P)

Denmark (P)

Egypt (A)

Estonia (P)

European Community (P)

Finland (P)

France (A & P)

Georgia (P)

Germany (A & P)

Greece (P)

Hungary (A & P)

Iceland (P)

Iran (Islamic Republic of) (A & P)

Ireland (P)

Italy (A & P)

Japan (P)

Kazakhstan (A)

Kenya (A & P)

Kyrgyzstan (A & P)

Latvia (A & P)

Lesotho (A & P)

Liberia (A)

Liechtenstein (A & P)

• • Belgium, Luxembourg and the Netherlands have a single case law in Europe and a common Trademark Registration Office for the registration of trademarks (Benelux Office). Under the Madrid Agreement, trademark protection is claimed as if it were a country (Benelux). The protection therefore causes only a fee.
  • The Netherlands Antilles belonged to the territory of the Netherlands, to which Belgian trade mark law does not apply. There is a separate trademark and Trademark Registration office. Protection is granted through its own extension of the protocol.

Lithuania (P)

Luxembourg ^* (A & P)

Moldova (A & P)

Monaco (A & P)

Mongolia (A & P)

Montenegro (A & P)

Morocco (A & P)

Mozambique (A & P)

Namibia (A & P)

Netherlands:

– Territory in Europe * (A & P)

– Antilles ** (P)

Norway (P)

Poland (A & P)

Portugal (A & P)

Republic of Korea (P)

Romania (A & P)

Russian Federation (A & P)

San Marino (A)

Serbia (A & P)

Sierra Leone (A & P)

Singapore (P)

Slovakia (A & P)

Slovenia (A & P)

Spain (A & P)

Sudan (A)

Swaziland (A & P)

Sweden (P)

Switzerland (A & P)

Syrian Arab Republic (A & P)

Tajikistan (A)

The former Yugoslav Republic of

Macedonia (A & P)

Turkey (P)

Turkmenistan (P)

Ukraine (A & P)

United Kingdom (P)

United States of America (P)

Uzbekistan (A & P)

Viet Nam (A & P)

Zambia (P)

(A): The state is a member of the agreement (in particular 57)

(P): the state belongs to the protocol (in total 72)

 

§ European Community Trade Mark

The Community trade mark provides protection in all EU Member States.

If an EU trade mark is already registered, which was previously registered as a national trade mark in one of the Member States, the EU trade mark may claim the date of protection of the earlier national trade mark, even if the filing date was many years ago. This even applies to a former IR brand. It is spoken here of a claim of “seniority”. Not to be confused with claiming the “priority”, which is only possible with brands within six months.

5 good reasons for the EU brand:

1. Uniform legal protection

There is only one right applicable to the EU trade mark throughout the EU and that right gives it strong and unique protection. Infringement claims can be brought before the EU trademark courts. These judgments apply throughout the European Union.

2. Lower costs

Significantly lower costs are incurred than single declarations in each Member State.

3. Possibility to claim the benefit of earlier national rights

The EU trademark is designed to complement national protection systems. If an applicant or holder of an EU trade mark already owns an identical earlier national trade mark for the same goods and services, he may claim seniority.

4. Unproblematic obligation to use

Actual and serious use in only one Member State is enough to maintain the EU mark in all countries of the European Union.

5. An older law that is enforceable in all countries of the European Union

The EU trade mark can be an older law that can be upheld by any younger trade mark in each Member State. So you can challenge the EU mark with younger national brands.

Comparison of Community Trade Mark ~ IR mark

	advantages	disadvantage
IR Trademark (Madrid Agreement) International registration under the Madrid Trademark Agreement of WIPO	Inexpensive, uniformly low fees for all countries.Refusal in one country is harmless to the rest of the world.	Prerequisite: Registered home stamp.The brand is linked to the home brand’s inventory for 5 years. If the home brand is removed, the IR mark is deleted with all countries. In each chosen country the brand must be used
IR mark (protocol) protocol to the agreement	A registered basic mark is not required. Registration of the basic mark is sufficient.If the basic mark is abolished, the designated countries can be converted into national Trademark Registration.	Countries require individual fees, the amount of which variesIn each chosen country the brand must be used
EU trademark	The EU brand only needs to be used in a larger EU countryIn case of contradictions the loser bears all costs (max 600 EUR per opposition)	If the application for a prior right in one Member State is rejected, the entire EU trade mark is rejected. It is not possible to withdraw a single country from the application. A search in all Member States before registration is therefore definitely recommended for distinctive brands.(The conversion into national trade mark applications is possible as a priority , but causes registration fees for each individual Member State in which the trade mark is to be registered.)

§ International brand

For countries that are not contracting parties to the Madrid Agreement or Protocol, applications will be filed directly with the foreign trade mark authorities.

Direct registration with foreign trade mark offices is only chosen if protection by the “IR mark” or “EU Community trade mark” listed above is not achievable in the countries concerned, because individual applications are more complex in foreign countries.

The following important states are not contracting parties to the Madrid Agreement or Protocol, so applications are filed there before the national Trademark Registration authorities:

• Asia and Oceania

Afghanistan Bangladesh Brune

Fidji Islands Hong Kong India Indonesia Cambodia Kazakhstan Kyrgyzstan

Laos Macao Malaysia Mongolia

Myanmar (former Burma) Nepal

New Zealand Pakistan

Papua New Guinea

Philippines Sabah (Malaysia) Solomon Islands Samoa (West)

Sarawak (Malaysia)

Sri Lanka Tajikistan Taiwan Thailand Turkmenistan Uzbekistan

• Middle East and Africa

Ajman Angola Aripo Ethiopia

Bahrain islands

Burundi Gambia Gaza Ghana

Iraq Israel Yemen

Jordan

Congo (Democratic Republic of)

Kuwait

Lesotho Lebanon Liberia Libya Madagascar Malaw Mauritius Mozambique

Nigeria

Oman Qatar Rwanda Zambia

Zanzibar (part of Tanzania)

Saudi Arabia

Seychelles Sierra Leone South Africa

Tanzania (includes Zanzibar and Tanganyika) Transkei (South Africa) Tunisia

Uganda

Venda (South Africa)

United Arab Emirates

West Bank (Judea-Samaria)

Zimbabwe

• South and Central America and Canada

anguilla

Argentina Aruba Bahamas Barbados Belize Bermuda Bolivia

Brazil

British Virgin Islands

Cayman Islands

Chile Costa Rica Dominica

Dominican Republic

ecuador

Salvador Falkland Islands Grenada Guatemala Guyana

Hait Honduras Jamaica

Canada

Colombia

Cuba

Mexico Montserrat Nicaragua

Panama Paraguay Peru

Puerto Rico

St. Kitts and Nevis

St. Lucia

St. Vincent and the Grenadines

Surinam

Trinidad and Tobago

Caicos Islands Uruguay

Venezuela

V. Brand monitoring

” Whoever sleeps on his right hand can lose her !”

Brand Monitoring – The cost-effective method of brand defense:  is necessary to detect colliding competitor applications much earlier.   You will gain a decisive advantage in order to be able to initiate remedies on time and thus avoid high legal costs. Because a conflicting trademark registration can be attacked after the expiry of the opposition period only in a much more costly civil court proceedings.

Surveillance provides the brand owner with the security of being notified of identical or similar newly registered trademarks.

If similar trademarks are registered due to a lack of trademark monitoring, this leads to a weakening of the distinctive character, up to the loss of the trademark right.

The lawyer speaks here of dilution.

This prevents the worldwide possible brand monitoring . The monitoring of trademarks and trademarks worldwide is possible for individual countries, all countries and / or certain groups of countries at fixed prices. For Germany, we offer a special tariff , which also includes the EU brands and the international brands that enjoy protection in Germany.

Competitor monitoring makes it possible to identify product strategies of your competitors much earlier. We can monitor your competitors for registration and registration of patents, utility models, and trademarks.

Our monitoring tools answer the following questions:

• Who uses your brand?
• Are identifiable brands registered?
• What are competitors planning?
• Piracy?
• Violation of your trademark by domains