What you need to know
What can be registered as an EU trademark?
An EU trade mark can consist of any signs, in particular words (including personal names), or designs, letters, numerals, colours, the shape of goods, or of the packaging of goods or sounds.
In practice, this means that as long as your trade mark falls into one of the categories of trade marks accepted by the Office, and can be represented by the accepted formats, you can submit it as an application without having to represent it graphically.
A word mark consists exclusively of words or letters, numerals, other standard typographic characters or a combination thereof that can be typed
It is a trade mark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements
Figurative mark containing word elements
A figurative mark consisting of a combination of verbal and figurative elements
A shape mark consists of, or extends to, a three-dimensional shape. It can include containers, packaging, the product itself or its appearance.
Shape mark containing word elements
A shape mark that contains verbal elements.
A position mark consists of the specific way in which the mark is placed or affixed to the product.
A pattern mark consists exclusively of a set of elements which are repeated regularly.
A colour single mark is just that – a trade mark which consists exclusively of a single colour (without contours).
Colour (combination) mark
A trade mark which consists exclusively of a combination of colours (without contours)
A sound mark consists exclusively of a sound or a combination of sounds
A trade mark consisting of, or extends to, a movement or a change in the position of the elements of a mark.
It consists, or extends to, the combination of images and sound.
Hologram marks consist of elements with holographic characteristics.
To be eligible for registration, your trade mark must be distinctive
The signs that make up a trade mark must be capable of distinguishing the goods and services of one undertaking from those of another undertaking.
Your trade mark should be distinctive
Consumers should be able to recognise your sign for what it is, for example as an indication of origin. It should distinguish you from other companies in the marketplace so that you can protect and build your brand identity and value.
Your trade mark should not describe what you sell
Your trade mark should not monopolise a sign that merely describes the goods and/or services that you offer. Such signs should remain available for everybody: for you and your competitors.
Selecting fanciful, arbitrary or suggestive Trademarks will ensure you acquire strong trademarks.
Here you see the charcteristics
- Fanciful Marks are Trademarks with no meaning in the dictionary. These are the strongest trademarks because consumers will not have any other association with the trademark other than as a source identifier. Examples include “AMAZON”, “SPOTIFY”, “EXXON” or “ROLEX”. A fanciful mark has the added benefit that policing fanciful marks is a lot simpler than monitoring the marketplace for any other types of trademarks. Moreover, it is less likely that you will discover unauthorized use because you created the wording.
- Arbitrary Marks are familiar words used in connection with completely unrelated products or services. The most famous example is “APPLE” as the term “apple” has no meaning at all in relation to computers. An arbitrary trademark is a strong mark that will be given a broad scope of protection. .
- Suggestive Marks include terms that suggest a particular aspect or feature or function of a product and service without actually describing the goods and services outright. In other words the consumers use her imagination to draw a conclusion about the nature of the trademarks goods or services. Examples for suggestive trademarks are “Q-TIPS” for cotton-tipped swabs or “PHYSICIANS FORMULA” for skin cream. These trademarks suggests a specific characteristic that enables consumers of determining the nature of the products and services.
Selecting a trademark with descreptive terms
Top global brands are trending towards creating unique and inventive trademarks. They have learned that avoiding generic and descriptive terms strengthens their brands. And of course it is possible to acquire a powerful brand with descriptive terms over time. To accomplish this significant resources will need to be spent on marketing and promotion over the years so that a secondary meaning can develop in the consumer’s mind. The ordinary meaning normally associated with the word must be replaced with the association of the source of the goods or services.
When a trademark becomes a generic term
Brands that become particularly well-known can become a generic name as a term and officially switch to our everyday language.
For example, the words “to google” , “to skype” “to tinder” already included in the Duden as words of the German language. When we started googling, we could have talked about yahooen or alta visten. Once said out loud, it quickly becomes clear why only one of the search engines had the chance to become a generic term. For example, in the English-speaking world the word “Kleenex” is in the Oxford English Dictionary. Other examples are “aspirin” for painkillers, “jeep” for off-road vehicles and “Frisbee” for flying discs. But it should be noted that a large part of the so-called generic terms continue to enjoy trademark protection!
How does a brand become a generic term?
Companies that have triggered such a generalization have a lot in common. It was often the first products on the market that imposed their name on an entire group. An example of this is the first headache pill “aspirin” which is still used as a synonym for all kinds of pain relievers. A further requirement is generally that a manufacturer dominates the respective market, at least temporarily, or occupies a special position for other reasons. For example “Natreen” was the first sweetener that was not only available in pharmacies but also in the supermarket. “Facebook” and “Twitter” are now representative of social media although this term only developed in response to the services mentioned.
How do manufacturers benefit from the generalization of their brand?
Branded goods manufacturers usually see it as a great success if the brand name flows into everyday language and communication dominates an entire product group. There are a number of advantages for the manufacturer. Consumers often stylize the generic namesake as a qualitative market leader. They want the original and not a cheap imitation. Even if the generalized brand itself is only an imitation. Nougat cream for children was available long before Nutella. Only none has been so successfully established on the market. The advantages here are the wide distribution of the brands and the positive image they maintain. At best, this can lead to a unique position in the mind of the consumer, which can generate a high market share.
What are the risks?
However, the advantages of a strong brand, which is generally known as a synonym for a genre, can also become an economic disadvantage. If a brand name becomes the common name for an entire product group, the brand owner runs the risk of losing his rights to the brand name. For this reason, Google has vehemently resisted the fact that googling is used as a synonym for general Internet searches. Officially “googling” now only means “search on the Internet with Google”.
Currently, the term “App Store”, originally coined by the company Apple, could become the generic name for online sales platforms since companies such as Amazon is now also using the term for its offers. It remains exciting to see which other brands will develop into generic names in the future.
We take care of it.
As your trademark attorneys we will counsel you on the most efficient methods of building brand strength and the most cost effective ways to distinguish your brand from those of your competitors.
Our lawyers have years of experience and extensive know-how in trademark law and registrations (we have registered over 4000 marks so far). We ensure that the registration of your brand is durable and successful.
Support from trademark registration to enforcing your trademark rights
From trademark registration to competent legal advice in the area of trademark infringement and trademark licensing you can count on us.
We protect your intellectual property
Feel free to contact us if your intellectual property has to be reliably protected – we’ll take care of it.
Speak with an experienced German trademark lawyer about selecting a distinctive trademark. Call or contact us online to schedule a consultation with an attorney from the Law Offices of Z I E R H U T * I P .