Trademark Protection
In a globalized economy, protecting trademark rights (trademarks, company names and logos, work titles, domain names) is of great strategic significance. These days, even small and mid-sized companies operate internationally, if not worldwide. It’s absolutely essential that even these companies consider international protecting their company names and trademarks at an early stage to avoid potential hindrances later on in the course of expanding their businesses. This must also be considered in the context of several countries which are becoming ever more economically significant, in which trademarks are being field in bad faith by specialists or companies more and more frequently for the sole purpose of selling those trademarks back to the actual proprietor. As we have observed, these activities have now been extended to company names and trademarks for mid-sized and small companies, apparently because it is assumed that these companies are either not in a position to or are unwilling to enter into expensive legal battles over unethical trademark applications. The advent of the internet also presents a number of new challenges with regard to trademark law, as a company name or trademark on a company website is no longer geographically limited.
Trademarks
Trademark Protection Abroad
In particular, if trademark protection is also desired outside the EU, the very advantageous option of a so-called international registration is available. A national trademark or national trademark application is required as a basis, from which an application for an international registration can then be made. If the relevant requirements are met, the protection of the basic trademark or basic trademark application can be extended to further countries that need to be be specified in the application. International registrations are managed by the World Intellectual Property Organization (WIPO). More than 100 countries worldwide can be reached in addition to the member states of the EU, including the USA, China, Japan, Switzerland, Norway and Russia. A list of all participating countries/regions is available at https://www.wipo.int/pct/en/pct_contracting_states.html
We are authorised to represent our clients before both the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO).
Company Names
The right to company names generally arises once it has been used to conduct business, though there are two issues which one must bear in mind in this regard.
In establishing a company, one runs the risk that the company name which has been selected will potentially infringe upon existing third party rights. The research conducted in the course of registering with the Chamber of Industry and Commerce is entirely inadequate when it comes to avoiding this danger (a fact that is, unfortunately, rarely mentioned).
The second potential danger arises from the fact that the right to a company name is geographically restricted to the area in which one is commercially active. This means that when expanding into new markets, opposing trademark rights - whether accidentally or deliberately - may have emerged since the name was initially used in Germany and its initial use in the foreign country.
If desired, we gladly provide clients with legal council on selecting a company name - the main aim being the selection of a protectable company name - and conduct research to avoid potential conflicts with third party trademark rights. In particular, we work with clients to establish strategies for avoiding the above-mentioned problems, for example via early and comprehensive trademark protection even in those countries in which the company name will not initially be used. We also monitor company names to the desired extent to check for potential or actual third party infringement. We represent our clients before the appropriate courts in the event of conflicts that may arise in connection with third party trademarks or in the event of infringement of clients’ company name rights.
Work Titles
Domain Names
The advent of the internet and the subsequent use of domain names as web addresses has led to a plethora of name and trademark disputes, not least because the peculiarities of the internet make it easy and inexpensive to block the trademarks of third parties (see: Domain-Grabbing). It was initially quite difficult for the courts to incorporate domain names into the existing trademark system. These days, at least in the developed world, a standard for the legal status of domain names has been established, which typically allows for a reliable assessment of legal disputes involving domain names and in turn, the possibility to provide legal council on how to best avoid them.