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.
Having litigated a greater-than-average number of trademark-related cases for our clients over the years, we have a comprehensive, in-depth understanding of all the intricacies of trademark law. Working hand-in-hand with our clients, we develop strategies for acquiring, implementing and enforcing trademark rights both domestically and internationally. We work with competent partners to provide clients with legal council on generating trademark rights. We also provide clients with advice with regard to website design so as to minimize the risk of trademark infringement in foreign countries to the greatest extent possible. We are also able to evaluate trademark rights in this capacity prior to their acquisition or for the purpose of evaluating hidden reserves.
Trademarks have long ennobled a particular product or service. A brand-name item is more than a no-name product. Potential trademarks include a company name or acronym - as well as all its products - or even names that differ from that of the company - for example word marks, figurative marks and combined word/figurative marks, or even new trademark forms such as three-dimensional trademarks, sound trademarks, color trademarks, etc.
Trademark protection is regulated by the Trademark Law (Markengesetz (MarkenG)) and provides a very effective and - by means of provisional injunction - easily enforceable protection against product piracy and counterfeit (e.g., an imitation Rolex, which would be worthless without the trademark logo Rolex on the watch face) for an indefinite period of time. This type of protection also applies after the patent or utility model protection for the technology behind a particular product has expired.
Trademark protection can only be achieved in most countries by formally registering it, though up to three different trademark systems compete against each others in certain countries, though these systems may be combined. In this area it’s particularly important to develop a strategy that affords the optimal level of protection for the lowest cost.
Trademark Protection Abroad
If trademark protection is desired in EU countries, there is the advantageous option of filing a so-called Union trademark application. Such an application must be filed with the European Union Intellectual Property Office (EUIPO). It is examined centrally and, if all requirements for protection are met, is registered centrally. A registered Union trademark provides uniform trademark protection in all EU member states. However, the great advantage of the broad geographical scope of protection of Union trademarks is offset by the disadvantage that they can also be uniformly revoked by earlier rights from all EU member states. The number of problematic older rights can therefore be significantly higher for a Union trademark than for a national, for example German, trademark, for which only older rights of third parties are relevant which have an effect in Germany.
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).
Trademark law has long been one of our main focuses in our role as legal council. As such, we provide clients with a comprehensive range of services in all matters related to trademark law. We offer to conduct research by use of professional search tools, evaluate protectability of trademarks, implementing trademark applications in the course of official examination proceedings, enforcing trademark rights with respect to infringing parties and especially providing advise on establishing domestic and international trademark portfolios. We provide consultations on utilizing overlapping trademark right systems for the purpose of obtaining the most cost-effective protection possible for a particular geographic area on a client-by-client basis. A great number of our clients have us monitor their trademark rights domestically or internationally to the desired extent, as identifying infringements at an early stage helps contain costs. In generating trademarks for our clients, we work closely with a number of ther companies who specialize in this area.
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.
Trademark law also concerns the protection of so-called work titles for publications, films, recordings, stage productions, trade show names, computer software, etc. The rights to work title protection arise at the time of the first use thereof. However, publishing a title protection notice pushes this point in time forward by up to 6 months.
We provide clients with advice on selecting protectable titles and publish the title protection notifications on their behalf. We represent our clients in the event of infringements of their title protection rights and will advise as to whether trademark protection is a sensible choice to ensure a broader level of protection is granted. We conduct research into existing titles so as to avoid potential conflicts with third parties.
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.
Our office has been providing clients with legal council on domain-name-related issues since the early days of the internet.
We conduct all research pertinent to and represent clients for example in cases involving the unauthorized use of domain names and the return of unlawfully reserved domain names, in UDRP proceedings before the WIPO in Geneva as well as in connection with any other issues that may arise involving domain names. We also help clients protect domain names.
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