Should I register a trademark from the start?

Trademark registration: register a trademark nationally or internationally

1. What is a brand?

Trademarks, like patents or utility models, are part of industrial property rights. Founders would do well to find out about the basics of trademark law. This helps in deciding whether a trademark application makes sense for your own company. The German Trademark Act (§3 MarkenG) describes what a trademark is as follows: A trademark comprises all signs that can be used to distinguish the goods or services of one company from those of other companies. There are different types of brands:

Type of brandExplanationexample
Word markCharacters, combinations of letters and numbers, product names, company names, slogans, claims

4711, Rolex, entrepreneurial hero

Figurative markIllustrations and symbols, typically logosApple logo, Adidas logo
Word and figurative markCombinations of names and pictures, for example company name + logo + claimFUJITSU logo, GoreTex logo
Sound markAcoustic tones and tone sequences, also called acoustic logose.g. Telekom ringtone
Shape markCertain typical 3-dimensional shapesCoca-Cola bottle, Mercedes star
Color branda specific color or combination of colorsthe corporate colors of Tiffany's, UPS, John Deere and the magenta of T-Mobile

Company names, product names, logos and even company colors can be protected with word marks, figurative marks or word and figurative marks.

In addition, the system of the German Patent and Trademark Office (DPMA) also knows the position mark, the identification thread mark, the sample mark, the movement mark, the multimedia mark and the hologram mark. Protecting things like fragrances or certain surface finishes as a trademark is also under discussion with insiders of trademark law.

  • Example: Take Antonio di Capra, the founder of a pizzeria, who is considering calling his pizzeria "Pizza per Pazzi". Could he register "Pizza per Pazzi" as a trademark? As far as the brand name "Pizza per Pazzi" is concerned, initial internet research shows that similar names already exist. If Antonio di Capra really wants to protect his name "Pizza per Pazzi", he would have to check whether the other similar-sounding names are already protected, whether his name "Pizza per Pazzi" is sufficiently distinctive and in what form it is protecting his brand. He can register the brand name as a word mark or, for example, as a word / figurative mark with a matching logo. But would it even be worth it for his pizzeria?

When should an entrepreneur register a trademark?

As soon as symbols such as logo, company colors or the concept name become synonymous with the company's performance, the entrepreneur should think about trademark protection and trademark registration. The following key questions will help you make a decision:

  • Could an expressive logo or an effective company name become a unique selling point in your industry?
  • Are you planning a supra-regional corporate development?
  • Are you planning activities in the area of ​​licensing and franchising?
  • Are the product name, design, logo and color part of the concept and an integral part of the USP?

If the pizzeria founder in our example answers one of these 4 key questions with "Yes!" answered, he should have his trademark registered and protected.

3 steps to a successful trademark registration

If you proceed systematically, you will register your trademark successfully. This requires the following 3 steps:

  • Step 1: What type of trademark should be protected? Word mark, figurative mark or a word-figurative mark
  • Step 2: Research existing brands
  • Step 3: Obtain an offer from the trademark attorney

Design protection as a supplement

In addition to trademark protection, logos or designs of objects can also be protected as registered designs or as registered designs if you want to protect the appearance of the logo. The appearance means lines, contours, colors and decorations. In particular, if you are planning to add your logo to various products (mugs, T-shirts), protection for the registered design is an option instead of a trademark application and the corresponding trademark protection. However, a registered design makes sense even without specific intentions to use the logo. However, unlike trademark protection, the term of protection is limited to a maximum of 25 years without the possibility of extension. The trademark attorney will also help you with questions of design protection.

2. Advantages of a trademark application

Anyone building a company as a brand must develop a company name, design a logo and formulate a claim or slogan. It all costs money. So if our pizzeria founder wants to implement his "Pizza per Pazzi" restaurant concept as a brand, he will want to prevent someone else from snatching his name from under his nose.

Protection against competition and sole marketing right

The advantages of a registered trademark and the associated trademark protection are:

  • The registered trademark protects against imitation.
  • The entrepreneur may use the registered trademark exclusively.
  • The entrepreneur can market trademark rights via licensing or even franchising.

By applying for a trademark and registering the trademark, the entrepreneur receives trademark protection and thus the exclusive right to his trademark. This means that third parties are not permitted to use the brand for business purposes. If the trademark protection is nevertheless infringed, you have various options for taking action.

Legal instruments in the event of trademark infringement

It is important that you coordinate with a lawyer on the subject of trademark protection in order to be able to enforce your claims as comprehensively as possible. What means are available to the entrepreneur to protect his brand?

  • Warning
  • Action for injunctive relief
  • Compensation
  • Right to information and information

If a trademark infringement is known and prosecuted, the other side is obliged to answer questions from the trademark owner.

The advantages of trademark registration are offset by the disadvantage that trademark law is a special area of ​​law that harbors quite a few pitfalls. As a rule, entrepreneurs therefore need legal advice and support.

Trademark protection violated? Let a good trademark attorney represent your interests.

Offer trademark attorney

3. Register a trademark with a lawyer or do it yourself?

In principle, an entrepreneur can apply for a trademark himself. If he is represented, he must be represented by a specialized lawyer or a law firm specializing in trademark law. The entrepreneur can get his company name or his product name from a good advertising agency. The same applies to logo, or acoustic jingles or even shape marks. However, he cannot commission the creative to act vis-à-vis the Trademark Office.

The risk of registering a trademark without a lawyer

If you register a trademark without a lawyer, you run the risk of the trademark registration being rejected. Or that the registration is delayed because the office complains about things that the entrepreneur then has to fix. Therefore, an entrepreneur should hire a lawyer who is well versed in trademark law.

The lawyer knows the intricacies of trademark law and knows how the clerks at the DPMA review and evaluate a trademark application. He advises the entrepreneur, helps with trademark research and gives an initial assessment of the likelihood of success of the trademark application. Because the registration of a trademark does not guarantee that the trademark office will also accept the application or that the trademark will ultimately also be entered in the trademark register. In order to prepare the conversation with the attorney for trademark law, we have made a clear leaflet for commercial property rights available for download.

Registration alone does not guarantee successful trademark registration. As a rule, trademark registration with a lawyer is more successful than without.

Protect your brand now at a special price

If, on the other hand, the entrepreneur hires the lawyer, he not only saves time with sometimes very detailed formalities, but also increases the likelihood that his trademark application will be successful.

Legal fees for trademark registration

The costs for the lawyer are heavily dependent on the service to be provided. For support with the registration, including the creation of a list of goods and services, the selection of the right Nice classes, the legal examination of whether the trademark is "registrable" and protectable, as well as advice on the appropriate trademark strategy, there are usually between 150 to 250 euros.

If an identity and similarity search is also to be carried out by the lawyer, between 150 and 500 euros will be added - depending on the complexity and scope of the service. In addition, a lawyer can generally check in advance of the trademark application whether the desired trademark is registrable - after all, not every word or image can be registered as a trademark.

4. Register a trademark with the DPMA for Germany

Entrepreneurs always register a trademark for the German market with the German Patent and Trademark Office (DPMA). The registration of the trademark takes place:

  • Via an online form
  • By post using a written form
  • Via DPMAdirekt: online registration with signature

Research as an important preparatory work

Basically, it is important to research before registering a brand what already exists as a brand in the industry or the field of activity of a company. The entrepreneur must ensure that his trademark does not infringe any existing property rights. There are a number of databases that you can use for this purpose. For the German market this is the DPMA database. However, we definitely recommend a lawyer for the research as security. As an entrepreneur, you can research direct competition yourself. In the area of ​​similarity research, the lawyers have more experience.

Overview of the trademark application process

  1. Registration of the trademark at the trademark office
  2. Payment of the registration fee
  3. Examination of the trademark application by the DPMA
  4. Registration of the trademark in the trademark register
  5. Wait for the period of 3 months to object
  6. Permanent trademark research after the trademark has been registered
  7. Renewal of trademark protection after 10 years

Step 1: Registering the trademark with the trademark office

You must provide the following information when you register your trademark with the DPMA:

  • Indication of the applicant's identity: Who is the trademark application for? Here the entrepreneur gives his exact company data.
  • Exact description of the trademark: When applying for a trademark, you must transmit the trademark to the DPMA in exactly the form in which it is to be used later. This also includes format specifications for the written or electronic transmission, which must be strictly adhered to.
  • Choice of goods and services directory: there are 45 classes of goods and services such as dishes, personal care products, fireplaces, fabrics, footwear, etc. - from this you have to choose the appropriate areas for your trademark application.

If you want to protect a logo, you have to define the design, colors, font, etc. exactly. If you register an acoustic logo, you will need a corresponding sheet of music and possibly also an acoustic audio sample. The following applies: Define and describe your brand as precisely as possible.

You can also find the official registration form in our checklist:

Almost there!

Simply fill out the form below and you will receive an email with the download link.

Step 2: Payment of the registration fee
The official fees for registering a trademark are € 300. This fee already includes 3 classes of goods and services. Each additional class costs € 100. When registering electronically, the fees are a little cheaper, the basic fee is then € 290.

But it is not just for cost reasons that you should only apply for a trademark in the classes that are relevant to you; This means that you have to use the brand in these areas too, so that brand protection can be maintained. The examination and processing time of the trademark application is also extended with a larger number of classes for which you want to apply the trademark.

DPMA fees for registering a trademark

Below you will find an overview of the fees at the DPMA.

Brand protection fee typeEuro
Registration fee for trademark protection (up to three classes)300 €
Registration fee for trademark protection for electronic registration290 €
Brand protection class fee (for each additional class)100 €
Accelerated examination of the registration for trademark protection200 €
  
Renewal fee for trademark protection (up to three classes)750 €
Trademark protection class fee for renewal (from fourth grade)260 €
  
Trademark protection objection fee120 €
  
Cancellation fee due to invalidity due to absolute hindrance to protection120 €
Cancellation fee due to forfeiture100 €
Trademark protection refund fee10 €

Step 3: Examination of the trademark application by the DPMA
Once you have submitted this information, the DPMA will check it. When registering a trademark, however, the DPMA only checks whether there are absolute grounds for refusal. This examination of the absolute obstacles to registration is based only on the statutory provisions:

  • Can the trademark be protected?
  • Have the formal registration criteria been met?
  • Is there a risk of being misled or deceived by consumers?
  • Does the brand violate laws, regulations or morality?

For example, if the mark is not distinctive, if the information is too general or if there is an obvious risk of misleading, the DPMA will inform the entrepreneur of the complaints. If the entrepreneur does not react or does not improve, the Trademark Office rejects the entry.

Step 4: Registration of the trademark in the trademark register
If there are no complaints or if complaints are resolved by the entrepreneur, they are entered in the trademark register. The DPMA also publishes the new trademark in the public trademark gazette.

Step 5: Wait for the 3 month period to object
If the brand is published in the brand gazette, potential brand competitors or owners of older brands have the opportunity to object to the registered brand and the trademark application. Because the DPMA does not check whether existing property rights are being violated. These so-called relative barriers to protection take effect in the following cases:

  • There are already existing older and identical brands.
  • The likelihood of confusion with older brands is too great.

Owners of earlier trademarks can file an objection to the trademark application within three months of the publication of the trademark. If the objection is successful, the trademark will be deleted and the trademark application will no longer apply. The entrepreneur does not receive the fees for the trademark application back.

The trademark protection exists after registration for exactly 10 years, but can then be extended for a further fee.

Step 6: Permanent trademark research after the trademark has been registered
After the trademark has been successfully registered and after the period of 3 months for objection has expired, a trademark protection of 10 years applies, which is calculated from the date of receipt of the application. Even after the trademark application, you should regularly check the directories to see whether there is a trademark application that would infringe your trademark. Because then you can file an objection. On the subject of trademark protection, lawyers often offer helpful tools to quickly identify infringements of your trademark rights on the Internet.

Step 7: Renewal of trademark protection after 10 years
A trademark is protected for 10 years after the trademark has been registered with the trademark office. Entrepreneurs can extend the protection after 10 years for a fee. The amount of the fee depends on how many classes are registered and protected.

Beware of scammers!

Similar to the entry in the commercial register, after your trademark application with the DPMA it can happen that you receive mail from third parties with various offers and requests for payment for the trademark application. However, only respond to direct mail from the two offices and, if in doubt, consult with them.

5. Costs of trademark registration with the DPMA

For the trademark application you will have to pay fees for the registration (for three classes of goods or services) and any other fees from the fourth class onwards. The trademark registration costs 300 €, the costs for trademark protection from the fourth grade onwards amount to 100 € for each additional class.

Below you will find an overview of the fees at the DPMA. Below we have listed guide values ​​for the costs of legal services.

Brand protection fee typeEuro
Registration fee for trademark protection (up to three classes)300 €
Registration fee for trademark protection for electronic registration290 €
Brand protection class fee (for each additional class)100 €
Accelerated examination of the registration for trademark protection200 €
  
Renewal fee for trademark protection (up to three classes)750 €
Trademark protection class fee for renewal (from fourth grade)260 €
  
Trademark protection objection fee120 €
  
Cancellation fee due to invalidity due to absolute hindrance to protection120 €
Cancellation fee due to forfeiture100 €
Trademark protection refund fee10 €

Added to this are the trademark attorney fees already explained:

  • Advice, strategy concept for registration and implementation: approx. € 150 to € 250
  • Carrying out the trademark search: approx. € 150 to € 500

6. International trademark registration

The territorial principle applies to trademark protection. A trademark that is registered in Germany is by no means protected in the EU, let alone worldwide.

Register a trademark in the EU

The trademark application for all member states of the EU is called a community trademark or European Union trademark. The EU trade mark is not registered with the DPMA, but with the European Union Intellectual Property Office (EUIPO) in Alicante, Spain. The trademark application can also be made online there. For trademark research in the EU, use the database for the community trademark.

The cost of registering a community trademark is 900 euros. Your protection will initially also extend for 10 years. As tempting as it is to register a trademark for the whole of the EU, the DPMA has a few points to consider. For example, the principle of "all or nothing" applies to the community trademark - if there is an objection in only one of the EU member states, the trademark application does not take place. So first check carefully in advance to what extent you actually need protection in other countries You might choose international trademark registration instead.

International trademark registration

An international trademark application can be made after the trademark has been registered in Germany. One speaks here of a basic brand. Unlike the community trademark in Europe, you explicitly select the countries for which you want to apply for the trademark. The DPMA then forwards your application to the World Intellectual Property Organization (WIPO for short), where it is examined and then submitted to the selected countries as an application for protection. If there is no objection within a certain period of 12 to 18 months, the trademark application is successful.

7. FAQs: Frequently asked questions about trademark registration

In the case of a trademark application, there are costs for the attorney and official fees for the trademark application. The attorney's fees are based on the scope of the advice. At the DPMA, trademark applications cost at least € 300 (or € 290 for electronic applications) for 3 classes. For each additional class of goods and services, an additional € 100 is added. If you register an EU trademark, the HBMA will incur € 900.

The registration process for registering a trademark with the DPMA takes about 7 to 8 months. If the entrepreneur opts for the shortened trademark application, it takes less than 6 months. The entrepreneur pays an additional fee of € 200 for this. After the trademark has been entered in the trademark register, the entrepreneur must wait for the three-month objection period. If this objection period has passed without any objections, the trademark is protected. Brand protection begins on the day of registration and expires after 10 years. The entrepreneur can extend the trademark protection if he pays a renewal fee in good time.

Trademark protection begins on the day of registration and lasts for 10 years. Before the protection period expires, the entrepreneur can extend the trademark protection.

The trademark registration helps to protect a distinctive brand name, a logo or a slogan and to create a competitive advantage through the uniqueness. In addition, a brand can be marketed through licensing or franchising.

Trademark protection begins with the trademark application. It is therefore worthwhile for entrepreneurs to register their brand as soon as possible. Whether the trademark is protected by the entry in the trademark register for 10 years is decided by the examination by the office and the course of the 3-month objection period after entry in the trademark register. If, for example, a trademark is applied for on June 1, 2020 and entered in the register on December 1, 2020, the protection applies until May 31, 2030 if the protection is not extended. A violation of trademark law can therefore be prosecuted as early as June 2, 2020. A good trademark attorney takes care of the formalities.

In Germany, a trademark is registered with the Trademark Office, more precisely with the German Patent and Trademark Office (DPMA). In the European Union, the European Union Intellectual Property Office (EUIPO) is responsible for registration. Anyone who applies for a trademark internationally should first contact the German Trademark Office, which then has the trademark registered with the World Intellectual Property Organization (WIPO).

Trademark registration usually takes up to 8 months. The DPMA offers a faster examination as part of the so-called accelerated procedure. In this case, however, fast is relative. This only guarantees that the entry will definitely take place in less than six months. The additional fees for the faster trademark registration are 200 euros.

The costs for the trademark application result on the one hand from the number of trademarks that you want to apply and the number of relevant classes of goods and services for which the trademark application is to be made. When applying for a trademark for a trademark, the fees of EUR 300 (EUR 290 for electronic trademark applications) levied by the DPMA already include three classes of goods and services. The DPMA will charge EUR 100 for each additional class in the course of the trademark application.

Errors in the brand name or the brand description cannot be changed afterwards. If, for example, a logo has been described in the wrong colors or a mistake has crept in with the brand name or slogan, the entrepreneur must initiate a new trademark registration. He then has to pay the fees a second time.

If the entrepreneur wants to expand the classes, a new registration is also required for the newly selected class. On the other hand, it is easier to subsequently restrict the scope of the selected classification.

A patent always relates to a technical invention. Such a technical invention can be protected as a patent. Of course, it is conceivable that the entrepreneur can also equip the invention with a trademark and have this trademark protected in addition to his patent.

First of all, the decisive factor is whether the company name can be registered according to Section 3 of the Trademark Act. The most important criterion is whether the name differs significantly from other company names. The name can then be registered with the trademark office as a word mark or as a word / figurative mark. The costs for registering a company name include legal fees and registration fees at the trademark office.

A logo can be protected as a trademark by registering a trademark or as a utility model or registered design. As a trademark, the logo is protected either as a figurative mark or as a word and figurative mark for corresponding classes of goods and services. As a registered design, the logo is generally protected as a creative achievement regardless of certain products. It is often advisable to apply for both forms of protection.

If you are the first to secure a domain name, you can generally use it exclusively. However, only for the selected top-level domain. For DE domains, for example, he can start a query as to whether the domain is still free. If a domain is free, the entrepreneur must nevertheless check whether the domain infringes the rights of third parties. As part of the trademark registration, the owner can in principle register and protect the domain name as a name. He then has the opportunity to prosecute third parties who use a domain of the same name with a different ending or top-level domain. Example: The entrepreneur has registered the pizza4pazzi brand in Germany and registered the domain pizza4pazzi.de. Then, with the help of a lawyer, he can take action against anyone who uses the domain pizza4pazzi.com or .org or .eu in Germany.

8. Bottom line: get a lawyer

Anyone who registers a trademark acquires the right to use a trademark exclusively. If the brand develops positively, the entrepreneur creates a unique position and a competitive advantage. He can also sell usage rights to the brand as a license or via franchising. All characters that create a strong distinction can be registered as a trademark: these can be names, letters and numbers or typically combinations of logos, names and slogans. Acoustic logos can also be protected as trademarks.

The process of registering a trademark is lengthy, the entrepreneur has to reckon with a period of 6 months and more. In addition, there is brand research, which is used to check whether a brand name already exists. Registration alone does not guarantee trademark protection, because the trademark office can also reject the application. Therefore, it is highly recommended that you rely on a specialized attorney when filing a trademark. For example, use our all-round carefree package for your trademark registration from our cooperation partner: an experienced lawyer checks whether your trademark is eligible for protection, processes the application documents with you and makes the registration with the DPMA.

Service package trademark registration

Author: Für-Gründer.de editors

As editor-in-chief, René Klein has been responsible for the content of the portal and all publications by Für-Gründer.de for over 10 years. He is a regular interlocutor in other media and writes numerous external specialist articles on start-up topics. Before his time as editor-in-chief and co-founder of Für-Gründer.de, he advised listed companies in the field of financial market communication.