Brand protection is often not the main focus when founding a company. In most cases, the initial focus is on establishing the service or product offered and building up a customer base. Financial resources are limited and success is uncertain, so the answer to the question of whether and how to protect a brand is usually postponed. However, early trademark protection not only provides the young company with a stable foundation for market entry, but can also protect it from considerable bad investments.
Costs and benefits of trademark protection
It is now possible to protect a trademark at a manageable cost. The costs for registering a German trademark are made up of the official fees and the fee for legal advice. Depending on the scope of the list of goods and services, the total costs are usually less than €1,000.
Trademark protection prevents potential competitors from unfairly profiting from the young company’s marketing efforts at an early stage. This is because as soon as a product or service, advertised with a catchy name, is successfully offered on the market, it attracts the attention of potential imitators. They may try to protect the brand for themselves and prohibit the young company from using it any further. This can lead to the company’s market presence having to be completely renewed, which is usually associated with considerable economic expense. If you want to avoid such a scenario, it is worth making an initial investment in trademark protection.
Upon registration, the owner acquires an absolute right to the trademark so that he can prohibit third parties from using his trademark. In addition, a trademark ensures the recognition effect, serves to acquire and maintain a good reputation, creates trust with (potential) customers and distinguishes the trademark owner’s company and its goods or services from those of the competition.
Object of trademark protection
In principle, all signs that are suitable to be represented in the register in such a way that the competent authorities and the public can clearly and unambiguously determine the object of protection can be entered in the register as a trademark. In addition to the conventional trademark categories such as the word mark, the figurative mark and the word/figurative mark, multimedia marks/movement marks can also be registered under the new legal situation.
However, the general principle that trade marks must be perceived by the public as a means of distinguishing them also applies to the new types of trade mark. They must therefore be capable of identifying the goods and services claimed as originating from a specific company and thus distinguishing these goods and services from those of other companies. Trade marks that consist exclusively of elements that describe the product cannot be registered.
When selecting the categories of goods and services to be registered, possible subsequent expansions of the product portfolio should be taken into account in addition to the specific products planned. The reason for this is that a subsequent extension of trademark protection to additional goods or services is only possible as part of a new trademark application.
However, an overly broad trademark application according to the motto “a lot helps a lot” is usually not advisable due to the increased potential for conflict with other trademarks. This is because the wider the scope of protection of the trademark is extended, the more likely it is that conflicts with existing trademark rights will arise. As part of forward-looking trademark law advice, the list of goods and services should therefore be aligned with the company’s objectives for trademark development, in particular taking into account any conflict situations.
Why availability research is important
Irrespective of the decision to apply for a trademark, it is important to have an availability search carried out at an early stage. This will determine whether a planned product name can be used without infringing older trademark rights of third parties. In view of the more than 888,000 registered German trademarks and the more than 11 million trademarks registered throughout the EU, an infringement of older rights is not at all unlikely. Other third-party trademark rights can also cause problems, e.g. company names or work titles.
The mere use of a product name – irrespective of its registration as a trademark – can infringe existing trademarks and other trademark rights and lead to the owners of these rights prohibiting the distribution of the product and claiming damages.
Many young companies limit themselves to researching the desired trademark on the Internet using the usual search engines. However, these only show an incomplete picture of the protected trademarks, as registered trademarks are also protected if they are not used for a certain period of time. Currently unused trademarks are generally not found in a search via search engines. It is therefore quite possible that a young, newly registered trademark may be attacked “out of the blue” by an older trademark.
Using the right tools, on the other hand, can provide a more precise impression of trademark availability. Both the German Patent- and Trade Mark Office (DPMA) and the European Union Intellectual Property Office (EUIPO) offer free search tools on their websites that can be used to gain an initial overview. However, a comprehensive and legally secure trademark search requires knowledge of which other trademark rights are relevant in addition to trademarks and, in particular, an expert evaluation of the results obtained.
If the search leads to the result that identical or similar trademarks already exist, a decision must be made as to whether the desired trademark should be abandoned and a new trademark found or whether the originally planned trademark should be modified. As part of good trademark law advice, solutions can be developed to modify the original trademark in such a way that the risk of a trademark collision with older and therefore stronger rights is minimized.
Recommendation for practice
It can make sense for young companies and founders to protect their own brand in order to safeguard future brand-related investments and avoid legal disputes. Irrespective of this, a trademark availability search is strongly recommended before a product is launched on the market under a new name.
