Trademark law

 

 

Brands do have valuable functions and characteristics. On the one hand, a brand is an elementary instrument to differentiate the goods and services of a company from those of its competitors and to keep competitors at a distance. On the other hand, a brand as an immaterial company value determines the scope and value of a company in addition to competent employees, real estate and turnover. Since a trademark gives you an exclusive right to its use, trademark law, such as design and copyright law, is often referred to as an exclusive right - which of course does not prevent you from allowing third parties to use your trademark by way of a license (profitably). For these reasons, an early, targeted and long-term trademark strategy is advisable in order to establish a strong and assertive trademark on the market.

We do not only support you during preparation of such a trademark strategy, but also register your trademark with the various trademark offices on your behalf. We will also be happy to monitor and defend your trademark rights at national, European and international level. We have a worldwide network of correspondents at our disposal who offer valuable support with their expertise in the individual countries.

What we can do for you:

    • Creation of your personal trademark strategy,
      • Search for conflicting trademark rights,
        • Registration of your trademarks on a national, European and international level,
          • Advice and implementation of trademark disputes of a judicial, official and extrajudicial nature,
            • Trademark monitoring,
              • Preparation of license agreements.

                Trademark registration - We establish trademark protection, with you

                Marketing expenditure should contribute to the long-term success of the company. This is only guaranteed if it flows purposefully into developing the reputation of the company. Brands are the most important instrument.

                We help you to set up your brands by

                •  supporting you in the development of suitable designations,
                   
                • keeping an eye on the legal situation already during the creative process and thus speed up the process considerably,
                   
                • carrying out the necessary research on prior similar signs, and
                   
                • handle the registration process silently for you, namely

                • nationally and internationally, whether as an IR or Union trade mark.

                This is what you are looking for? Pick up the phone (+49 211 63 55 23 40) or send us a message to hello@franz.de. We will then attend your request without obligation and provide you with all the information you need to make a decision about our assignment.

                Would you like to receive more detailed information beforehand? There you go!

                Our service for trademark applications does not consist of filling out forms - you can do that by yourself. Rather, we support you with the development of corporate values and make a complex topic manageable from a business point of view. We consider your trademark application as part of your corporate strategy and believe, it is our task to first understand this strategy completely and, if necessary, to further develop it from a trademark perspective - only at this point it will be juridicial. The following rule applies: You determine the price of our services, because you determine the extent to which you use our services.

                We would like to give you an overview of our services below. Our pricing policy is also presented below.

                Steps to your trademark

                Your trademark application can be divided into four phases: the identification process including the determination of the goods or services protection is sought for, the research and risk assessment, the decision on the international scope of protection and the actual application procedure including the establishment of permanent trademark monitoring, if you wish so.

                The right name and the list of goods and services

                When you commission us for the first time, you have probably already found a specific term that you would like to protect under trademark law. This as awesome because we have a concrete starting point for our joint efforts. As a first step, we will examine your desired trademark to see whether it is even registrable as a trademark. This is not something that can be taken for granted. In particular, common expressions of everyday language or terms that are plainly descriptive of the goods or services to be protected are excluded from registration as a trademark. For some reason, football associations regularly provide beautiful negative examples - if you are interested in the details, take a look at one of our blog posts.

                This leads us to the second important question that needs to be clarified at this stage:

                In principle, trademarks only grant protection for specific goods and services that have to be specified in the application. Together with you, we set up a list of the goods and services your trademark shall grant protection for. This task is very important because the list can be limited with regard to certain terms later on, but it cannot be amended.

                Even at this stage, we conduct an initial risk assessment - and at the same time we keep taking a look at the relevant registers in order to determine whether third parties may have been quicker. If the way is clear, the list of goods and services will be more comprehensive; if there is a crowd around the chosen term, we will build your directory around the competition wherever possible to avoid collisions.

                Research in the registers of the trade mark offices

                A trademark application without a reasonable research for prior rights is of course possible, but not recommended. You risk to infringe better rights and may have to write off all the effort you put into the publication of your trademark - not to mention the fact that infringing other trademarks is also a criminal offence.

                Avoiding these difficulties is an essential part of our task.

                The effort you should put into this depends on the individual case: if you are establishing a trademark to protect the core of your company, a more time-consuming research is required than for a trademark that is intended for a one-time event, such as a major event or a company anniversary.

                Therefore, we first determine together with you which research effort is appropriate in the individual case, whereby costs and risk are placed in a reasonable proportion.

                Depending on the scope of the search required, we either carry it out ourselves or commission a specialised service provider on your behalf, whereby our lawyers have been successfully cooperating with the market leader in this field, Thomson Compumark, for years. In this case, too, the legal evaluation of the search is of course in our hands.

                As a result, you receive a risk assessment on the basis of which you make a decision about the scope and content of trademark protection. If a risk is once too high, we create - toghether with you - ways to reduce the risk - for example by adding additions, registering word elements that are subject to risk together with graphic designs (so-called word/figurative brands or including clarifying exclusions from trademark protection, so-called disclaimers.

                An important decision - the international scope

                Trademark protection is only granted for certain territories. If your market presence extends beyond Germany, you should consider to what extent and in which countries you also need protection.

                It is particularly easy to cover relevant markets with a Union trademark that offers protection for all countries of the European Union.

                However, it often makes sense not only to cover foreign markets, but also to obtain protection in the producing countries. Otherwise, a third party may, for example, obtain trademark protection in China and prohibit you from exporting goods produced there. Such an incident can have consequences that endanger the existence of the company.

                The instrument of choice in such cases is a so-called IR trademark (also called "international trademark"). A basic trademark is applied for, which may be a German trademark or an EU trademark, and an application is filed with WIPO (the World Intellectual Property Organisation, which is subdivided into the UN) to extend the application to third countries.

                We have the know-how to create the prerequisites for a successful extension at the time of filing the basic trademark application. An example: the Chinese Trademark Office only registers trademarks in connection with wholesale and retail services under certain conditions, which is common practice in Europe. We therefore already apply for your basic trademark in consideration of these conditions and thus ensure that the international extension runs smoothly.

                In the event of monopolies by foreign trademark offices, we have an established worldwide network of partnering attorneys who represent your concerns professionally. We take over the correspondence with our colleagues, so that you do not have to worry about the handling of your case.

                The handling of the application procedure and trademark monitoring

                Once all decisions have been made, we register the trademark for you and take over the correspondence with the offices. If there are any complaints - known as "query" in technical jargon - we will take care of them with the aim of receiving your application as comprehensively as possible.

                If the trademark is registered, you should maintain it - not only through intensive use and advertising, but also through protecting if from copycats who later want to register similar or even identical signs as trademarks. If this is noticed at an early stage, you can take effective action against it by means of very inexpensive opposition proceedings. If, on the other hand, you do not notice the application until later - for example, because you meet the competitor on the market - you will only be left with an action for cancellation of the foreign trademark, which is much more expensive.

                We therefore recommend that our clients set up continuous trademark monitoring. We place the monitoring of trademark registers as such in the hands of specialized service providers. If they report a possible violation, we evaluate it and get back to you with a proposal for a the next steps.

                Let's talk about money...

                You decide how much you want to pay - by specifying the scope of services you demand. The reason for this is that we always work on the basis of a time fee, which is a previously agreed hourly rate.

                Once your mandate has been accepted, you will receive the first advice free of charge: we tell you how much work we expect to do for your individual case. And we will stick to it - if you wish, we will agree upon a cap on the costs so you will not experience any nasty surprises.

                A simple national trademark registration can already be realised for 550.00 € excluding VAT - but as stated above, you and your needs determine what and how much we will do for you.

                Fees of the Trademark Offices

                For the processing of a trademark application by the trademark offices, fees arise.

                The fees for a national trademark application up to 3 classes of goods/services amount to 300.00 €.

                The official fees for a Union trademark application are from 850.00 € with one class of goods / services, a second class costs additional 50.00 € and every third further class is 50.00 €. We will counsel you, so the best selection of goods and services to register your trademark for is chosen.