Trademarks are more than the mere name of goods or services. They inform consumers of the origin of products and guide them in their choice between several providers on the market.

Trademarks also sum up a company’s sales message and thus encapsulate its reputation gained over many years of advertising and product management in a right that is measurable in economic terms.

To be able to fulfil this function, trademarks must be protected by law. They have to be invented, filed and registered by someone with expert knowledge and renewed whenever applicable. With market success at the latest, strategies on legal trademark management and expansion of the geographic scope of protection via international registration will become an issue. Simultaneously you might be required to defend your trademark – either against holders of older rights opposing your registration or against infringements by others using identical or similar marks, thus posing danger of confusion.

Our office is highly familiar with and deeply involved in trademark law. We register trademarks with the German Patent and Trademark Office (DPMA) on a regular basis as well as the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO). In addition, we are constantly involved in trademark litigation before courts in all of Germany.

Where is the added value in hiring a competent lawyer to guide you through the registration procedure? Establishing a strong trademark that will be able to survive conflicts already starts before handing in the registration application. First, the interests of the client and potentially opposing third party rights need to be investigated to determine the required content of the application.

Our advisory work frequently shows that clients underestimate the requirements set by the patent and trademark authorities regarding distinctiveness on the one hand, while they only pay attention to a small segment of the varieties that are possible with the subject matter of their application on the other. Against this backdrop, it is not surprising that registration services with no or only minimal legal advice, which leave these essential decisions to the client, cause a far higher number of rejections and subsequent problems like opposition proceedings and trademark suits than a well-prepared trademark registration.

Whenever third parties file opposition against the registration of a trademark, the registration procedure automatically leads to opposition proceedings that - like court proceedings - require the submission of formal written statements explaining the factual situation and bringing forward legal arguments. It goes without saying that the quality of legal advice is of material significance to the outcome of such opposition proceedings.

In recent years, we were able to successfully settle several trademark disputes involving well-known names in favour of our clients.

As can be easily seen from the amounts in controversy defined by the courts, trademark disputes have considerable economic significance for the companies involved. A change of company name, discontinuation of a product line or a new advertising campaign are not only associated with a great amount of work, but a heavy cost burden too. Therefore, trademark suits are often fraught with strong emotions.
Claiming alleged arbitrariness on the part of the courts in trademark suits would be oversimplifying the matter. In order to concentrate trademark issues in a specific court, trademark disputes are in Germany allocated to highly specialised courts pursuant to Section 140 (2) Trademark Act (MarkenG). One can therefore assume that these courts understand their business. Whoever wants to interact with these courts at eye level must distinguish him or herself by submitting a clear statement of facts and a sound, comprehensible presentation of the legal circumstances.

This describes our approach to trademark suits and handling of the warning letter procedure preceding the actual suit. If you entrust us with your case, you can rest assured that our course of action is well-founded and exact down to the last detail. Moreover, as we are aware of the urgency in most trademark matters, we place special emphasis on speedy processing of the cases and enforcement of our clients’ claims.