Terms of Engagement – Trademark Services

Metzler Legal, Rechtsanwalt Jacob Metzler, Friedrichstraße 94, 10117 Berlin

§ 1 Scope

These terms apply to all mandates concerning the filing and examination of trademarks at the European Union Intellectual Property Office (EUIPO) and the German Patent and Trade Mark Office (DPMA), as well as to mandates for representation as an EU Trademark Representative pursuant to Articles 119, 120 EUTMR. Instructions may be given via metzler-legal.de, by email, or by telephone. The scope of services is defined by the package descriptions on the website. The client's own general terms and conditions do not apply.

§ 2a Scope of Services – EUIPO Trademark Filing

The subject matter of the engagement is the agreed activity, in particular similarity search, risk assessment, and trademark filing. The achievement of a specific result, in particular the registration of a trademark, is not owed. Not included is representation in the event of a threatened refusal or an opposition filed by a third party, unless the Vollschutz package has been commissioned or a separate agreement has been made.

The Basis package includes an identity search in the EUIPO register for one class, as well as filing and receipt of official correspondence. The Search & Filing package additionally includes a similarity search and legal assessment for up to three classes. The Vollschutz package additionally includes responding to EUIPO refusal notices and unlimited official correspondence during the filing procedure.

EUIPO official fees are not part of the firm's professional fee. They are invoiced separately and remitted directly to the EUIPO.

§ 2b Scope of Services – DPMA Trademark Filing

The subject matter of the mandate is the agreed activity, in particular identity or similarity search, legal assessment, and trademark filing with the DPMA. The achievement of a specific result, in particular the registration of the trademark, is not owed.

The Basis package includes an identity search in the DPMA register. The Search & Filing and Vollschutz packages additionally include a similarity search in the DPMA and EUIPO registers.

Not included is representation in the event of an objection raised by the DPMA, unless the Vollschutz package has been commissioned or a separate agreement has been made. The Vollschutz package includes responding to office actions (e.g., due to lack of distinctiveness or a need to keep the sign free for general use).

Not included is representation in opposition proceedings following registration. This must be commissioned separately.

DPMA official fees are not part of the firm's professional fee. They are invoiced separately and remitted directly to the DPMA.

§ 2c Scope of Services – EU Trademark Representative

The subject matter of the mandate is to act as professional representative of the client before the EUIPO pursuant to Articles 119, 120 EUTMR, where the client has neither domicile nor seat nor a real and effective industrial or commercial establishment in the European Economic Area.

Representation includes receiving and forwarding official correspondence and communicating with the EUIPO in the course of the pending proceedings. Not included are search, risk assessment, substantive review of the application, or representation in opposition or objection proceedings, unless separately commissioned.

The application itself must already have been filed, or must be commissioned separately at the same time; the representation service presupposes an existing or concurrently filed application.

§ 3 Express Processing

For an additional fee, express processing can be booked. This covers the firm's own processing of the engagement within 24 hours (business days, Monday to Friday). Without express processing, the firm's standard processing time is 2 to 5 business days. Express processing relates exclusively to processing by the firm; the time required by the DPMA or EUIPO until registration of the trademark is unaffected by this and lies outside the firm's sphere of influence.

§ 4 Similarity Search and Risk Assessment

The similarity search covers a search for orthographically similar marks in the EUIPO register via TMview. The search is based on the Levenshtein algorithm.

Based on the search results, a risk assessment is prepared regarding the registrability of the sign. It reflects the state of the register at the time of the search and does not anticipate the examination decision of the EUIPO.

A trademark application always carries the risk that third parties may file an opposition or send a cease-and-desist letter following publication. This may give rise to substantial costs. Opposition proceedings must be commissioned separately.

If the client decides against filing following the search, the fee attributable to the search and risk assessment remains due. For the Search & Filing package, this portion amounts to €300 net. Upon request, a second search for an alternative sign will be carried out once at no additional charge, provided the client refrains from filing the original sign.

The similarity search in the DPMA register is based on the publicly accessible DPMAregister database, supplemented by TMview for the EUIPO register.

The similarity search and the risk assessment based on it are carried out using state-of-the-art search tools (in particular TMview, DPMAregister) and an algorithmic similarity comparison (Levenshtein distance). The client is expressly advised of the following limitations of the search: the algorithmic comparison primarily captures visual/orthographic similarities; phonetic and conceptual similarities are checked on a supplementary basis but not fully automated. Only registered and applied-for trademarks in the searched registers at the time of the search are captured — older rights without a register entry are not captured, in particular company names, well-known marks, and other unregistered trademark rights. Recently filed marks that have not yet been published may not yet be captured. The risk assessment reflects a professional evaluation at the time of the search, does not replace the examination decision of the competent authority, and does not exclude the risk of an opposition or a cease-and-desist letter from the holder of older rights not captured by the search.

§ 5 Fees and Payment

All prices shown on the website are net fees plus applicable VAT. All fees are due upon invoicing and payable immediately. No right of withdrawal applies. This applies equally to mandates concerning DPMA filings and to the activity as EU Trademark Representative.

§ 6 Client Cooperation

The client is required to provide all information necessary for the execution of the engagement in a timely manner. In particular, current contact details and any changes to the trademark owner's particulars must be communicated in order to maintain trademark protection. If the firm is unable to reach the client due to outdated contact details, it is under no obligation to renew the trademark or take any other steps to maintain protection. These cooperation obligations apply equally to mandates concerning EUIPO and DPMA filings, as well as to the activity as EU Trademark Representative.

The client is required to grant requested approvals, in particular regarding the list of goods and services, and to make requested payments of official fees and advances, within the deadline communicated by the firm. Delays may result in missed official deadlines and the loss of trademark protection. The firm is not liable for any disadvantages arising from the client's delayed cooperation.

§ 7 Liability Toward Third Parties

The mandate is carried out exclusively for the client. Rechtsanwalt Metzler assumes no liability or responsibility toward third parties, unless they are expressly included within the protective scope of the mandate by written agreement.

§ 8 Communication Channels

Unless expressly agreed otherwise, communication between Rechtsanwalt Metzler and the client takes place by email and/or phone using the contact details provided by the client. The client is advised that unencrypted email communication is not protected against access by unauthorized third parties.

§ 9 File Retention and Destruction

Files are retained after the mandate ends in accordance with the statutory retention periods and are then destroyed.

§ 10 Attorney Confidentiality and Data Protection

All information provided by the client is treated confidentially. Rechtsanwalt Metzler is bound by statutory attorney confidentiality. Details on the processing of personal data can be found in the Privacy Policy.

§ 11 Exclusion of Consumer Transactions

The offer is directed exclusively at business customers within the meaning of § 14 BGB; no contract is intended to be formed with consumers. By placing the order, the client expressly declares that they are acting as a business (see the corresponding notice on the order form). If the client actually acts as a consumer contrary to this declaration, the client indemnifies Rechtsanwalt Metzler against all claims and disadvantages arising from that inaccurate declaration.

§ 12 Final Provisions

These terms are governed by German law. Place of jurisdiction is Berlin, Germany. These provisions apply equally to mandates concerning EUIPO and DPMA filings, as well as to the activity as EU Trademark Representative.