Services at a Glance
What is trademark law?
Trademark law is a central instrument of intellectual property protection. It protects signs – words, logos, shapes, colours or combinations thereof – against unauthorised use by third parties. In Germany, trademark law is governed by the Trademark Act (MarkenG); at European level, the EU Trademark Regulation (EUTMR) applies.
A registered trademark gives its owner the exclusive right to use the sign for the registered goods and services. This right initially applies for ten years and can be renewed indefinitely – making it one of the most durable assets a business can build.
Trademark registration – national, EU-wide and international
Protection of a trademark begins with the right strategy before registration. The right approach depends among other things on the nature of the business, the brand name, the target markets and the budget:
- German trademark (DPMA): Protection within Germany, suitable for businesses operating exclusively in Germany.
- EU trademark (EUIPO): Offers significant advantages over the German national trademark and is suitable for businesses with at least planned activities in multiple EU countries. The EUIPO offers a fast-track procedure that can considerably shorten processing times.
- International trademark (WIPO/Madrid): Filed via the World Intellectual Property Organisation (WIPO), offering trademark protection in individual contracting states through the Madrid System based on a home registration. Alternatively, national trademarks can be registered in individual countries, e.g. for markets such as the USA, China, the UK, Canada or Switzerland.
Before every application the search comes first. An identity search provides initial orientation on registration density in the relevant market segment. Since trademark infringement arises from likelihood of confusion due to similar signs, a professional similarity search before filing is essential.
The most common problems in trademark registration arise from conflicts with pre-existing earlier marks or from choosing descriptive terms that cannot be protected. A preparatory consultation and comprehensive similarity search before filing help to avoid these pitfalls.
The strategic selection of the goods and services list is also important, as it determines the scope of trademark protection.
Your trademark is being infringed – enforcement of rights and warnings for trademark infringement
A registered trademark is only as strong as its defence. Those who tolerate trademark infringement risk not only economic harm but in the long run the trademark protection itself.
In cases of trademark infringement, whether through identical use e.g. in counterfeiting or advertising, likelihood of confusion due to similarity, unauthorised licensing or trademark abuse in e-commerce, the following instruments are available:
- Cease-and-desist letter – extrajudicial first response with a clear deadline
- Injunction – for urgent cases where swift action is decisive
- Action for injunction, information and damages – when extrajudicial steps do not achieve the goal
- Customs seizure – in cases of product piracy and cross-border trademark abuse
Clients have been represented in trademark disputes of varying scale since 2010, from targeted cease-and-desist letters to court proceedings.
Received a warning letter? Deadlines in warning letters are short – typically 7 days from dispatch. A hastily signed cease-and-desist declaration can go far beyond the specific case and be permanently binding.
Warning letters must first be assessed for their merits. Relevant questions can include:
- Is the trademark cited in the warning actually protectable and registered? Is it in use?
- For similar marks: is there actually a likelihood of confusion?
- Is the alleged infringement provable?
- Is the claimed value in dispute appropriate? Are there countervailing rights or earlier own signs?
Depending on the outcome, we either submit a modified cease-and-desist declaration, reject the claims, or file a counter-warning and bring a negative declaratory action.
Opposition and cancellation proceedings
If a trademark is registered against which a protected sign with earlier rights exists, an opposition can be filed within three months of publication of the registration. Proceedings are conducted before the respective office (DPMA or EUIPO) and require well-founded arguments that often centre on likelihood of confusion between similar signs, priority and use.
In addition, older trademarks that violate absolute grounds for refusal or have not been used can be removed from the register by cancellation applications. We represent you both as applicant and in defending your existing trademark rights.
License agreements and trademark assignment
A registered trademark is not merely a protection right – it is a commercial asset that can be licensed, assigned or used as collateral. We draft license agreements (exclusive and non-exclusive), sublicense arrangements and assignment and coexistence agreements that protect your interests in the long term.
We pay attention to trademark-specific requirements such as the licensor's quality control obligations, the treatment of improvements and the correct recordal of transfers at DPMA or EUIPO.
EU Trademark Quick Check
Check in seconds whether a term is already registered as an EU trademark. This quick check gives you a first overview – it does not replace a full legal search.
Source: EUIPO. This tool checks EU trademarks (EUTM) only and does not replace a professional trademark search. National marks (DPMA), similarity searches and other IP rights are not covered.