Meaning and evaluation as long-term corporate protection
(also available as PDF under the category Downloads…)
Small and medium-sized companies in particular, who cannot consult their own legal department, have a hard time.
The jungle of legal norms, to be judged against the background of European directives and the complicated procedures of the offices, can be a deterrent. However, the underlying problem of trademark protection should nevertheless be taken seriously and not end in procrastination [1]. Only a professional trademark rights management defends the affected trademark rights sufficiently and comprehensively enough against unlawful interference. What such a system can or should look like is the subject of the following explanations.
1 Tasks of a trademark rights management
Every year, about 60,000 trademarks are registered at the German Patent and Trademark Office.[2] It is therefore not surprising that the DPMA does not carry out an examination with regard to correlation with an earlier trademark.[3] However, the possible consequences can be all the more serious, because this makes it possible for one and the same trademark to be registered for several trademark owners and for the protective rights to conflict with each other. In this context, it should be pointed out that the principle of priority applies in trademark law, according to which the older trademark rights predominate over the younger ones.[4] Thus, it only makes sense to seek professional assistance in trademark searches and trademark applications in order to avoid infringing third-party property rights and to provide the necessary legal security for your own trademark.
Once trademark protection has been obtained, the question of ongoing trademark rights management should be addressed in the following. [5] From the time of the conscientious trademark application, you as the trademark owner have taken on a new role and can, or even have to, defend your trademark externally. This is because a trademark is considered the “DNA of a company” [6] and is a central, intangible asset.
However, it also has a proven neuropsychological effect on both the product and the consumer. A well-known brand therefore influences the understanding of both and has an immanent power of attraction.[7] Meffert goes even further, however, and defines a brand as “an unmistakable image anchored in the psyche of the consumer (…)”[8].
This confirms that ideally, in addition to a comprehensive analysis that ranges from brand positioning to the continuous documentation of brand growth, measures such as so-called “employer branding” [9] should also be used to consolidate and further expand one’s own market position. However, legal aspects, especially professional trademark protection, are also indispensable components of successful trademark management in the long run. How such a protection can look like, will therefore be presented and worked through in the following in a simplified chronological order.
2 The Establishment Process
2.1 The trademark search
“Strong brands do not work through their awareness,
but by their ability to attract people”,
Klaus-Dieter Koch opened up [10].
If one reduces this statement to the meaningful core, the branding is therefore only about the necessary attraction. A brand can become attractive if it aligns its own conception with the needs of the current society. So it should embody health and sustainability, but also independence and individuality. The “Apple” brand, for example, meets these requirements. A bitten-in apple suggests sustainability, individuality and alternatively distinguishes itself from comparable signs.
The success of a brand is thus in a comprehensible way in a synallagma with the values of the target group. [11] The existing and necessary procedures for target group and market analysis can be found sufficiently in relevant marketing literature. In the present discussion, however, the focus should be on the legal handling of a brand.
From the point of view of trademark law, it must therefore be ensured in the course of trademark searches that the trademark found does not already exist (even in a similar form). Only the abstract brandability according to §3 MarkenG does not necessarily correspond to the concrete suitability for distinguishing according to §8 II 1 MarkenG [12] Following this recommendation is, however, not so easy for the layman. Although both the DPMA, as well as the OHIM [13] and WIPO [14] offer possibilities to search for a possible existence or similarity of the desired trademark, practice shows, however, that legal assistance is not only quicker and less complicated, but also legally more reliable.
2.2 The trademark application
The registration of a sign as a trademark is not the only legal ground for trademark protection. Even the use of a sign in the course of trade [15] or notorious reputation of the trademark [16] can sometimes lead to trademark protection. However, a registration is already recommended because the latter two criteria are quite unspecific and require a subsequent determination by a court. A registered sign, however, creates (ideally) legal clarity and a registered “title” that you can rely on against competitors. This is because the protection of a so-called registered trademark results, according to §4 No.1 MarkenG, from the registration as a sign in the trademark register maintained by the DPMA. [17] The current fee schedule can be viewed on the relevant information pages of the institutions.
On the various internet sites of the offices you will find very useful and comprehensive information on trademark applications and the respective examination procedures.
For example, anyone who is a natural person, a legal entity or a partnership with legal capacity is entitled to file a trademark application. The application itself can sometimes be filed online or on paper [18] However, not all signs can be protected as trademarks. In particular, signs that merely define or describe the essence of a product (“pears” / “air travel”) are excluded from the outset. [19]
If the trademark is in principle registrable, it must be grouped into the 45 existing classes on the basis of the Nice Classification.[20] Recently, by the way, these classes have also been harmonized throughout Europe in the course of the Trademark Law – Directive (MRR)[21] and, following the judgment of the ECJ in the case “IP-Translator” (19.06.12, C-307/10), have been re-examined in a formal sense.[22] Nevertheless, even trademark registration causes understandable difficulties for persons who are not familiar with the subject matter. It must be taken into account:
From now on, the scope of protection of the trademark is determined by the grouping and classification. It practically forms the foundation of all your further (construction) projects. It is therefore important to carry out this step carefully and to avoid (lasting) mistakes.
2.3 After registration of the trademark
In addition to a conscientious trademark search prior to the application and the actual trademark application itself, a “dilution” of your trademark must be countered during the trademark use. The purpose of a trademark is to exclude others from using or labelling their goods/services, to counteract trademark piracy and to give the customer a promise of quality by means of a trademark.
In the relevant literature there is therefore an increasing number of references to having the market for the trademark in question professionally monitored. [23]This can only be advocated. Because only professional brand monitoring ensures long-term business success. To understand this, it is therefore necessary to explain what is meant by trademark monitoring and to what extent the radiating effect of the various dimensions can be extended.
First of all, brand monitoring means the monitoring of the addressed market, as well as the analysis of newly registered trademarks for correlation with one’s own. It is advisable to commission the monitoring of the relevant trademark registers from a company or law firm specializing in trademark research and monitoring. However, the necessity of such a monitoring arises – as already mentioned – from the threat of “dilution” of one’s own trademark by new applications. The following example will illustrate what this means:
Case 1: The dutiful entrepreneur A has the word-picture trademark “Perchal” registered with the DPMA by a specialized law firm and from now on marks his high-quality medical devices with this trademark. A short time later, medical devices of the competing company B appear on the market under the name “Perschal”. As it turns out, B had also applied for this trademark (after A). A does not notice this at first. However, as it turns out, B has less demands on the quality of his products and has them produced “cheaply” abroad.
It is obvious that entrepreneur A would have done well to exclude any possible likelihood of confusion from the outset. If the public addressed by the mark is confronted with similar or even identical marks in the long term, the distinctive character of the mark will be reduced or (in the worst case) even completely lost,[24] and the promise of quality you have made will be severely undermined. This, in turn, not only results in a loss of sales of your product, but also the goodwill [25] of your company could suffer permanent damage [26].
The necessity of an examination of the content of newly registered trademarks therefore inevitably arises from the otherwise threatening sword of Damocles in case of non-supervision. The urgency of such continuous market surveillance can also be derived from these possible similar consequences. From these considerations, a two-part market surveillance obligation for every property right owner results as the basis of a professional trademark management:
1) Segment monitoring and control of the existing competitor trademarks for trademark infringements.
2) Monitoring the relevant trademark registers for correlating signs.
3 The trademark protection
3.1 Scope of trademark protection
The scope is based on the classification made in the trademark application, as already mentioned above. However, this has no significance for the assessment with regard to a similarity or possible likelihood of confusion of the goods or services. [27] In principle, the registration of a sign provides absolute protection. [28] However, what this means for the individual case will be explained in the following.
The keyword in this context is likelihood of confusion. Such a likelihood exists if the word sign or the word/picture mark is identical or similar and this applies equally to the goods or services or if the targeted public establishes an economic connection between the marks.[29] This can be given by phonetic similarities as well as by graphic, literary or olfactory similarities.
The German Federal Supreme Court, for example, has ruled that a jumping poodle as a T-shirt print resembles the puma of a well-known sportswear manufacturer and that there is still a likelihood of confusion due to the proximity of the industry.[30] However, there does not necessarily have to be a likelihood of confusion between two signs in the same or similar industry if the signs are similar in some respects. This is proven by the case in which the Federal Court of Justice denied a similarity of the Letter B in the case of Bogner and Barbie. [31] “Limited”, or merely original protection is granted to trademarks which are based on merely descriptive characteristics, [32] or which are considered to be general in nature. [33] The protection of trademarks is limited to the following
According to the German Federal Supreme Court, there is an “interdependence between the factors to be taken into account, in particular the similarity of the signs and the similarity of the goods or services designated by them, as well as the distinctiveness of the earlier mark”[34] This means that despite the lack of similarity of goods, an increased similarity of the correlating signs may nevertheless give rise to a likelihood of confusion. The same applies equally to reversed constellations.
Such formulated interdependencies, however, create little legal certainty for a layperson and appear to be arbitrary. Especially in doubtful cases it is therefore recommended to consult a specialized lawyer.
Furthermore, the extent of trademark protection also depends on the dilution of the trademark that has already occurred. If a registered sign is continuously torpedoed by competitors, it loses its distinctiveness and the scope of protection of a trademark is reduced.[35] From this it can be concluded that even a professional trademark law management can maintain validity and positively influence the scope of trademark protection.
3.2 Instruments of Trademark Protection
So it seems obvious that in the course of this continuous market surveillance, violations of one’s own property rights should be exposed. But what possibilities does the law reveal in the event of such a violation?
1) Defence against a registered trademark:
A trademark that is in conflict with §§3,7 or 8 MarkenG can be cancelled on application for nullity [36], §50 MarkenG.
However, such a concept is misleading in this respect because the trademark has legal effect as long as it is registered, despite its “nullity” [37].
Also due to opposing older rights a deletion can take place, §§51,55 MarkenG. The owner of a priority older trademark right can file an opposition against the registration of a younger one within three months after publication according to §42 MarkenG. Once this period has elapsed, only the cancellation of the trademark can be prosecuted by civil action [38].
A trademark may also expire. If, for example, the person who creates a monopoly on the use of a trademark by registering it does not use the sign, his right expires after 5 years of non-use, §49 MarkenG.[39] A further condition is also that the trademark is used in a customary and reasonable manner. For example, the OLG Hamm has found the use of a figurative trademark for goods on price tags to be insufficient. [40] Cancellation due to expiration is also only possible upon application. [41]
2) Defence against an unregistered trademark:
Since use or notoriety marks can also lead to protection of the signs [42], it may be necessary to take action against an unregistered mark. From this situation alone it can be concluded that an opposition or even a request for cancellation would make little sense.
After the owner of a trademark has identified an infringement of his property right, he may first approach the infringer himself and draw his attention to the infringement. This seems fair and considerate, in reality the infringer denies or denies the infringement in most cases and continues to infringe the rights. It is recommended not to accept trademark infringements without further ado and to use the necessary legal institutions quickly. Above all, in order to maintain your own market position and to eliminate the risk of repetition.
Probably the best known means is a warning. The sense and purpose of such a warning is to give the person acting illegally the possibility of an out-of-court settlement of the dispute before an expensive legal procedure. The lawyer’s fees must be paid by the person being warned, since the prevailing opinion is that it is in his interest to avoid the court costs. The fact that numerous warning waves [43] in the meantime give in principle cause for criticism and distrust cannot be denied however and also our Kanzlei cares for again and again victims of such machinations. Despite its bad reputation, however, the warning notice is a necessary means of defending against legal violations and it often avoids lengthy and expensive court proceedings.
Case 2: Entrepreneur U sells batteries on Amazon under the registered brand name “Evolto”. In order to make its own offers more attractive, competitor K also marks its no-name products with the name “Evolto” using adhesive strips printed out by itself.
In such cases, it is advisable to report the infringement by means of a warning and to assert a claim for injunction. This is intended to prevent the hitherto continuous infringement of the property right. A renewed danger of repetition can be eliminated by issuing a declaration of discontinuance with a penalty clause. The infringer thus undertakes to respect the property rights in the future and to pay a substantial contractual penalty in the event of a renewed infringement. This results in a satisfying function for the owner of the property rights and a deterrent function for the infringer.
In fact, sometimes the extra-judicial settlement attempts are not sufficient and our clients’ claims must be asserted in court. For trademark law, the ordinary courts are responsible and since trademark law regularly deals with amounts in dispute in excess of 50,000 euros, the action is assessed in the first instance by the regional court, §23 No.1 GVG. Therefore, according to §78 i ZPO, self-representation is not possible without admission to the bar and is also not reasonable due to the manifold procedural possibilities and extensive subject matter [44].
4 Conclusion:
A professional trademark rights management starts already before the trademark registration and includes both a careful research before the application, a two-part control and evaluation procedure, and finally also the vehement defense in case of infringements by third parties.
Trademark protection is not easy, but it is worthwhile for you and your company in the long run. Because it supports customer loyalty, defends the market position and promotes the “goodwill” of your company. This makes it all the more important to have a professional partner at your side, ideally a law firm specializing in trademark law that understands you and reliably supports you in all the difficult tasks.
Get in touch with IP-Kneller and learn more about our numerous offers without obligation.
1] Prokrastination is the putting off of unpleasant work; a detailed discussion can be found in Rustemeyer/Callies, Aufschieben, Verzögern, Vermeiden, Einführung in die Prokrastination, Koblenz-Landau 2013.
2] Freundt, Entwicklung und Bedeutung der Markenemotionalisierung in: Emotionalization of brands: Inter-industrial comparison of the relevance of emotional brand images for consumer behavior, ed.: Christoph Burmann and Manfred Kirchgeorg, Diss. HHL, p.7, Leipzig 2006.
3] Runkel in: Hoene et al., AnwaltFormulare, Gewerblicher Rechtsschutz, Munich 2013, Abschn.9, 2. part, Rn.247; Marks – An information brochure on trademark protection, downloadable on the homepage of the DPMA under: http://www.dpma.de/docs/service/veroeffentlichungen/broschueren/marken_dt.pdf .
4] Hildebrandt/Henning/Weichhaus-Wandtke, Competition and Advertising Law, Berlin 2011, 2nd ed. Vol. 3, Chapter 5, §1, marginal 16.
5] Ahlert/Kenning/Schneider, Brand Management in Retail, Section 11, No. 1.2.2.
[6] The term “DNA of a company” originates from: Enzelmüller; for more details see Enzelmüller: Marken sind die DNA eines Unternehmens, Berlin 2012.
7] See Scheier/Held, Was Marken erfolgreich macht: Neuropsychology in brand management, 3rd ed., Freiburg 2012, p.195
8] Meffert, Marketing, 2000, p. 847, also Fournier, Consumers and their Brands 1998, p. 345
9] Detailed information in: Enzelmüller, Brands are the DNA of a company, Berlin 2012, Nr.9.
10] Cook, attraction is cool – in 7 steps to the attractive mark, 2007, S.11.
[11] Differently for instance: Scheier/Held, What makes brands successful: Neuropsychology in brand management, 3rd ed., Freiburg 2012, p.248ff., according to which the success of a brand should primarily depend on the company and not on knowledge about the consumer.
Note: However, such a view cannot be followed in principle, since buying behavior is already by nature ego-driven and can only be indirectly externally driven.
12] Fuchs-Wissemann in Heidelberger Kommentar, Bd.1, 3.Aufl., §3, No. I, Rn.1 with further Vw. on BGH GRUR 2001, 334, 335, – forklift trucks.
13] OHIM = Office for Harmonization in the Internal Market, responsible for trademark applications throughout the EU.
14] WIPO = World Intellectual Property Organization, responsible for trademark applications worldwide.
[15] BGH GRUR 2009, 783 et seq., marginal 22 – UHU; often referred to in the literature as a so-called utility mark;
16] Sog. Notority mark; the protection results from Art.6(bis) PVÜ, §4 No.3 MarkenG.
17] Ekey in Heidelberger comment, Bd.1, 3.Aufl., §4, Rn.15 with further Vw: BGH GRUR 2010, 1103, marginal 19 -Pralinenform II; GRUR 2005, 427 f. -Lila Schokolade; OLG Köln GRUR RR 2013,213 f.-Dictionary – Yellow; and others.
18] Source: Homepage of the German Patent and Trademark Office (2015)
19] fox white man in Heidelberger comment, volume 1, 3.Aufl., §3, No. I, Rn.1 with further Vw. on BGH MarkenR 2006, 213, 214 – shearing head
20] SPECIAL PRINT from Patent and Design Gazette, Notification 10/01 of the President of the German Patent and Trade Mark Office on an amendment of the official list of recommendations for the drafting of lists and goods/services for the registration of trade marks (1997 edition) of 28 Nov. 2001 -Foreword-; classification also available at: http://www.dpma.de/docs/service/klassifikationen/nizza/nizza_10-2015_anleitungfuerbenutzer.pdf .
21] Wandtke, Competition and Advertising Law, Vol. 3, 2nd ed. Berlin 2011, Chapter 5, §1, marginal no. 13 with reference to the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) in the version of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, OJ 2008 No L 299/25.
[22] In the IP-Translator case, the ECJ had to deal with the question of how concretely the classification of goods and services had to be formulated in order to provide the necessary clarity and unambiguity. In the course of this ruling, 11 of the terms were considered too vague.
23] Runkel in: Hoene et al., AnwaltFormulare, Gewerblicher Rechtsschutz, Munich 2013, Abschn.9, 2nd part, Rn.221; Enzelmüller, Markenüberwachung sichern den Unternehmenserfolg, in: Brandmanagement-Leitfaden: Professional Brand Management for Companies, Potsdam 2013.
24] Runkel in Hoene et al., AnwaltFormulare Gewerblicher Rechtsschutz, Munich 2013, para. 9, 2nd part, marginal 220.
25] Goodwill is the goodwill / the “good” reputation of a company
26] Cf. Simon, Goodwill und Marketingstrategie, Wiesbaden 1985, p. 20
27] SPECIAL PRINT from Patent and Design Gazette, Notice 10/01 of the President of the German Patent and Trade Mark Office on an amendment to the official list of recommendations for the drafting of lists and goods/services for the registration of trade marks (1997 edition) of 28 Nov. 2001 -Foreword -.
28] Runkel in Hoene et al., AnwaltFormulare Gewerblicher Rechtsschutz, Munich 2013, para.9, 2nd part, marginal 224.
29] BGH in GRUR 2013, 833
30] BGH, 02.04.2015, I ZR 59/13
31] BGH in GRUR 2012, 930
32] BGH in GRUR 2013, 833 para. 33 – D/W; BGH in GRUR 2010, 729 para. 27; BGH in GRUR 2008, 1002 para. 26
33] Matthes, comment on BPatG, 25.11.2009, 25 W (pat) 35/09 (DPMA) in GRUR-Prax 2/2010, 32.
34] Federal Court of Justice (BGH) in GRUR 2010, 729
35] Runkel in Hoene et al., AnwaltFormulare Gewerblicher Rechtsschutz, Munich 2013, para.9, 2nd part, marginal 220.
36] §3 MarkenG regulates formal requirements for a sign protectable as a trademark; §7 MarkenG defines requirements for the ownership of trademarks; §8 MarkenG defines exclusion criteria and obstacles to protection.
[37] Runkel in Hoene et al., AnwaltFormulare Gewerblicher Rechtsschutz, Munich 2013, para.9, 2nd part, no. marginal no. 227, in which also the reference that the effect ceases to apply retroactively if the trademark is cancelled; see also BGH in NJW-RR 2014, 557
38] Runkel in Hoene et al., AnwaltFormulare Gewerblicher Rechtsschutz, Munich 2013, para.9, 2nd part, marginal 246
39] This also applies to Berlit, note to BGH 18.06.2009, I ZR 47/07 in GRUR-Prax 2/2010, 31
40] Schoene; Note to OLG Hamm 17.11.2009, 4 U 88/09 in GRUR-Prax 2010, 34
[41]
42] BGH GRUR 2009, 783 et seq. on, marginal no. 22 – UHU on the utility mark; The protection of a notoriety mark results from Art. 6(bis) Paris Convention for the Protection of Industrial Property (Paris Convention), Geneva 1990, available at: http://transpatent.com/archiv/152pvue/pvue.html ; §4 No.3 MarkenG.
43] In this sense, it is worth noting the numerous waves of copyright warnings in the music and film industry (recently the Redtube affair), but also the waves of warnings under competition law due to the lack of an imprint or similar, which clearly pursue primarily pecuniary goals.
44] However, an extensive presentation is provided by Runkel in Hoene et al., AnwaltFormulare Gewerblicher Rechtsschutz, Munich 2013, para.9, 2nd part
