Trademark Law

Trademark Registration, Cease-and-Desist Letters & Legal Protection

Trademark law governs the protection of distinctive signs, encompassing the registration of word marks, figurative marks, and other types of trademarks. It also outlines legal remedies in cases of trademark infringement, such as enforcing cease-and-desist claims or seeking damages through warning letters, legal actions, or preliminary injunctions. Beyond establishing legal foundations for trademarks, this area of law also protects business names, geographical indications, and work titles. The primary legal frameworks include the German Trademark Act (MarkenG) and the European Union Trade Mark Regulation (EUTMR), supplemented by the Implementing Regulation (EUTMIR).

Trademark law enables businesses to distinguish their goods and services from competitors by registering unique signs. This differentiation helps companies solidify their market position, enhance brand image, and create intangible assets with inherent value. Additionally, trademark owners can prevent unauthorized use of their trademarks and seek monetary compensation for infringements.

Need a Trademark Attorney?

If you require assistance with trademark matters, our specialized attorneys are here to help. Contact us for a free initial consultation via phone at 040 / 7344086-0, WhatsApp, email at mail@sbs-legal.de, or through our contact form at the bottom of this page.

Acquiring Trademark Protection

Trademark protection is typically obtained by filing an application with the relevant authority, such as the German Patent and Trade Mark Office (DPMA), the European Union Intellectual Property Office (EUIPO), or the World Intellectual Property Organization (WIPO) for international registrations. In some cases, protection can also arise from the use of a sign that has achieved significant recognition or market presence.

Important Considerations

During the COVID-19 pandemic, the EU has provided support for trademark applications. It's also crucial to understand the implications of Brexit on trademark rights. EU trademarks no longer cover the UK, necessitating separate registrations there. Conversely, UK trademark holders can no longer oppose EU trademark applications as they could before Brexit.

Exclusive Rights of Trademark Owners

Trademark law grants owners exclusive rights, as stipulated in Section 14(1) of the German Trademark Act. This includes the right to use the trademark and to prohibit others from using identical or similar signs for related goods or services, thereby preventing confusion or association between different marks.

Trademark rights can be established at national, European, and international levels. When registering a trademark, it's essential to define the geographical scope to ensure comprehensive protection.

Liability for Trademark Infringement

In the digital age, enforcing trademark rights and defending against unwarranted infringement claims are increasingly important. Not only direct infringers but also third parties can be held liable under certain circumstances. For instance, the European Court of Justice has examined whether platforms like Amazon can be held responsible for trademark infringements by third-party sellers.

Understanding Trademarks and Their Forms

A trademark represents the set of perceptions associated with a brand name or symbol, helping consumers identify and differentiate products or services. Common forms include word marks (text), figurative marks (logos), and combinations thereof. Other types encompass numbers, sounds, 3D shapes, colors, and packaging designs. Courts have deliberated on unconventional trademarks, such as the sound of a can opening or the specific gold hue of Lindt's chocolate bunnies.

Usage Rights in Trademark Law

Trademark owners can use their registered marks on products, packaging, advertising materials, websites, and online marketplaces. They may also grant licenses to third parties, allowing controlled use of the trademark in specific regions or for particular purposes. This licensing can offer economic and competitive advantages while the owner retains overall control.

Assessing Likelihood of Confusion and Need for Availability

Before applying for a trademark, it's vital to check for potential conflicts with existing trademarks. This involves conducting thorough searches in relevant databases to avoid costly disputes. Additionally, certain terms may be deemed too generic or descriptive to qualify for trademark protection, as seen in the EUIPO's 2020 decision regarding "CBD."

SBS LEGAL – Your Trademark Law Firm in Hamburg

Whether you're looking to register a trademark, draft a license agreement, address an infringement, or seek damages, SBS LEGAL is your trusted partner. Our experienced attorneys provide expert and commercially focused advice on all aspects of trademark law. We look forward to assisting you.

Need legal Advice in Trademark Law?

Have questions about one of the topics above or need legal advice from a trademark law attorney? Then you’ve come to the right place. Get in touch—we look forward to helping you succeed.

The initial consultation with SBS LEGAL is always free of charge.