Development of trade mark law

The term brand law summarises a series of signage rights which all have a similar effect but which have developed differently.  These rights include brands in the narrow sense, company identifiers and work titles.  Rights associated with company identifiers and work titles are generated exclusively through use.  Right to a brand can be acquired either through use or through formal notification and registration with the appropriate authority.  By contrast with a company identifier or a work title where the right arises and has effect merely by being used, a brand which is not notified must first acquire validity through use before an effective right can be asserted.

Inasmuch, it is advisable not to opt for unprotected use over many years until validity under brand law is acquired, but to follow the rapid route of formal brand notification with the appropriate authority.  When a brand is registered in this way, it becomes effective and its validity can be enforced.

Eligibility for trade mark status

Essentially, all signs which can be differentiated in relation to the goods/services they are intended to identify and which are not subject to a reservation exemption are eligible for trade mark status.  Thus, there are word brands, image brands, audio brands, colour brands and various combinations.  Exclusions include signage which constitutes a purely descriptive or defining indication for the goods/services they designate, or for example also geographical indications.

National/international

In Germany, trade marks can be established via three different systems.  For instance, it is possible to notify a national trade mark with the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt – DPMA) which provides protection in Germany.  Such national systems can be found in virtually every country on earth.  It is also possible to notify a Community trade mark in the system organised by the Office for Harmonisation in the Internal Market (OHIM) in Alicante.  A third system is offered by the Madrid Agreement for the International Registration of Marks and its Protocol.  This Agreement and Protocol offer the possibility of extending a basic national trade mark or a Community trade mark very simply to more than 80 countries around the world in the framework of an internationally registered trade mark (IR trade mark).  The relevant authority for this is DPMA in Germany and the International Office in Geneva.

Priorities

When planning brand notifications in Germany or abroad, it is important to ensure early priority.  For that reason, the legislator has established a priority right in accordance with the Paris Convention for the Protection of Industrial Property.  This gives the brand applicant the right to notify the brand in other countries – as a national, Community or internationally registered brand – within six months of the filing date and therefore to be able to claim priority.  In this way, prior rights cannot be asserted in any signatory country of the Paris Convention in the meantime.

Advantages and drawbacks

The Community trade mark and Madrid Agreement systems have advantages and drawbacks.  A Community trade mark can be notified directly and is operated centrally throughout the EU.  Those are advantages.  But an important drawback is that such a central right can also be attacked centrally, e.g. through an opposition procedure.  Successful opposition by a national brand valid in only one EU member state can lead to revocation of the entire Community trade mark notification.  This then calls for conversion into national rights, at great expense.  Another drawback is OHIM’s structure for procedures.  Provision is made for opposition prior to registration of the trade mark.  This can greatly slow down the registration, and therefore also the effectiveness and enforceability of the trade mark.

The Madrid Agreement/Protocol system is based on the creation not of a central right but of a bundle of national rights.  The IR trade mark establishes independent rights in the countries chosen for the extension of protection, so that an opposition in one country has no effect on the right in any of the other countries.  The IR trade mark is also registered and thus effective relatively rapidly.  But the Madrid Agreement/Protocol system is not without drawbacks.  The IR trade mark is dependent for five years on the existence of the underlying trade mark of which it is an extension.  For instance, if the German trade mark is restricted or even revoked, the IR trade mark suffers the same fate.

Search/monitoring

German trade mark law makes no provision for DPMA to carry out a professional search for prior rights when a trade mark is notified.  It is therefore essential first to carry out a search before notifying a trade mark and second to organise monitoring so as to be able to lodge a complaint in good time against subsequent trade marks which fall within the area protected by your own trade mark.

Enforcement

A trade mark right enables the owner to take out injunctions against and claim damages from third parties which infringe the right as well as a whole series of further rights against brand piracy.  Trade mark rights can be enforced in front of special regional courts which are recognised as being competent for this purpose by the legislator.

Value

Trade mark rights are negotiable goods which are not tied to a particular business.  This means that the right to the brand can be transferred to a third party without the business having to be transferred at the same time.  In addition, the right of use can also be transferred to third parties, for instance in the framework of a licensing agreement.  Lastly, a value can be placed on trade marks and they can now be used as collateral.  The consequence of these possibilities is that a carefully nurtured registered trade mark is valuable.  A quality reference is provided by the symbol ® which can be added behind the registered trade mark on a voluntary basis.