GRP Rainer Rechtsanwälte – Evaluating a trade mark“s distinctiveness
Before a mark can be registered as a trade mark, it needs to be assessed whether it possesses the necessary distinctiveness vis-à-vis other vendors“ products and services.
Trade marks give rise to a high degree of brand recognition among consumers and are of great value to businesses. It therefore makes sense to have a mark registered with the Deutsches Patent- und Markenamt (DPMA), the German Patent and Trade Mark Office. This will protect the mark from being used by other businesses. We at the commercial law firm GRP Rainer Rechtsanwälte note that should trade mark rights be infringed, it is possible to take legal action against this.
Before being registered, it should first be assessed whether the mark actually meets the conditions required for it be registered as a trade mark. To this end, a number of criteria needs to be fulfilled. For instance, the mark needs to possess the necessary distinctiveness vis-à-vis other vendors“ products and services. The mark cannot be registered as a trade mark if it lacks this distinctive character. Moreover, the mark cannot fulfil a merely descriptive function in relation to the goods or services. For this reason, the DPMA checks before a mark is registered whether registration is precluded by a so-called absolute ground for refusal.
However, it is worth noting that it is not assessed whether another mark with the same or at least a similar form has already been registered, which is why it ought to be looked into prior to commencing registration whether registration would infringe the rights of an existing trade mark. The proprietor of the older trade mark is then able to object to the registration, with this potentially giving rise to formal warnings, injunction suits or claims for damages.
That is why it should always first be assessed whether there is an absolute ground for refusal precluding the mark“s registration as a trade mark and whether existing trade mark rights would be infringed. If this is not the case, marks consisting of words, numbers, colours or images can be registered as trade marks provided that they fulfil the necessary requirements. The same applies to auditory/sound marks.
Lawyers who are experienced in the field of intellectual property law can serve as competent advisors when it comes to registering and protecting a trade mark as well as asserting claims in response to trade mark violations.
GRP Rainer LLP www.grprainer.com/en/ is an international firm of lawyers and tax advisors who are specialists in commercial law. The firm counsels commercial and industrial companies and corporations, as well as associations, small- and mid-sized businesses, self-employed freelancers and private individuals worldwide from offices Cologne, Berlin, Bonn, Dusseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London UK.