Trademark protection Germany: German trademark application
for a fixed price / trademark registration

According to Section 3 of the German Act on the Protection of Trade Marks and other Signs (German Trade Mark Act / Deutsches Markengesetz – MarkenG) all signs, particularly words (→ word mark) including personal names, designs (→ figurative marks / device marks / logo marks / label marks / word and figurative marks), letters, numerals, sound marks, three-dimensional designs (→ 3D marks), the shape of goods or of their packaging as well as other wrapping, including colours and colour combinations (→ color marks), may be protected as trade marks if they are capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Unfortunately, this question about the trademark form cannot be answered in a generalized way. As a rule, a word mark is preferable, has a larger scope of protection and brings greater flexibility, but there are often good reasons to register a word and figurative mark.

We often receive inquiries e.g. how to patent a name or a logo or trademark symbols in Germany. Since patent protection is only possible for technical inventions, this statement is not entirely correct. Although a logo or a name cannot be patented, there are possibilities to achieve a logo protection or name protection via a trademark application or in some cases through a design protection.

Pursuant to Section 3 (2) of the German Trademark Act, signs shall not be capable of being protected as trade marks if they are consisting exclusively of a shape which results from the nature of the goods themselves (→ design protection / design patent) or which is necessary to obtain a technical result (→ patent protection / utility model protection)or which gives substantial value to the goods. Thus, if the sole purpose is to protect a visual design or a technical invention, a design / design patent / industrial design or a patent or utility model may be considered.

According to Section 8 of the German Trademark Act, trade marks shall not be registered which are devoid of any distinctive character for the goods or services, which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, or other characteristics of the goods or services, which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services or which contain coats of arms, flags or other signs, seals or designations of international intergovernmental organizations.

A registered German trademark is registered solely in the territory of the Federal Republic of Germany. If a trademark is to be protected in other countries in addition to Germany, protection must be claimed separately in these countries – which is often possible via an international trademark. If, in addition to Germany, neighboring countries such as Austria, France, the Czech Republic or the Netherlands etc. should also be protected, it is usually advisable to apply for an Union trademark / “EU trademark”, which – if successfully registered – gives protection in all member states of the European Union.

A registered trademark creates a monopoly right and enables action to be taken against imitators. In addition, a registered trademark can be highlighted in advertising, for example with the sign ® or with the reference to a “registered trademark”. In addition, licenses can also be granted for a protected trademark.

The costs of a trademark application in Germany depend on the scope of services requested. These consist of the official fees of the German Patent and Trademark Office (GPTO) as well as our fee if we are allowed to assist you. The official fee for filing a trademark application in Germany in up to 3 classes is 290 € for an electronic application. For each additional class from the 4th class on, an additional 100 € are added.

Overview of official fees for a trademark application in Germany:

Basically, you can do the trademark filing in Germany yourself. However, if you actually intend to do so, you should definitely familiarize yourself with the prerequisites and requirements of German trademark law. It is not uncommon for such applications to fail due to obvious errors. Comparatively low attorney fees can often avoid expensive problems and a lot of hassle. In addition, an address in Germany is required for the application.

When filing a German trademark application, the details matter. Applications filed by “non-professionals” often aim for a too narrow or too broad scope of protection and often do not protect what is actually intended to be protected. In addition, there are various absolute grounds for refusal, which can lead to objections (provisional refusals) and ultimately to rejections by the German Patent and Trademark Office (GPTO). Although an objection cannot be ruled out with final certainty, an experienced trademark attorney can point out potential difficulties in advance and suggest possible alternatives.

Unfortunately, there is no refund of official fees by the German Patent and Trademark Office in Munich. In such cases the official fee is kept by the office due to the processing of the application up to that point, including the examination for possible grounds for refusal.

The form of a trademark cannot be changed after the trademark application or trademark registration in Germany. Only a restriction or specification of the list of goods and services is still possible. Extensions of the trademark protection after the application – for example to further classes – can only be implemented by filing a new trademark application.

No, German trademark law does not require an examination of prior rights of third parties. The German Patent and Trademark Office (GPTO) therefore registers a trademark without a corresponding examination. This can lead to conflicts with these trademark owners – such as opposition proceedings and often expensive Cease-and Desist-Letters (C&D letters) / warning letters with cease and desist declarations. The risk of problems can be reduced by the offered “availability search” for identical or similar signs.

Procedure of a trademark registration in Germany (if we may support you):

➔ Order & payment ➔ summary & draft (search if necessary) ➔ filing / application and forwarding of official fees after your confirmation ➔ examination of the German Patent and Trademark Office (GPTO) for formal requirements as well as possible absolute grounds for refusal ➔

• ➔ if problems ➔ provisional refusal with setting of a time limit to remedy the objection by submitting a statement to the Trademark Office ➔ if this is successful, examination will be continued // if not successful, then rejected and possibility to take action against it
• ➔ if no problems ➔ registration of the trademark and forwarding of the trademark certificate ➔ publication of the trademark registration and start of an opposition period of 3 months

(Duration from application to registration of the trademark at the GPTO ideally between 2 weeks and 4 months.)

Once the brand has been registered, you may use, for example, the well-known trademark symbol ® (“R in a circle”) or also the trademark TM symbol ™ (for “trademark“) to advertise in Germany for the goods and services protected by the sign. An indication such as “trademark protection in Germany” or a similar wording would also be permissible as long as the trademark exists.

A registered German trademark is granted for ten years (calculated from the date of filing), provided that it has not been cancelled beforehand.

After the initial protection period of ten years has ended, the trade mark can be renewed at the German Patent and Trademark Office as often as desired for another ten years (trademark renewal period of ten years).

Yes, a German trademark must be used seriously and to the extent registered (“use requirement” / “obligation to use“), otherwise it may be cancelled. However in Germany, there is a so-called grace period for use the trademark in commerce. This means that the owner has five years from the expiry of the opposition period or the end of an opposition proceeding to seriously use the trademark himself or through third parties (e.g. by licensing).