Trademarks and Designs
Applications and Defense
From the branded product to the defining logo, from the typical appearance of the product or the packaging to the well-known company logo – we meet up with trademarks and designs every day. However, when considering a product or a company name / corporate CI, the question often arises: Does protection as a trademark make more sense or protection as a design? Or might protection as a patent or as a utility model the better way?
To get straight to the point: A trademark protects the identification of products and/or services of a company, a design the appearance of a product.
However, it is possible to register a product for a patent (if there is technical character or technical effect), the external appearance as a design and the product name as a trademark - depending on its nature.
Trademark: facts and terms
Term for trademarks
There is wide range of marks, that are protected as trademark. This is because trademark protection in principle can be extended any number of times. Unlike a patent, whose protection ends in principle after a maximum of 20 years (with a short possibility of extension in the pharmaceutical sector), and unlike a design, whose protection ends in principle after a maximum of 25 years, trademark protection is granted for a specific period of time and can then be extended as often as desired by paying a fee.
Classification
In order to organize and systematize all of this, a system for the classification of trademarks has long been established, the so-called Nice Classification. When filing a trademark application, a suitable selection must be made within this classification - and, incidentally, the trademark must also be described accurately. The clou in trademark application is anyway: to achieve as much protection as possible, and at the same time to make oneself as little vulnerable as possible for challenges against the own trademark.
Defending protection
A trademark application can fail or be attacked for several reasons: Terms and also figurative elements must not be descriptive of the goods or services for which protection is claimed. A trademark must also have distinctive character, especially from the consumer's point of view, and must not lead to confusion with a trademark that is already protected. Other aspects such as exhaustion, non-use or trademark splitting provide only a small insight into the complex trademark law.
Types of protection of a trademark
A trademark can be registered nationally for individual countries, for example Germany, for the European Union or as an international trademark, with the corresponding scope of protection. Basically, words and terms (even slogans are basically protectable), word and figurative combinations, figures, colors, sound sequences, 3D shapes, and even taste can be protected as trademark. protection as a Protected Designation of Origin (PDO) or Protected Geographical Indication (PGI), such as Black Forest ham, port wine and champagne, is also possible.
Our offer: applications safe and quickly
We handle your applications safely and quickly. You benefit from this in several ways: a fast application for protection with full cost control and transparency. And the fewer disputes you have with the Office, the more cost-effective this process will be.
If defending a trademark or a design is your issue – please contact us for further discussion. Our patent attorneys are experienced and highly qualified.
Contact us for further information at: info@kollner.eu.
Design protection: facts and terms
Term for designs
The term for design protection generally ends after a maximum of 25 years. By the way, there are two terms in the context of design protection: design patent is a synonym for 'protected design'.
Classification
Analogous to trademarks, a system for classifying designs has been established for international designs / design patents, the so-called Locarno Classification. In principle, international design applications are easily possible for all participating states in the Hague Agreement; this now includes nine out of ten important economic markets, including China since May 5, 2022.
Protection defense
A design application can only fail for formal reasons - otherwise a design is immediately placed under protection, it is an "unexamined" property right. Conversely, this means that an unauthorized design must be contested.
A design application can be challenged primarily on two grounds, because the prerequisites for design protection are "individual character" and novelty. Consumers are also an important factor in this context; for example, the so-called "déjà vu" effect is important. Since the German Design Act (DesignG) came into force in 2014, a design registration for the target country Germany can be challenged with a nullity procedure before the DPMA; this is cheaper and easier than challenging in a court instance.
Types of protection of a design
A design can be registered nationally for individual countries, for example for Germany, for the European Union or as an international design, with the corresponding scope of protection. Especially for variants of a design a collective application is recommended. Basically, what is to be seen on the submitted image - and exactly what is to be seen - is the scope of design protection. This sounds clearer than it is in practice, as judicial decisions show.
Our offer: applications safe and quickly
We handle your applications safely and quickly. You benefit from this in several ways: a fast application for protection with full cost control and transparency. And the fewer disputes you have with the Office, the more cost-effective this process will be.
Contact us for further information at: info@kollner.eu
If defending a trademark or a design is your issue – please contact us for further discussion. Our patent attorneys are experienced and highly qualified.
FAQ - frequently asked questions
Trademarks and designs protect different aspects of your market presence. A trademark, for example, protects the name, logo, or product name by which customers recognize your company. A registered design, on the other hand, protects the visual appearance of a product. A coordinated protection strategy can combine both types of rights.
1) What is the difference between a trademark and a design?
A trademark identifies the commercial origin of goods or services. It can protect, for example, a company name, product name, logo, or slogan.
Design law, on the other hand, protects the external appearance of a product. For the same product, it may make sense to have both trademark and design protection.
2) What can be protected as a trademark?
Words, names, letters, numbers, logos, combined word and figurative marks, shapes, colors, or sounds, among other things, may qualify as trademarks. In particular, the mark must be capable of distinguishing a company’s goods or services from those of other companies. Purely descriptive terms generally cannot be monopolized. The decisive factor is always the goods and services for which trademark protection is sought.
3) Why should you conduct a trademark search before filing an application?
A trademark search reduces the risk of infringing on prior rights held by third parties. The German Patent and Trademark Office (DPMA) does not examine, as part of the application process, whether identical or similar prior trademarks or other rights to distinctive signs already exist. Without a prior search, you risk facing an opposition, cancellation, a cease-and-desist letter, or a costly name change. Depending on the project, the search should include German, European, and international trademark registers as well as relevant corporate identifiers and domain names.
4) Where should a trademark or design be registered?
For protection in Germany, the application is typically filed with the DPMA. A European Union trademark or a registered EU design filed with the European Union Intellectual Property Office (EUIPO) can provide uniform protection in all EU member states. For other countries, international registration routes or national applications may be considered. Which route makes the most economic sense depends on current sales markets, planned distribution countries, and the available budget.
5) What is the significance of the classes of goods and services?
Trademark protection for a name or logo does not apply across the board to every business activity, but only to specific goods or services that you must specify. When filing a trademark application, the claimed goods and services must be listed in a precise specification and assigned to the relevant classes. This specification significantly determines the scope of protection. A definition that is too narrow may leave future business areas unprotected; a definition that is unnecessarily broad may result in additional costs and risks of conflict.
6) How long do trademark and design rights last?
A German trademark and an EU trademark are initially protected for ten years and may each be renewed for an additional ten years. Provided the renewal is filed on time, trademark protection is generally available indefinitely.
A registered German design or EU design is initially valid for five years and can be maintained in five-year increments up to a maximum term of 25 years.
7) Do I have to register the design before the product is marketed?
Registering the design before it is made public is generally the safest course of action. This is because, unlike a trademark, a design must be new to be eligible for protection. German design law does provide a grace period of up to twelve months for disclosures made by the designer themselves. However, filing a design application early avoids evidentiary issues, preserves international options for enforcement, and secures the earliest possible priority date. It is also important to include professionally prepared illustrations, because, as a general rule, only the design features that are recognizable in them are protected.
8) How much does a trademark or design application cost?
Costs typically range from €500 to €1,000. They depend on the number of classes of goods, the number of designs, whether protection is sought only in Germany or throughout Europe, etc.
Please contact us if you are seeking protection for a trademark or a design. The initial consultation is free of charge.
