Practice area
Trademark law: from filing to enforcement
Trademarks are more than a company's image. Customers associate them with reliability and high quality, and they materially influence the value of a business.
A trademark does not come into being with the logo but with registration, and it survives only if it is used and defended. We accompany every stage, from the search before filing through to enforcement, with proceedings before the German office in Munich and the EU office in Alicante.
The stages in trademark law
Stage 1
Brand strategy
We accompany your company in developing or realigning its brand strategy. We advise on where and to what extent your mark should be filed and which type of mark to choose, and give guidance on use that preserves the right.
Stage 2
Filing
No registration without a check. Before filing we offer comprehensive similarity searches in the registers relevant to you and give you reliable risk assessments. We conduct proceedings before the DPMA and the EUIPO.
Stage 3
Watching
To be sure your registered mark is not infringed, it is important to keep the relevant registers under permanent observation. We watch and get in touch when a later application comes too close to your mark.
Afterwards
Defending and exploiting
Where a later sign comes too close to yours, we act against it. We also conduct domain disputes, draft and negotiate licence agreements, and arrange customs seizure where counterfeiting is involved.
What trade mark law covers
Filing and searching
A similarity search comes before filing, because the office examines only absolute grounds for refusal and not whether an earlier mark stands in the way. The list of goods and services decides the scope of protection, and it cannot be broadened later.
When a warning letter arrives
Do not sign the enclosed cease-and-desist declaration unchecked. It is regularly drawn more widely than the claim asserted and binds you under penalty indefinitely. We examine whether the claim exists and, where appropriate, draft a modified declaration.
Unfair competition and advertising
Competition law prohibits certain business practices, above all in advertising. Its practical weight usually shows up as warning letters from competitors, and the deadlines in them are short. We review advertising claims in advance and defend you when a letter arrives.
Knowing your own portfolio
Trademarks rarely stand alone. Designs, copyright and trade secrets sit alongside them and often have never been reviewed, and once a dispute starts the stocktake comes too late. The IP scan records the whole portfolio and shows the gaps.
New name, new logo, new trademark?
Searching comes before filing. We tell you whether the way is clear.
Have a mark checkedTopics in this practice area
- Industrial property and unfair competitionCompetition law and industrial property: fair competition, the limits of advertising and defence against warning letters from competitors.
- IP scanIP scan for industrial property rights: we identify gaps in your portfolio of trademarks, designs, copyrights and trade secrets.
- Receiving a warning letterWarning letters under trademark, copyright or competition law: assessing the claim, modified undertakings and fending off unfounded demands.
- Trademark applicationFiling trademarks at the DPMA and EUIPO: similarity searches, choice of mark type, selection of classes and guidance through registration.
Frequently asked questions
I have received a warning letter. Do I have to sign the cease-and-desist declaration?
Not unchecked. The enclosed declaration is regularly drawn more widely than the claim the other side actually has, and it binds you under penalty for the future. A modified declaration is often the right route. The deadline is usually short, so get in touch early.
Is a German trademark enough, or do we need the EU trademark?
That depends on where you actually operate and intend to operate. The EU trademark covers the entire single market but is more vulnerable: an earlier right in a single member state can bring it down as a whole. We weigh that up with you.
We want to protect our product name. How long does that take?
For a DPMA filing without objections and without opposition, registration regularly falls within a few months. On top of that comes the three-month opposition period after registration. Searching in advance costs time but, in case of doubt, saves proceedings.
Do we have to use a registered trademark?
Yes. After a five-year grace period anyone can seek revocation where the mark is not genuinely used for the registered goods and services. Genuine means outward-facing and commercially meaningful, and token use is not enough. Evidence should be collected continuously rather than once proceedings begin.
What happens after registration?
Publication of the registration starts a three-month opposition period. The office does not examine earlier rights of its own motion, so registration says nothing about whether an earlier mark stands in the way. That is precisely why the search comes before filing rather than after.
Is a word mark enough, or do we also need the logo?
A word mark protects the name irrespective of its styling and is therefore usually the stronger right. A figurative mark protects the specific styling and weakens as soon as the logo is reworked. Where both matter commercially, two applications are worth it, and the order follows the budget.
Someone has taken our domain. What can we do?
The first question is whether any trademark right is infringed at all, since mere registration without use often does not suffice. Alongside that stand the DENIC dispute entry and, for many extensions, an arbitration procedure. Which route is faster depends on the extension and on how the other side behaves.