Protection of Well-Known or Famous International Brands in Germany and the EU

by ZELLER & SEYFERT

New companies, brands, and even established corporations need a comprehensive understanding of German and European law when creating a new trademark or to protect an existing trademark against infringement. In the European Union, trademarks are generally only protected if they are registered, however, “well-known trademarks” have special protection if they are sufficiently famous and recognizable.

German law protects trademarks registered in Germany, EU trademarks, and trademarks that are registered internationally. Germany has also entered into several international treaties including the Paris Convention for the Protection of Industrial Property, as well as other international treaties related to intellectual property rights. This means that whether or not a trademark is registered in Germany may not be relevant in the event of an infringement.

How do I register a trademark in Germany?

A company that has its offices outside of Germany does not have the standing to register a trademark before the German Trademark Office (DPMA) (“Deutsche Patent- und Markenamt”). Applicants who do not have a residence in Germany must have a German representative, e.g. a German attorney to assist with the application process before DPMA. Your trademark must have distinctive character, it must avoid being purely descriptive, and it must not exclusively consist of signs or indications which have become customary in the current language or in German commerce to designate the trademark-protected goods or services. Otherwise, DPMA will reject your trademark application.

Unregistered trademark protection

Even if your trademark is not registered in Germany or the EU, it may still be protected if it is sufficiently recognized by the public in a specific market. The court will look at each trademark on a case-by-case basis, but if the sign is distinctive and there is recognition by between 20%-25% of consumers it is sufficient to pass the test. However, if the sign is not as distinctive or descriptive, the threshold is 50% of consumer recognition. Applying and securing famous trademark protection is absolutely valuable in any administrative or litigation proceedings.

The basis for the “well-known trademarks” protection is Article 6 of the Paris Convention which mandates that all member states refuse or cancel the registration and prohibit the use of any trademark which is a reproduction, imitation, or translation of an existing trademark used for identical or similar goods that would create confusion for consumers. Further, the articles create the possibility of filing an opposition to trademark applications in Germany and the European Union based on an established well-known trademark.

To help substantiate your claim, of “well-known” trademark status, we can submit relevant evidence on your behalf, including:

  • Your marketing and promotional activities
  • Distinctive colors and recognizable attributes
  • Publications or statements referring to your product
  • Awards or distinctions for your products or services
  • Witness statements corroborating brand recognition
  • Evidence of your brand and product recognition at trade fairs
  • Advertisements showing your brand or logo in other countries
  • Market surveys indicating brand recognition among consumers

Can my company invoke the “well-known trademark” protection?

The EU Intellectual Property Office (EUIPO)  and DPMA assess the reputation and extent to which a trademark is “well-known” based on quantitative considerations regarding the degree of knowledge of the mark among the public or consumer target market. To invoke the protection of unregistered and unused trademarks in the EU certain criteria must be met related to the reputation in a specific territory. Our attorneys can help to review your trademark and present the best case to help your enterprise and brand qualify.

“Well-known” and famous brand trademark protection lawyers in Germany

Our attorneys are experienced in handling all aspects of trademark registration and protection for clients in Germany, the European Union, and internationally. We have years of experience in this practice area and are happy to answer your questions, negotiate on your behalf, or defend your interest in court. Please contact Atty. Dr. Christian Seyfert, LL.M. for any support with your trademark issues. You may reach him via e-mail (seyfert@zellerseyfert.com) or on +49 69 58 80 972-40 (Frankfurt am Main) or +49 30 40 36 785-80 (Berlin).

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