Case Study: German Trademark Registration for Overseas Company
An overseas company instructed Sonnenberg Law Firm to register a German trademark for their products, i.e. tools for engineering and wood machining. The client intended to introduce its German brand on the overseas market as well as to explore the German market in the future.
The client suggested the name and design of the brand. Sonnenberg Law Firm started research for the same or similar trademarks protected in Germany under national and international registrations or regulations.
It is a matter of the individual case whether a trademark will be held to be similar. There are several guidelines introduced by case law including some surprising judgements, e.g. nowadays a usual two-stripe logo is held to be similar to the famous three-stripe logo.
Sonnenberg Law Firm found a registered brand that possibly sounded similar to his brand. Having considered the guidelines, this border case made it impossible to give a clear “yes” or “no”, and Sonnenberg Law Firm calculated the risk.
Sonnenberg Law Firm consulted the client and outlined the risk. Violating a trademark may lead to considerable costs in lawsuits and compensation.
The client decided to let the brand be registered. Sonnenberg Law Firm prepared the registration form and attachments, filed the application and had to declare itself as the permanent receiving agent since the applicant had no residence in Germany.
One month later the client paid the registration fee to the trademark office which amounts to EUR 300.00 for one brand in a maximum three product categories.
Three months later the trademark was registered. During proceedings the trademark office does not check other’s trademark rights. It only verifies that the trademark conforms to general regulations, e.g. does not contain forbidden words. As a consequence, registration does not guarantee that no other’s rights are violated. Violation can only be prevented by careful preparation and, if applicable, reasonable risk calculation.
