Apply for a patent? That's clear. But why should you also protect your brand? What are all the categories about? And why do you need outside expertise to apply? Answers follow - in our blog on the topic of trademark registration.
Table of contents
You have founded a company, carried out a rebranding or revamped your company's corporate design. Now you're thinking maybe it would make sense to register your trademark at the same time. You never know. If your brand is sacred to you - protect it. You're on the safe side with a trademark application. You may have experienced it from the other side: you have a cool idea for a brand name. You google it - and poof, of course someone else had this great idea before you. How annoying! But if it's not protected by trademark law, you could still launch it. And now imagine what someone else thinks about your brand.
Trademark search: Does the name already exist as a trademark?
Every trademark and every patent that is protected ends up on the website of the German Patent and Trade Mark Office - DPMA for short. The European equivalent for EU trademarks is the website of the EUIPO, the European Union Intellectual Property Office. You can find the trademark search tool here: TMView. You can also find national trade marks there. In total, the database contains over 120 million trade marks across the EU and beyond.
Here is the extract from the trademark search for our trademark TutKit.com. Click on our entry to get detailed information about the trademark:
How about giving your trademark a home here too? Are you considering registering your trademark? You shouldn't do this yourself or with a lawyer specializing in general legal matters. Instead, look for a law firm that specializes in trademark and patent law, especially when it comes to registering your trademark.
Legal assistance is recommended when registering a trademark
Decide whether purely national trademark protection is sufficient for you. In Germany, this is handled by the DPMA. Or whether you need a European Union trademark because you want to be active with your trademark throughout the EU.
You can protect your trademark in a wide variety of areas. As a layperson, you may be granted the full range of protection options. Or far too few. Uniqueness deserves the right advice.
A lawyer specializing in trademark law will advise you intensively and weigh up the pros and cons of the individual classes and services with you. It is important that this is clear from the outset, because once your trademark has been registered, it is very difficult to change it later - and then only in one direction: you can only remove classes and services, but not add new ones.
For our 4eck Media trademark, we have registered a whole range of classes and services with all possible activity options, as you can see here.
Once the trademark registration has been successfully completed, you will receive a certificate. In the preview image above, you can see the certificate for our 4eck Media trademark on the left - still in the blue layout of the previous EU authority. To the right is the newer certificate from the current EU authority EUIPO.
Who has too little on the pan ...
In this example, an online store specializing in pans has had all pans, chef's knives and crockery protected as a trademark - just two classes:
But what about a blog, cookbooks, cooking videos, cooking courses or cooking trips? In this case, the trademark protection does not extend so far that the company as a trademark also covers such offers.
And who knows, maybe all of this will be an issue for the company in the next few years. And then what? The big problem: competitors can implement such marketing measures under the name with reference to a pan - perhaps simply to secure as many hits as possible on Google when searching for "pan".
Together it works better as a protective shield
Another example of why trademark registration should be carried out by experts in patent and trademark law is provided by a client of our agency 4eck Media, namely the online store Fischkaufhaus.de. In 2014, even before our collaboration, the company had made its first attempt to register a trademark. It was rejected:
We have been managing Fischkaufhaus.de as an agency since 2015. In 2016, we started a new registration attempt - this time with our trusted law firm, with whom we successfully registered our own brands as well as several client brands. The result: the Fischkaufhaus.de brand is now registered:
My tip at this point: You are certainly working with a law firm that has served you well in copyright or labor law matters. If trademark applications are not one of the main focuses of this law firm, it is better to trust the professionals who handle trademark applications on a daily basis for this important matter.
If you are currently revising your own business stationery and corporate design, you are welcome to use our professional templates. Customize them for you and your purposes.
And don't forget to register your trademark afterwards!
Costs for the trademark application
You can research the legal fees for a trade mark application online and ask about them before hiring a law firm. Here are the costs we had for our trademark protection at the time. For our EU trademark application with seven classes, we paid 3213.60 euros for TutKit as a trademark at the beginning of 2016, of which 1500 euros were for the fees at the trademark office and 1713.60 euros as a lawyer's fee. Since it's been a few years, the fees are slightly higher today.
Our trademark protection for 4eck Media had to be extended in February 2023, as the ten-year term of protection would otherwise have expired. The official fees due to the EU authorities for our seven classes of the 4eck Media trademark were 1650 euros. Our law firm offered to renew the trademark for us for an additional 1309 euros (plus VAT). After a quick search, I saw that the renewal was basically just a few clicks away. So I created an account with EUIPO and renewed the trademark myself and also paid the official fees due directly to EUIPO. I then received an invoice so that everything went smoothly for our accounts department.
This is also my recommendation to you: Use a specialized law firm for the registration because it's all about choosing the right classes and choosing the right strategy for filing in advance in case of problems. On the other hand, do the renewal yourself to save costs. To be honest, it's been really easy and the lawyers get paid too much for it.
And remember, if you change your registered office, to inform the trademark office of your new address. You can also do this yourself, for which our lawyers charged us 340 euros net. I would do this myself today, because it's quick and easy to do online.
Good protection: avoid risks and disadvantages for yourself
If a company does not register a trademark with the trademark office, there can be various risks and disadvantages:
- Lack of protection: without an official trademark application, your company will not enjoy legal protection for your trademark. This means that other companies could use the same or similar trademarks, which could lead to confusion among customers and harm the company.
- Legal disputes: Without a registered trademark, the company may have difficulty taking legal action against other companies using its trademark without permission. Litigation can be costly and damage the company's reputation.
- Loss of trademark rights: In many jurisdictions, the principle of "first to file" applies, which means that the company that files a trademark application first has the rights to that trademark. If another company files the same or a similar trademark before the company, this may result in the company losing its rights to that trademark.
- Loss of competitive advantage: A strong brand can be an important competitive advantage as it builds trust and loyalty with customers. Without a registered trademark, the company may lose this advantage and potentially lose market share to competitors.
Overall, not registering your trademark with the trademark office can lead to legal uncertainties, competitive disadvantages and a loss of trademark rights, which can affect your business in the long term. This is not just about classic trademark disputes. It is also conceivable that your domain could be hijacked because someone has illegally accessed your hosting account and carried out the domain transfer. If the hijacker then sends you an email saying that you can only get it back by paying a transfer fee, you will appreciate the value of your trademark registration if the domain also contains the brand name. With a trademark certificate, it will be easier for you to convince the new domain administrator, where your domain is located after the hijacking, that you are the rightful owner of the domain. If it is an active domain, such as from an online store or another well-frequented service, every day counts. Proof of trademark shortens the process of reversal.
Domain hijacking sounds pretty far-fetched to you? It happens more often than companies would like to admit. For example, the domain ebay.de was hijacked in 2004 and the domain google.de in 2007. Admittedly, these two examples are somewhat older. But even the company AVM, which is known as the manufacturer of the Fritzbox, lost the internal domain fritz.box (in the meantime), as was reported in March 2024. Here is a screenshot I took of this:
Which brand do you want to place under the umbrella of trademark law? It's worth taking this step and relying on the professional help of a trademark and patent lawyer - especially if you've already updated your corporate design. Because once you have achieved success with your company, copycats are not far away, who may try to use the name of your brand for themselves as free riders.
Familiarize yourself now with our modern corporate design templates for your business stationery. And after the relaunch, it's time to register your brand.