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Trademark registration and intellectual property rights: Common mistakes and legal pitfalls
A registered trademark is the foundation of corporate identity for many companies and freelancers. It protects the name, logo, or slogan from imitators and creates legally secured brand recognition. However, trademark law is formally strict. Anyone who considers the registration process at the German Patent and Trademark Office (DPMA) or the EUIPO a mere formality risks gaps in the scope of protection or costly cease-and-desist letters from third parties.
The illusion of the “official examination”
A common misconception concerns the scope of examination performed by trademark offices. When a German trademark is registered with the DPMA (German Patent and Trade Mark Office), the office only checks for so-called "absolute grounds for refusal." This means that it checks whether the term is even suitable as a trademark (e.g., lack of distinctiveness in purely descriptive terms like "Bäckerei" for a baker).
What the German Patent and Trade Mark Office (DPMA) does not examine are "relative grounds for refusal." The DPMA does not investigate whether identical or confusingly similar trademarks already exist. Therefore, successful registration is no guarantee that third-party rights will not be infringed. If the new trademark conflicts with an older one, the owner of the older trademark can file an opposition or issue a cease-and-desist letter. A professional identity and similarity search beforehand is therefore the only way to reliably assess this risk. The law firm Kramarz the necessary legal diligence in this area.
The goods and services list: The scope of protection
Trademark protection is never abstract, but always applies only to specific goods and services. These must be precisely classified into the so-called Nice Classes when registering the trademark.
- Too narrowly defined: The scope of protection does not cover future business expansions.
- Too broad a definition: The brand becomes vulnerable to legal action due to non-use (after the grace period for use has expired) or unnecessarily comes into conflict with other brands in industries in which one is not even active.
The legal art lies in formulating a plan that covers the current status quo and the strategic future of the company without offering unnecessary points of attack. Attorney Christian Kramarz contributes his 15 years of experience in copyright and media law to develop a viable strategy.
Trademark infringement and defense
Trademark protection requires proactive measures. If a trademark is infringed—for example, through product piracy or a competitor with a logo that is too similar—the trademark owner must take action to prevent brand dilution. The available tools range from a request for information regarding the infringement to a cease-and-desist letter and even an injunction.
Conversely, companies often find themselves facing cease-and-desist letters. Not every demand is justified; often the scope of protection of the opposing trademark is interpreted too broadly, or prior use rights exist. In these cases, a professionally sound review of the facts and the legal situation is essential before any declarations of discontinuance are signed.
Conclusion: Prevention is cheaper than aftercare.
In trademark law, the principle applies that errors in registration often only come back to haunt you years later – when the trademark is successful and attracts interest. Sound legal support from the outset safeguards the economic value.
For questions regarding strategy, review of existing claims, or assistance with registration, the Kramarz law firm is available. An initial assessment is possible as part of a free initial consultation by phone at +49 6151 2768227 or by email at anfrage@kanzlei-kramarz.de. Further information can be found at kanzlei-kramarz.de/kontakt .
