Trademarks as an indication of origin

Brand names and logos are associated with companies and their products. An advertising slogan is an equally decisive factor for recognition or origin.

Famous slogans that have been successfully registered as EU trademarks include “Just do it” (Nike), “Think different” (Apple), “Vorsprung durch Technik” (Audi) or “i’m lovin it” (McDonalds).

In order to register slogans as trademarks, it must be proven that they are not only descriptive or laudatory of the goods and services, but often also that they are sufficiently different from the usual signs of other companies.

Protect advertising slogans

Applicants who wish to register a slogan as a trademark in the trademark register must therefore prove its distinctiveness. In addition, a slogan must not be descriptive, which means that it must not describe either the nature or the intended purpose of the goods or services applied for.

However, assessing the distinctiveness of a slogan is not always easy in practice.

Such slogans can be excluded from registration due to lack of distinctiveness if they are perceived by the usual customers only as a positive advertising message, but not as an indication of the commercial origin of the goods and services.

It should also be noted that the examination of whether a slogan is distinctive must take place separately for each product or service. A slogan may be registrable for certain products, but not for others.

What can increase the likelihood of success for trademark registration of a slogan?

Distinctiveness of slogans

The chance that a slogan will be regarded or judged as distinctive (and thus protectable under trademark law) is regularly increased if it follows several of the following guidelines:

• The slogan should be short.
• It should allow for multiple meanings and thus room for interpretation regarding its meaning.
• He should have a special originality and conciseness.
• It should have a play on words or unusual linguistic or stylistic devices.

The more of these specifications apply to the slogan, the greater the chance of being able to have the slogan protected as a trademark.

Registration of slogans as an EU trademark

The central application for an EU trademark (also EU trademark) is made through the European Union Intellectual Property Office (EUIPO).

If the Office determines during the examination of the application that there are no absolute grounds for refusal (such as lack of distinctiveness), the slogan can be registered in the trademark register in the corresponding class of goods and/or services.

Caution: The Office does not check whether a conflict with already existing trademarks is caused in connection with the trademark application. The application for a slogan should always be preceded by a preliminary search to rule out the possibility that identical or similar slogans exist as trademarks. (See also: Relevance of a preliminary trademark search, 5/2019).

The application grants the owner unitary, EU-wide trademark protection. If no opposition is filed within 3 months of registration, the applicant is considered the trademark owner, whose trademark enjoys protection for 10 years. After this period, the trademark protection can be renewed for another 10 years at a time.

Metaverse and NFTs

Metaverse refers to a 3D virtual space that can bring new and innovative opportunities for companies and their product marketing.

In this online world, customers can act as digitally animated avatars and shop for digital clothing, shoes and accessories, for example. Using VR glasses or augmented reality, people control their metaverse avatars with their own movements.

NFTs (non-fungible tokens) play a central role here. NFTs are virtual certificates for shares in digital objects or works. They are used to secure the digital goods in the blockchain and certify their authenticity and ownership. More information on Trademark law and NFTs in our February 2022 blog.

Trademark protection in the metaverse

It is to be expected that new business models will develop in the area of virtual goods in the next few years and that trademark law will thus also gain in importance in the digital environment. Trademark applicants should protect their business model as broadly as possible under trademark law in order to protect themselves from imitators.

In order to be able to ensure trademark protection for digital products, it can be an interesting option to register trademarks for virtual goods and NFTs. Our specialists will be happy to advise you on this.

Documents of use in the grace period

To meet the rights-preserving requirements of trademark law, the trademark owner must introduce and use the registered trademark – within 5 years from registration – on the market. Otherwise, the trademark protection may lapse.

If the application for a virtual trademark is not followed by any use of it in the virtual space, the trademark application may accordingly become ready for cancellation.

For more information on proof of use during the grace period, see our article: Proof of use of a registered trademark.

Supervision of third party trademark applications

Due to the decentralized nature of the metaverse and the fact that it is not yet possible to foresee how this virtual market will develop, there is also a risk of trademark infringement for trademark owners in this market.

For example, there have been recent disputes by prominent companies in U.S. courts. Nike, a sporting goods manufacturer, sued a metaverse marketplace that offered sports shoe images as NFTs. Hermès sued an artist who sold digital artwork of a Hermès product through an NFT marketplace.

Trademark monitoring of virtual goods and NFTs is therefore advisable, because it makes it possible to take timely action if it becomes apparent that there is a significant risk of confusion with the registered trademark.

European Union Intellectual Property Office (EUIPO)

According to the EUIPO, applications for virtual products and NFTs have been filed mainly in classes 9, 18 or 25 (“downloadable software / virtual goods” and “non-fungible tokens”) or for the services, such as online stores for virtual products (classes 35, 41 or 42).

According to the EUIPO opinion, services related to virtual goods and NFT should be classified according to the established principles for the classification of services.

Counterfeit products on the Internet

The Internet as a transshipment point for pirated goods

Counterfeit products are now also distributed on a large scale via e-commerce – the global trade of goods via online marketplaces, websites and social media. The copied branded goods are no longer only transported to the target markets by shipping containers, but increasingly via mail as individual parcels.

Against product piracy – cooperation with customs

According to the annual statistics of the German customs, counterfeit goods worth 315 million euros were seized in 2021. This is about 25% more than in the previous year.

IPR holders are strongly advised to collect evidence (e.g., screenshots, web links, …) in the course of carefully monitoring online trading venues if it is determined that an online store or website is trading in a copy of the goods.

Customs can seize the counterfeit products when they are imported into or exported from Germany. The decisive factor is that the infringement is obvious.

It is also a requirement that the products and goods must be protected by patent or trademark law and that the trademark must have been registered in all countries in which the manufacturer operates. In addition, customs can also seize counterfeits imported from non-EU countries, provided that a commercial purpose is evident at the time of importation.

Internet monitoring: search for infringing imitations

Counterfeit products in the e-commerce sector can also be detected or identified with the use of machine-learning-based software.

The tools automatically search for counterfeits on websites, online marketplaces as well as on social media channels and enable counterfeit goods offers to be found regardless of language, time of day and country borders.

Reporting systems

The European Union Intellectual Property Office (EUIPO) is working with various online marketplaces to combat product piracy. A large number of marketplaces have now set up reporting systems through which companies and consumers can report anomalies.

Defending innovation and intellectual property against the attack of product pirates

The most effective protection strategy is the early filing and registration of intellectual property rights. To prevent intellectual property infringement, we advise our clients on the extent to which the product in question is protectable and what product adaptations can be made to obtain patent, trademark or design protection.

Only with registered property rights can legal action against product and trademark piracy be efficiently initiated. karo IP Patentanwälte supports clients in obtaining preliminary injunctions, in border seizure proceedings and in asserting claims for information, damages and destruction.

Prevent trademark infringement

Trademark owners should continuously monitor trademark registers with regard to new trademark registrations, because the Trademark Office does not protect you from third parties applying for a trademark that is similar or identical. Trademark monitoring serves in particular as a tool to identify potential infringement of your trademark at an early stage.

No trademark search with examination of similarity ex officio

The databases of the GPTO, EUIPO and WIPO contain all trademarks applied for and registered. However, when applying for a new trademark, these trademark offices do not check ex officio whether similar or identical trademarks are already registered in the register.

This can lead to third parties applying for a trademark that is similar or identical to one’s own trademark.

Regular monitoring of trademark registers

Continuous trademark monitoring can ensure that applications for similar or identical third-party trademarks are detected at an early stage. Since trademarks are generally subject to a compulsory use, infringement of your existing trademark can be countered in good time.

In principle, the trademark owner himself can carry out the verification whether similar or identical trademarks have been applied for or registered in the register.

However, it should be noted that the monitoring of the registers is time-consuming and complex. As a trademark owner of a German trademark, for example, not only German trademarks, but also EU trademarks and internationally registered trademarks with scope of protection for Germany must be monitored. As a trademark owner of an EU trademark, all national trademarks of the EU must also be monitored.

Trademark monitoring often leads to many similar trademark applications, so that a trademark law analysis is often required as to whether or with what success action could be taken against it – accompanying this monitoring with a lawyer is therefore advantageous.

Keep an eye on newly filed trademarks

As part of a professional search, our trademark experts search the databases of the trademark registers as well as fee-based databases for trademark monitoring.

• All new trademarks or trademark applications filed with the national and international trademark offices are constantly monitored.
• A search is made for identical trademarks (identity search).
• A search is conducted for trademarks in which word elements, spelling or a figurative element are similar (similarity search).
• The classes of goods and services are examined.

Trademark monitoring makes it possible to take timely action if it becomes apparent that there is a significant risk of confusion with your trademark.

Our trademark experts support you in ensuring sustainable trademark protection. The costs of a trademark monitoring are manageable. Feel free to contact us.

Proceeding upon detection of an unwanted trademark registration

If it is determined that a younger trademark overlaps and/or impairs the scope of protection of your trademark, an opposition can be filed in many cases, for which the trademark owner only has three months after the publication of the younger trademark. For the opposition proceedings, the monitoring measures taken and the search report must be fully documented.

Usually, before the opposition proceedings are conducted, you will be given sufficient time to reach an off-the-record agreement with the other trademark applicant. In this way, it can be achieved that the other trademark applicant limits its scope of protection and/or that its use of the trademark is restricted. This can be recorded in writing in a so-called delimitation agreement. If such an agreement is reached before the start of the opposition proceedings, you will even receive your official opposition fee back.

If the objection deadline is missed, a potentially complex deletion procedure can be initiated. Civil action (injunctive relief, compensation for damages) is also possible.

The international registration of a trademark

For an international trademark application one needs a so-called basic trademark or at least a pending trademark application (basic application).

The application for registration of an IR trademark must then be filed via the trademark office of the country of origin, e.g. at the German Patent and Trademark Office (DPMA) if the basic trademark is a German trademark or at the European Union Intellectual Property Office (EUIPO) if the basic trademark is a Union trademark. From there, after an initial examination, the application is forwarded to WIPO.

With an international trademark registration, a trademark can be protected in currently more than 150 contracting states. The contracting states, which must be a member of the Madrid Agreement (MMA) and/or a member of the Protocol (PMMA), include almost all European states as well as numerous Eastern European, American and Asian states. A current list can be viewed at WIPO.

Therefore, trademark owners can obtain international trademark protection in multiple countries by registering an IR trademark, but not worldwide trademark protection.

Procedure of registration of IR trademark at WIPO

The trademark applicant defines in the application in which countries the trademark protection should apply.

After the formal examination of the application by WIPO, the trademark is entered in the international register. Upon publication, the trademark is filed as an application for protection in the defined countries, of which the designated national trademark offices are informed and requested to examine it. If the national trademark offices refuse to protect the trademark in their national territory, the trademark applicant must usually additionally pursue the examination procedure at the national level by calling in certified trademark experts. Otherwise, WIPO and thus also the trademark applicant will be informed that there are no objections to the registration and whether or to what extent national opposition proceedings can be filed by third parties against the registration.

The international registration provides the full rights of a national trademark if the respective trademark offices agree to the publication or do not object to it within 1 year. Should one of the selected countries declare the IR trademark invalid, this will not affect the other countries where protection has been applied for.

The term of protection of a registered IR trademark is initially 10 years and can be renewed as often as desired for 10-year periods.

Costs of filing an IR trademark application

The amount of the filing fees depends on the number of classes to be registered and the states selected. The office fees that WIPO invokes can be calculated using WIPO’s Fee Calculator.

International Trademark Search

An international trademark application should always be preceded by a preliminary search in the countries where protection is to be sought.

Registering a trademark without conducting a preliminary search beforehand carries the risk of being confronted with a warning letter or opposition proceedings from older trademark owners. In our blog Preliminary Trademark Search we have compiled further information on this.

Trademarks in the European Union

Worldwide interest in EU trademarks

According to EUIPO, the sharp increase in EU trademark applications in 2020 was in particular due to the fact that China had been very active in filing trademark applications.

As a result, the share of Chinese trademark applications has increased from 9.5% (2019) to 16.2% (2020). In 2020 alone, more than 25% of all applications in Class 10 (medical apparatus and instruments) were received from Chinese applicants. The increase in applications from China is also significant in Class 9 (electrical apparatus; computers). (Source: EUIPO News, 24.2.21)

The EUIPO also sees the boom in online trading as part of the positive development in terms of EU trademark applications. “…all those who want to sell on major platforms need to show that they have protected their intellectual property.” (Source: EUIPO Newsflash, 25.5.21)

Fact-checking: EU trademarks

1 trademark, 27 EU countries: With just one application, the owner is granted a uniform and EU-wide trademark protection. If a country joins the EU for the first time, the scope of protection of the EU trademark is automatically extended at no additional cost.

Centralised processing: The EU trademark system standardises and simplifies the EU-wide application and registration of a trademark, as all administrative issues are processed centrally via the European Union Intellectual Property Office (EUIPO).

Cost and time savings: The possibility of filing an EU trademark application centrally with the EUIPO can save time and costs, as the trademark does not have to be applied for individually with the responsible national offices.

Uniform legal protection: An action in the case of trademark infringement can be brought before an EU trademark court and does not have to be pursued in individual EU countries. The decision taken by the national EU trademark court of a member state is then valid throughout the EU.

Regulatory use: In order not to lose the validity of an EU trademark, use in only one EU member state is sufficient.

Scope of protection: The registration of an EU trademark is valid for 10 years from the date of application and can be renewed as often as desired for a further 10 years.

About the relevance of trademark searches

A trademark application should always be preceded by a preliminary search. This is because the trademark office does not check whether the application for a trademark causes a conflict with existing identical or similar trademarks.

Registering a trademark without conducting a preliminary search beforehand risks being confronted with a warning letter or opposition proceedings from older trademark owners. Read our blog of May 27, 2019 for more information.

Brexit and the consequences for trademark law

With the Brexit, European Union Trademarks will no longer have protective effect in the UK. The IPO UK had cloned all registered EU trademarks and international registrations on 1.1.2021, so the trademark will now continue as a national trademark in the UK.

In the karo IP News of 23.12.2020 we had summarized how the Brexit will affect existing and future trademark and design protection rights.

Trademark Protection in China

A new trademark law has been in force in China since December 2019 to strengthen the position of trademark owners. The changes relate in particular to the use of a trademark, higher claims for damages in the event of trademark infringement and opposition to unlawful trademark applications.

Timely application of a trademark

Whoever in China registers a trademark first, will receive trademark protection. It is therefore advisable to register a trademark as a precautionary measure, even if the product launch for the Chinese market is not yet concretely planned.

It is important to be able to prove that the trademark is actually used after registration. (see also: Proof of use of a registered trademark). If a registered trademark is not used in 3 successive years, any natural person or legal entity may apply for cancellation of this trademark.

For the planning horizon of a trademark applicant: A trademark registration in China takes about 12-18 months: 9 months should be expected for the examination of the application. The opposition period is set with 3 months. Opposition proceedings can take up to 12 months.

Registration of a trademark in Chinese language

It is legally not required but advisable to apply for a trademark name for China also with suitable Chinese characters. Experience shows that trademarks with Chinese characters have a higher acceptance. When formulating a Chinese translation, care should be taken that it either comes as close as possible to the sound of the trademark or that it describes the trademark image in the best possible way.

Comprehensive trademark protection can consequently be provided via a logo, the Latin character and/or the Chinese character.

Trademark Infringement

Three Chinese courts, in Beijing, Guangzhou and Shanghai, deal exclusively with IP law. In court proceedings in China, the requirements for the evidence to be provided are very high. On the other hand, the deterrent effect associated with a claim for damages imposed by the court is great.

Alternatively, a dispute can also be resolved via the “Administration for Industry and Commerce” (AIC), which can, for example, order a sales stop or destruction of goods. In this procedure, however, only fines, not claims for damages, can be obtained.

In the event of a trademark infringement, it should be decided on a case-by-case basis and in consultation with a lawyer whether civil litigation or administrative proceedings are more expedient. The procedural paths can also be combined.

Injunction

A Chinese court can order an injunction even before the trial begins. This can either secure evidence for a later trial (application for preservation of evidence) or stop infringing actions until the trial (injunction).

Customs Protection

The seizure of infringing goods by customs is possible if the intellectual property rights are registered with the central administration of customs. The seizure and the subsequent investigation by customs as to whether or not there is an infringement must be applied for in advance by the trademark owner.

For more on protecting against trademark and product piracy, see our 9/2019 blog article.

The New Patent Law in China

In the IP News section (German) January 21, 2021, we summarized what new regulations will go into effect on July 1, 2021.