Register a trade mark in Germany, in individual Member States and/or in the EU

DPMA or EUIPO: Where should a company register its trade mark?

The first question concerns scope. Virtually every country in the world has its own authority that can grant national protection to a sign. For example, a German trade mark registered with the DPMA protects the sign throughout the whole of Germany. Similarly, a trade mark registered with the Bulgarian BPO protects the sign within Bulgaria. An EU trade mark registered with the EUIPO provides uniform protection across all 27 Member States simultaneously, based on a single application and administered centrally. Important: Once applied for, international extension of protection for a national or EU trade mark can be applied for at WIPO, subject to additional fees. When making this application, you can choose the additional countries for which protection is sought. 

The decisive factor is the scope of business operations. Those who focus their offering on the German market will find the national trade mark more cost-effective and will receive the same enforceable protection for their core territory. As soon as a company supplies goods to several EU countries, establishes distribution partners there or sells online across Europe, the balance shifts in favour of the EU trade mark. It costs more, but covers the entire single market, for which individual national applications would, on the whole, be significantly more expensive and more labour-intensive to manage.

However, the EU trade mark has a downside that should be taken into account before filing an application. Its unitary nature means that a single conflicting earlier right in a single Member State can invalidate the entire application. If, for example, the mark conflicts with an earlier trade mark in a smaller EU country in which the applicant company is not even active, the opposition still applies across the entire Union.

If the EU trade mark fails due to such an obstacle, it can be converted into national applications whilst retaining its priority date. However, this conversion incurs additional costs and delays the granting of protection. For companies with clear but limited international business, the combination of a German trade mark and targeted individual applications in the target countries may therefore be the more robust solution.

How much does it cost to register a trade mark?

The official fees are fixed and publicly available. At the DPMA, an electronic application costs 290 euros and covers up to three classes of goods and services. A paper application costs 300 euros. Each class from the fourth onwards costs 100 euros. At the EUIPO, the basic fee for an electronic application is 850 euros, but this covers only a single class. The second class costs 50 euros, and the third and each subsequent class 150 euros.

On top of this come the renewal costs: protection is valid for ten years from the filing date and can be renewed as often as desired, for a further ten years each time. At the DPMA, renewal costs 750 euros for up to three classes, with each additional class costing 260 euros. At the EUIPO, the fee is again 850 euros for one class, 50 euros for the second, and 150 euros for the third and each additional class.

The fee structure influences the application strategy. Anyone applying to the DPMA has three classes free of charge and should make careful use of them, rather than wasting one or filling the list haphazardly. At the EUIPO, each additional class incurs a significant extra cost, forcing a disciplined selection. One detail determines the entire priority date: the fees and any class fees must be paid to the DPMA within three months of filing the application. If payment is not made, the application is deemed to have been withdrawn by operation of law, and the early filing date is lost.

In addition to the official fees, there are the legal fees for conducting searches, drafting the list of goods and services, and managing the proceedings. These depend on the nature of the case and are the real factor that distinguishes a sound application from a risky one. A thorough search for prior art before filing the application costs a fraction of what a subsequent legal dispute or a forced re-naming would cost.

Which signs are eligible for protection as a trade mark?

Almost any sign that is capable of distinguishing a company’s goods or services from those of others can be protected as a trade mark. Section 3 of the German Trade Marks Act (MarkenG) lists words, illustrations, letters, numbers, sounds, three-dimensional designs and even colours. In business practice, three forms predominate: the word mark, which protects the name independently of any graphic design; the figurative mark for a logo; and the combined word and figurative mark, which combines both in a specific design.

The word mark offers the broadest protection because it is not tied to any specific visual appearance. The word and figurative mark is easier to register if the word element alone would be too weak, but in return offers narrower protection.

The boundary is set by Section 8 of the German Trade Marks Act (MarkenG) with its absolute grounds for refusal. If a sign lacks any distinctive character, it is not registrable. This applies above all to descriptive indications: a sign that directly denotes the nature, quality or intended purpose of the goods must remain freely available to the market and does not belong to any single party. Anyone selling software will not be able to monopolise the word ‘software’. Also excluded are terms that have become generic designations, misleading indications and signs that contravene public policy or public morality.

For businesses, this often creates a conflict between marketing and legal requirements: a name that immediately explains the product is easier to market, but is often ineligible for protection precisely for that reason. A distinctive name in its own right requires more explanation, but is legally sound and more valuable in the long term.

Why does the search determine the success of the application?

This is one of the greatest – and at the same time most frequently underestimated – risks. Neither the DPMA nor the EUIPO checks, at the time of application, whether earlier identical or similar trade marks already exist. Both offices automatically check only for absolute grounds for refusal – that is, whether the sign is eligible for protection at all. Nobody checks whether it conflicts with a third party’s earlier right. This responsibility lies entirely with the applicant.

The practical consequence is significant: a trade mark may be registered without any issues and yet still be vulnerable to challenge because the proprietor of an earlier right only reacts after registration. They may file an opposition and, irrespective of this, bring an action for an injunction on the grounds of infringement of their earlier right. A certificate of registration is therefore no guarantee that the sign is free to use. It merely confirms that the formal and absolute requirements have been met.

A similarity search must therefore precede any serious application. It must not be limited to identical wordings, as the protection afforded by a trade mark also covers signs that are phonetically or visually similar. It must also have the correct scope: a German application is subject to earlier German trade marks as well as earlier EU trade marks and internationally registered trade marks with protection in Germany.

Closely linked to the search is the classification under the Nice Classification. This divides all goods and services into 45 classes, comprising 34 classes for goods and 11 for services. The protection afforded by a trade mark extends only as far as the scope of the goods and services listed in the application. If the classes are defined too narrowly, business areas remain unprotected. If they are defined too broadly, the applicant pays for areas in which the trade mark is not used, whilst at the same time creating a vulnerability to challenge.

How does the application and opposition procedure work?

The procedure begins with the filing of the application. The application must include details of the applicant, a precise representation of the sign and a list of goods and services classified by class. The date of receipt determines the filing date and, consequently, the priority date, which is decisive in the event of any subsequent dispute. The Office then examines the absolute grounds for refusal. If it objects to the sign, the applicant is given the opportunity to comment before a refusal is issued. If everything is in order, the trade mark is registered and published.

Standard processing by the DPMA takes several months, depending on the workload. Those in a hurry can apply for an accelerated examination for a fee of 200 euros. The Office will then aim to reach a decision on registration within six months. This is particularly relevant if the German trade mark is to serve as the basis for an international registration and secure its priority.

Once the application has been published, the critical phase for third parties begins. The proprietor of an earlier trade mark or business name may file an opposition within three months in accordance with Section 42 of the German Trade Marks Act (MarkenG). At the DPMA, this period runs from the date of publication of the registration; the German trade mark is therefore registered first and may subsequently be challenged. At the EUIPO, the time limit runs from the date of publication of the application; consequently, opposition proceedings there commence before registration takes place.

The three-month period is strict: it cannot be extended, and reinstatement to the previous status is excluded. The opposition fee at the DPMA is 250 euros, with an additional 50 euros for each further earlier mark cited. If no opposition is filed or if it is unsuccessful, the trade mark stands.

This time limit works both ways: it is the window during which a company can defend itself against third-party applications, and at the same time the period during which its own newly registered trade mark is still vulnerable to challenge. Continuous monitoring of the registers is therefore an integral part of trade mark management.

What does a registered trade mark protect, and what happens after registration?

Upon registration, the proprietor is granted an exclusive right under Section 14 of the German Trade Marks Act (MarkenG). They may prohibit third parties from using an identical sign in relation to identical goods. They may also take action against similar signs in relation to similar goods, provided there is a likelihood of confusion, which includes the risk that the public might mentally associate the signs with one another. Well-known trade marks enjoy extended protection which goes beyond the similarity of the goods and covers the exploitation or impairment of their reputation.

Infringement gives rise to a claim for an injunction where there is a risk of repetition and, in the event of wilful infringement or negligence, a claim for damages, which may also be calculated on the basis of the infringer’s profits or a reasonable licence fee.

This protection is not unconditional. Under Section 26 of the German Trade Marks Act (MarkenG), the trade mark is subject to a requirement to use it. If it is not put to genuine use in relation to the registered goods and services within five years, any third party may apply for its cancellation on the grounds of revocation, and the proprietor will no longer be able to enforce their rights in the event of a dispute. A list that is too broad therefore backfires in two ways: it incurs fees and becomes a weak point after five years. Anyone applying for a trade mark should therefore base the list on actual and planned use, not on wishful thinking.

Beyond the EU, the route to international registration lies with the Madrid System, which is administered by the World Intellectual Property Organisation (WIPO). It requires a national base trade mark or application and extends its protection to selected member states – currently over 130 countries, including the EU as a whole.

For the first five years, the international trade mark remains dependent on the basic trade mark. If the basic trade mark lapses, so does the international protection. This does not create a single global trade mark; protection is limited to the designated states. For exporting companies, however, this is still the most efficient way to establish protection in several target markets with a single application.

Trademark management only really begins once the trademark has been registered. The ten-year period of protection only applies if the company renews the registration in good time, actually uses the trademark and monitors the register for any recent conflicts. A trademark managed in this way is an asset that can be licensed, transferred and used as collateral. Our article on drafting licence agreements explains how such a licence agreement is structured.