Registering a Trademark in Germany and the EU

DPMA or EUIPO: where should a business register its trademark?

The first question is reach. A German trademark at the DPMA protects the sign throughout the Federal Republic. An EU trademark at the EUIPO takes effect as a single unitary right across all 27 member states at once, from one application and under one administration. There is no intermediate tier for a handful of neighbouring countries; there is, however, the route of international registration, on which more below.

What decides the choice is your commercial radius. A business that concentrates its offering on the German market is better off with the national trademark: lower cost, and the same enforceable protection for its core territory. Once a company ships to several EU countries, builds up distribution partners there or sells online across Europe, the calculation shifts in favour of the EU trademark. It costs more, but it covers an entire single market for which separate national filings would, taken together, be considerably more expensive and harder to manage.

The EU trademark also has a downside that should be considered before filing. Its unitary character means that a single conflicting earlier right in a single member state can bring down the whole application. If the sign collides with an earlier mark in a smaller EU country where the applicant is not even active, the opposition still bites for the entire Union.

Where an EU trademark founders on such an obstacle, it can be converted into national applications while keeping its original priority date. That conversion, though, costs extra and delays protection. For a business with a clear but limited foreign footprint, the combination of a German trademark and targeted individual filings in the target countries can therefore be the more robust solution.

What does registering a trademark cost?

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

To this add the cost of renewal: protection runs for ten years from the filing date and can be renewed for further ten-year periods without limit. At the DPMA, renewal costs 750 euros for up to three classes, with 260 euros for each additional class. At the EUIPO, renewal again costs 850 euros for one class, 50 euros for the second and 150 euros for the third and each further class.

The fee structure steers behaviour. Anyone filing at the DPMA has three classes to use and should spend them deliberately, rather than giving one away or padding the specification at random. At the EUIPO, every additional class costs noticeably extra and forces a disciplined selection. One detail governs the entire priority date: at the DPMA, the fees and any class fees must be paid within three months of the application. If payment fails to arrive, the application is deemed withdrawn by operation of law, and the early filing date is lost.

On top of the official fees comes the legal work: the clearance search, drafting the specification and running the proceedings. It depends on the shape of the case and is where a sound filing differs most clearly from a risky one. A reliable clearance search before filing costs only a fraction of a later dispute or forced rebranding.

Which signs can be protected as a trademark?

Almost any sign capable of distinguishing one company's goods or services from those of others can be protected as a trademark. Section 3 MarkenG lists words, images, letters, numerals, sounds, three-dimensional shapes and even colours. In commercial practice, three forms dominate: the pure word mark, which protects the name independently of any graphic design; the figurative mark for a logo; and the word-and-figurative mark, which combines the two in a specific design. The word mark offers the broadest protection because it is not tied to a particular look. The word-and-figurative mark is easier to register where the word element alone would be too weak, but it protects more narrowly.

The limit is drawn by Section 8 MarkenG and its absolute grounds for refusal. A sign that lacks any distinctive character cannot be registered. This applies above all to descriptive terms: a sign that directly names the kind, quality or intended purpose of the goods must be kept free for the market and cannot belong to one party alone. A software vendor will not be able to monopolise the word “software”.

Also excluded are terms that have become generic, deceptive indications and signs that offend public policy or accepted principles of morality. For businesses, this is a common flashpoint between marketing and law: a name that explains the product at once sells more easily, but is often unprotectable for that very reason. A distinctive, self-standing name needs more explaining, yet it is legally durable and worth more over time.

Why does the clearance search decide the success of the application?

This is one of the most significant and most frequently underestimated risks. Neither the DPMA nor the EUIPO checks on filing whether identical or similar earlier trademarks already exist. Both offices examine only the absolute grounds of their own motion, that is, whether the sign is capable of protection at all. Whether it cuts across someone else's earlier right, no one checks. That responsibility rests entirely with the applicant.

The practical consequence is significant: A trademark can be registered without objection and still be vulnerable, because the owner of an earlier right only reacts after registration. That owner can file an opposition and, separately, sue for an injunction based on infringement of the earlier right. A registration certificate is therefore no guarantee that the sign is free to use. It proves only that the formal and absolute requirements are met.

Every serious application therefore begins with a similarity search. It cannot be limited to identical wording, because a trademark's protection also reaches signs that are aurally or visually similar. It must also have the right scope: a German application faces earlier German trademarks as well as earlier EU trademarks and internationally registered marks with effect in Germany.

Closely bound up with the search is classification under the Nice Classification. It divides all goods and services into 45 classes, of which 34 are goods classes and 11 service classes. A trademark's protection extends only as far as the specification filed. Draw the classes too narrowly and you leave business areas unprotected; draw them too widely and you pay for fields in which you do not use the mark, while handing others a line of attack.

How do the registration and opposition proceedings work?

The procedure starts with the filing. It requires the applicant's details, an exact representation of the sign and the specification of goods and services by class. Receipt fixes the filing date, and with it the priority that decides any later dispute. The office then examines the absolute grounds. If it objects to the sign, the applicant is given an opportunity to respond before any refusal is issued. If all is in order, the trademark is registered and published.

Regular processing at the DPMA takes several months, depending on the workload. Anyone in a hurry can request accelerated examination for a fee of 200 euros; the office then aims to decide on registration within six months. This matters above all where the German trademark is to serve as the basis for an international registration and to secure its priority.

Publication opens the critical phase for third parties. Under Section 42 MarkenG, the owner of an earlier trademark or trade name has three months to file an opposition. At the DPMA, that period runs from publication of the registration: the German trademark is registered first and can then be challenged. At the EUIPO, the period runs from publication of the application, so the opposition comes before registration.

The three-month period is strict: it cannot be extended, and restoration to the previous position (reinstatement) is ruled out. The opposition fee at the DPMA is 250 euros, with a further 50 euros for each additional earlier sign relied on. If no opposition is filed, or it fails, the trademark stands.

This period cuts both ways: it is the window in which a business can fend off other parties' applications, and equally the span during which its own young trademark remains open to attack. Ongoing watch of the registers is therefore part of trademark management.

What does the registered trademark protect, and what comes after registration?

On registration, Section 14 MarkenG gives the owner an exclusive right. The owner can prohibit others from using an identical sign for identical goods. It can also act against similar signs for similar goods where a likelihood of confusion exists, which includes the risk that the public mentally associates the signs.

Marks with a reputation enjoy extended protection that reaches beyond similarity of goods and covers the taking of unfair advantage of, or damage to, their reputation. Infringement gives rise to a claim for an injunction where repetition is likely and, where there is intent or negligence, a claim for damages, which may also be calculated on the infringer's profit or a reasonable licence fee.

The protection is not unconditional. Under Section 26 MarkenG, the trademark is subject to a use requirement. If it is not put to genuine use for the registered goods and services within five years, any third party can seek its cancellation for non-use (revocation), and the owner can no longer enforce its rights in a dispute. An over-broad specification thus backfires twice: it costs fees and, after five years, becomes a breaking point. Anyone registering a trademark should therefore align the specification with actual and planned use, not with wishful thinking.

Beyond the EU, the route is international registration under the Madrid System, administered by the World Intellectual Property Organization (WIPO). It requires a national base mark or application and extends its protection to selected member states, currently more than 130 countries together with the EU as a whole. For the first five years the international mark remains dependent on the base mark; if the base falls, the international protection falls with it. No worldwide unitary mark arises: protection exists only in the states designated. For exporting businesses, this route is nonetheless the most efficient way to build protection in several target markets from a single application.

Registration is only the beginning of trademark management. The ten-year protection lasts only if the business renews in good time, actually uses the mark and watches the register for later conflicts. A trademark kept up in this way is an asset that can be licensed, assigned and used as security. How such a licence agreement is put together is the subject of our guide to drafting licence agreements.