Trade mark protection
Only the signs that can be used to distinguish the products or services of one business from those of another can enjoy trade mark protection.
The various types of trade marks are regulated in Section 3 of the German Trade Mark Act (Act on the Protection of Trade Marks and other Signs - Markengesetz - MarkenG). The most common form of trade mark is the word mark, which may consist of one, or several words (such as Lego, Mercedes, Lego system, or Mercedes Benz), of letters and/or numerals (such as BMW, SLK, 501, 4711, A4), and of phrases and slogans (such as "Nothing is impossible - Toyota", or "Tupperware – lock in freshness"). Also quite frequent are figurative marks. They may consist of any kind of image provided that its distinguishing character is clearly recognisable (such as Audi’s four rings, or a stylised flower for Joop!). The combination of images and text (such as a black horse and a white horse with the word "Mustang", or a crocodile with the word "Lacoste") and the unique graphic design of words, letters or numbers (e.g. Davidoff Cool Water) are all figurative and word marks. More modern forms are the three-dimensional mark (e.g. BiC ball-points, the Odol mouthwash bottle), the colour mark (e.g. lilac for Milka), the sound mark (e.g. a radio station’s jingle), or a motion mark (a sequence of moving images).
Section 4(1) of the Trade Mark Act provides that the protection of a trade mark accrues in Germany with its registration with the Trade Mark Department of the German Patent and Trade Mark Office (DPMA). At the same time, the protection enjoyed by a trade mark can be extended to all EU Member States by registering it as a Community trade mark with the Office for Harmonisation in the Internal Market, in Alicante. In addition, international trade mark protection in many countries worldwide can accrue to a mark distinguishing a product if it is registered as an international trade mark with the World Industrial Property Organisation (WIPO) in Geneva.
In addition to registration as above, Section 4(2) Trade Mark Act provides that trade mark protection can arise through the use of a mark or sign in the course of trade. This occurs if the mark has gained commercial acceptance as a trade mark among the relevant public although it has not been entered in the official register. The mark is not a registered trade mark, but can claim the same protection as registered trade marks.
The third alternative for a trade mark’s accrual of protection requires that the mark be well known within the meaning of the Paris Convention for the Protection of Industrial Property (Section 4(3) Trade Mark Act). "Well known" (in some publications referred to as "notoriety") means that the use of a trade mark is prohibited and/or its registration cancelled upon request, where there is a likelihood of confusion with a well-known trade mark in another country belonging to the association. There is no requirement that a well-known brand be registered in a trade marks register. An example of a well-known trade mark is the Mercedes star.
As well as trade marks, the Trade Mark Act also protects business identifiers, specifically company symbols and the titles of works (see Section 1(2) and Section 5 of the Trade Mark Act).
Very many businesses have submitted applications for action by the customs authorities in order to protect trade marks (in most cases, registered trade marks). Trade marks are the most frequently infringed property right. Altogether more than half of all applications involve trade mark rights.
