An essential condition for the registration of a trademark is its distinctive character, i.e., the ability to distinguish, in commercial transactions, the origin of a product or service from that of other products or services. To protect this indication of origin effect, a newly registered trademark shall not conflict with older, already existing marks or "signs." The German and European Trademark Offices assess possible legal and protective conflicts before registration only for "absolute grounds for refusal" such as lack of trademark capability, intent to deceive or use of unauthorized national emblems. For this reason, it is the responsibility of the applicant for a new trademark to search for possible "relative grounds for refusal."
The priority principle is universal in trademark law. If there is too much similarity, the holder of an already registered trademark can file an opposition against a new mark, issue a cease-and-desist letter or bring an action for cancellation. A collision usually occurs when somebody sells similar goods or services sold under brands with a similar design or sound. Trademark owners can prohibit others from using trademarks if there is such a likelihood of confusion. However, in the case of standard register marks, the industrial property right only applies to the goods and services specified when the mark was registered.
Take special care with well-known brands. The more famous a trademark, the broader is its scope of protection - regardless of the actual registered product or formerly registered service. Marks with a national or international reputation have such a broad extent of protection that even a distant resemblance to the trademark name or its design infringes their rights. Even the mere association with a well-known trademark is considered to affect its function as a trademark.
When searching for older trademarks, you may often forget the other distinguishing signs. However, company names, book, magazine, magazine and film titles, software designations, titles of sound or stage works or, for example, event names are protectable like all works that can be named. It is necessary to consider a possible collision with these work titles before registering a new trademark.
Considering the variety of intellectual property rights and claims in trademark law, you should consult an expert when searching for a trademark. We will be pleased to support you with our knowledge and experience in trademark law - all the way from the search and registration of new marks to the monitoring of existing brands.