You are a founder or entrepreneur and want to protect your brand? The attorneys of KTR Legal explain in an interview how you can best proceed. Learn exclusively on unternehmenswelt.de how to conduct a trademark search, what you have to pay special attention to when choosing your brand name and what it costs to protect a trademark.
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Hello Janina, Hello Kilian! You are experts in providing legal advice to individual entrepreneurs and innovative SMEs. What advice do you give to founders who, in the course of incorporating their business, want to change their business idea or name?. Want to protect your brand from third party access?
Since the terms "trademark and "company name gladly misunderstood or. are used synonymously, we first sort out in the consultation: In which industry is the company active?? In which phase is the company- Business idea, startup, company with new product ideas?
This determines whether we are moving in the area of trademark protection or in company law. Both are rights that protect names in some form or another. As a "company is the name of a merchant, which is registered in the commercial register. The "brand if a trademark is used for goods and services. Often a company has both without knowing it.
The first step is to identify what the company needs and where it wants to go. So entrepreneurs should be clear about their goals and how their business works- best before choosing their company or brand name. If the name has already been chosen, we look together at how protection is possible and makes sense.
How to find the right brand or company name for me? What considerations should go into the choice?
The choice of the company or. brand name depends on many factors.
First: In which industry am I active? Who are my customers? How do I acquire? For lifestyle products and innovative concepts, a fancy name is usually an advantage; for older customers or certain marketing channels, a descriptive name that refers to the service is better. Word neologisms that are derived from partially descriptive terms and recomposed are popular- the more imaginative and less descriptive a trademark is, the better it can be protected.
Secondly: Do I want to focus my marketing more on the word or a logo? Both can be protected by trademark law. Here too, the more abstract and eye-catching the logo, the better it should be. Purely descriptive logos (e.g.B. the realistic image of a horse saddle as a logo for a manufacturer of horse saddles) are difficult to protect and are also not so well recognized by customers because there are no striking features that are memorable to customers.
Third: How important is the brand for the business model? In the case of products that still enjoy other protection, for example because they contain patented inventions, the trademark does not have to be in focus.
If, on the other hand, it is a business model that cannot be protected, such as a platform, then the trademark is the most important legal protection mechanism. The more creative and unusual the brand is, the better it can be protected from imitators. This should be thought through from the outset.
What do I have to pay attention to when choosing a brand or a company name?? Are there any legal requirements or. specific prohibitions?
Certain terms are problematic to protect under trademark law and under company law, respectively. inadmissible.
For the trademark, the most common mistake is to pick an overly descriptive name, since descriptive terms cannot be monopolized by trademark law for a company. So, if I sell flowers and I call myself "Beautiful Flowers", then the trademark is the most important legal protection mechanism If you want to call your company by its name, the trademark office will not accept this name as a trademark. If, on the other hand, I want to manufacture computers and smartphones and call myself "Apple" If I call my company a "GmbH", that’s okay, because the term "apple" has no relation to my products. There are also other no-gos. For example, trademarks may not offend common decency, contain prohibited symbols or represent national emblems.
In the company law there are similar specifications. The company name must be suitable for identifying the company, must indicate the legal form (i.e., e.g., the name of the company, the name of the company, the name of the company, etc.). the addition "GmbH or "OHG" bear) and must not be misleading. The company must not be too similar to a local competitor and must not be deceptive about the content of its business activities.
Whoever sets up a company has to make a choice – "personal company", "real company", "fantasy company" or "mixed company" – can you explain to us what these terms are all about and for whom is which company name most suitable??
These distinctions are not mandatory or legally defined categories. Whether the company is named after the owner, consists of a fantasy term or a number-letter combination, is legally not decisive.
However, these terms can be helpful to visualize what possibilities exist and to gather inspiration and ideas. In the case of a personal company, for example, the company name consists of the names of one or more owners, whereas the tangible company bases its name on the business field. The fantasy company has nothing at all to do with the owners or the field of activity, it can be "1Xo5" or "Hubbeldidum" hot. It is important to follow the above principles. Especially in the case of the factual company, an infringement can easily be pass against the principles of company law, for example if the name conveys a different (untrue) content or is too general. „Handel GmbH" is for instance not a company name suitable to distinguish it from other companies.
What is the advantage of having a trademark protected at all??
The protection of the brand is primarily an investment protection. I will illustrate this with a fictitious example: Entrepreneur Hans manufactures luxurious soaps. To target customers, he rolls out a high-value, high-cost marketing campaign on Instagram. It works, he finds many customers who appreciate his product quality and become multiple buyers. Other customers see his advertising more often and keep thinking: "I want to buy this soap or give it as a gift.“
From a trademark perspective, there are then several scenarios in practice:
Scenario 1: Everything is fine, Hans sells many soaps and becomes even better known.
Scenario 2: At some point, another company notices that Hans is selling his soaps under a trademark that the company had protected years ago. Namely, Hans forgot to do a trademark search before going to market. He is warned, has to pay the lawyer’s fees of the other side (from about 1.500 EUR net), but above all he has to give up the name. This means that he has to rename his store, move his website to another domain, give up his email address and relabel all his products. In short, change everything that his previous brand includes. Most importantly, his marketing campaign also loses value as a result. Either he has to stop it, if it is still running, or in any case he will profit less from it, because his recruited customers will no longer find him under the previous name.
But that is not enough.
Scenario 3 means, Hans is doing fine, he did a trademark search before entering the market and feels safe. He also secured his domain, which was still free. In trademark law, however, what matters is not who started using the trademark first, but who is on the register first. A few months after Hans’ Sales start, the same or a very similar trademark is registered by another company. Now Hans is like in scenario 2. He receives a warning letter, has to rename his company and loses an unknown number of customers. Even with his domain he was the first, but he is not allowed to use it anymore, because he is forbidden to use the brand name altogether.
Scenario 4: Another competitor enters the market that also offers soaps and chooses a very similar brand to Hans’. Many customers confuse the competitor’s website and advertising with Hans’ company. If Hans has not applied for a trademark, he can not prohibit this.
When choosing the legal form, do I not already have the possibility to protect my trademark – keyword entry in the commercial register?
The entry in the commercial register must not be confused with the trademark application or the trademark registration. confuse the trademark register. Perhaps a short excursion into the basics of trademark law: The company name is entered in the commercial register registered- this is how the name of a businessman or businesswoman is called. a company, even if the word company is used in common language as a synonym for a company. The company therefore rather denotes the owner or. the company itself.
A trademark, on the other hand, identifies the relationship between the manufacturer and the products or services. Therefore, a company with a single name, for example Nestle, can use many trademarks side by side and thus serve different product segments.
The distinction between a company name and a trademark is difficult to understand at first (and in some cases the names overlap), but founders should at least remember that in both cases they are using the existing rights of an older company or a trademark. trademark owners should check in time- no matter whether it is about the registration of the company or the use of a trademark.
How do you research whether there are already older trademark rights or companies??
The best way to start a search is early and very simple: on Google.
In addition, the trademark registers are available internationally online, so you can find out who is behind the fantasy name on the site of the German Patent and Trademark Office (dpma.de), at the European equivalent EUIPO (euipo.europe.eu) or on the website of the World Intellectual Property Organization (wipo.int) use the search mask. It is important to search not only for the desired name, but also for variants, variations and other spellings.
If identical or similar trademarks are found, this does not necessarily mean the end here it is best to consult an expert in trademark law for further help. The assessment of a trademark similarity follows special rules and is strongly influenced by court decisions, therefore a lot of experience with trademark collisions is needed for the assessment.
If you want to be absolutely sure, you can also hire a professional research service. Although these service providers also "only" search the public registers, but they can do it cheaper and more extensively than if you research on your own. In addition, the search algorithms of the trademark offices are not very good. A layman can therefore easily overlook a hit that the service provider finds.
Which company name can freelancers choose, who in principle do not have to register a business? Are there nevertheless legal defaults for the designation of the business activity?
Strictly speaking, freelancers cannot choose a company name at all, because a company is a designation registered in the commercial register. It is still okay if a freelancer wants to give himself a marketing-effective fantasy name, he should only pay attention to the correct use of the name.
Often one finds for example in the imprint of web pages only the fantasy name and an address in addition, although the operator of the web page is a freelancer or retailer. This is a gross violation, which can be warned off. It must always be clear from the imprint who is responsible for the website and since the fantasy name of the freelancer is not registered in the commercial register, there is no way to find out who is behind the fantasy name.
So for freelancers and sole proprietors: The fancy name must always be combined with the personal name. Of course also in the imprint the fantasy name or the name of the web page can stand, but always only additionally. In addition, the impression must not be created that it is a company, such as a GmbH or a UG. Because a freelancer does not have a company name in the legal sense, the registration and use of a trademark is therefore particularly interesting for freelancers.
I have decided on a trademark, what happens next?? Where can I protect my trademark?
Trademark rights are always granted country by country, in some regions there are also uniform trademarks for several countries (bspw. in the European Union). Most founders first decide on a German brand or a Union brand, depending on their business model and budget. The registration then takes place at the respective office. In Germany the German Patent and Trademark Office in Munich is responsible, for the EU the EUIPO in Alicante, Spain. In addition, international registrations for several countries worldwide can be made at the World Intellectual Property Organization (WIPO) in Switzerland.
The process is almost always the same:
- Once the trademark strategy is in place, the founder must decide which goods and services he would like to offer under the trademark. This selection is an elementary part of the trademark application process.
- As soon as the application fee is paid and all documents are submitted, the office checks the admissibility of the trademark application. What many do not know: The office does not check whether a trademark has already been registered in this way. This is what trademark owners have to take care of themselves.
- Once the application has been examined by the office, it is published and older trademark owners then have a few weeks to months to file an opposition in the event of a trademark collision.
- If no opposition is received, the trademark is registered.
What does a trademark registration cost?? Are there other costs?
Compared to how much trouble you can save by filing a trademark application, registration is relatively affordable. The application fees for a German trademark currently start at 290 EUR, the fees for an EU trademark at 850 EUR. For the consultation regarding the right trademark strategy and the accompaniment of the application procedure, you can expect additional legal fees starting at 250 EUR net, depending on the scope of services and the effort involved.
From legal practice: In your experience, what are the biggest stumbling blocks on the way to a legally secure, unique and at the same time melodious company name?? What common mistakes do founders make and what tips do you have for them??
There are many stumbling blocks. The most common one is to either forget about trademark law completely or to consult a professional too late when choosing a brand name. Once the entrepreneur has fallen in love with a trademark or a company, but it is not registerable, the disappointment is big. It is better to go to the lawyer with 2-3 ideas and work out together which goals can be achieved by which trademark. A well-planned trademark strategy is an essential part of marketing and a wrong decision can only be corrected later with difficulty.
Thank you, Janina and Kilian, for taking the time to provide our members with such comprehensive information!
You are a founder and need legal advice?How to contact KTR Legal
Attorney Janina Albrecht and attorney Kilian Springer work as an office partnership at the intersection of legal advice, disruptive technology and innovation. You advise startups, companies and freelancers in the areas of foundation, trademark law, internet and marketing law as well as software and IT law. Your clients are mainly digital and innovative companies. In addition to their offices in Leipzig, Berlin and Hamburg, the two lawyers provide consulting services throughout Germany.
All offered services and contact can be found on the website of KTR Legal.
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