A trademark is one of the most valuable assets in your company. Create a strong trademark for your product and substantial value for your company.
A trademark is a monopoly right. Nobody else but you is allowed to use it as a trademark – or only with your consent. The stronger a trademark, the more value it has. It helps the customer to recognize the origin of a product coming from your company and thus to differentiate competition. It promises a certain quality, namely your quality, increases customer loyalty, attracts new customers and can determine pricing policy. Last but not least, it increases your negotiating position with traders and investors and influences the selling price when you sell your company or trademark.
As you may already know from your experiences or your advertising agency when advising on trademark strategy, the trademark process consists of three always mutually dependent elements: brand identity, brand positioning and brand image. Involvement of a lawyer with expertise in this field is not only sensible from a legal but also from an economic point of view.
Brand identity: Every product needs a face = a trademark. The brand identity is the self-image of the trademark and should contain all its essential features: What does it stand for and what should it stand for in future? What should it stand for in the future (message)? Who should be addressed? In which market should the good or service be offered? What value does it have and what value should it have in future?
A well-defined trademark identity is, therefore, the foundation for a strong mark.
How can I support you?
By consulting me, you can avoid duplication of work and unnecessary involvement of your advertising agency, later redesign of the sign and infringement of third party rights already during the planning stage. This saves you time and money.
Already at this essential step of development, I can give you guidance and legal advice on your trademark sign so that finally a strong trademark (right) can emerge.
The legal side of a trademark is just as relevant as the creative side. The stronger your trademark is under trademark law, the easier and more extensive it will be to prevent competitors from using a similar sign and from participating in your advertising and image.
- Examination of the registrability of the sign
Not every sign and logo and not every word or graphic is suitable to be registered as a trademark at all or it becomes – even if it is (just) sufficient for the registration of the trademark – only a weak mark that cannot keep competitors and free riders at a distance.
- Examination of other uses of the trademark
It is also possible that someone else already has rights to your desired trademark or a similar sign. This leads to the fact that you (also unknowingly) commit a trademark infringement. In that case you will be not longer be allowed to use your trademark and it also might become very expensive. In particular, the trademark owner will have a claim for injunctive relief and damages as well as the right to information against you, which are enforced by means of warning letter, preliminary injunctioYou might also have to destroy or relabel all products marked with the infringement sign. To reduce these risks, I do research whether and how you can avoid an infringement of prior rights. These results are part of the creation of the trademark sign.
- Development of trademark strategies and trademark portfolios
We develop a strategy for your trademark, how to build your trademark, increase its value and awareness and how to maintain it. If you are planning more than one trademark or even several product lines with different signs, I will develop an overall trademark strategy with you. This will enable you to present yourself to customers, suppliers and competitors in a targeted manner – and you strengthen your trademarks in your trademark portfolio.
If the brand identity is defined, the trademark needs to be positioned in the target market. Positioning means a clear message to other market actors what your brand stands for. So this is all about implementation. What do your customers associate with the trademark? What expectations do your customers have? Do your customers perceive your brand and how do they understand it? Do your customers only want your product because they have good experience with it?
What role does a lawyer play here?
- Securing your rights
First of all, it is essential to secure your trademark by filing an application in the correct scope and territory so that no third party gains priority and simply take away your trademark. I will carry out the application procedures before the corresponding trademark offices for you.
- Securing your rights
- Advertising your trademark
A brand positioning is accompanied by various advertising activities. When advertising, competition law and, if applicable, consumer rights and rights of third parties need to be considered To avoid the violation of competition or trademark law, I review the advertising regardinglegal permissibility.
- Advertising your trademark
Trademark law on the passive side
If another trademark owner is of the opinion that your trademark is too similar to his, I will take over the defence of your rights.
Thus, a third party can file an opposition against the registration of your trademark at the Trademark Office. The opposition proceedings can be terminated in various ways – and often there are ways – often your trademark can still be registered.
Moreover, a third party can request the cancellation of your trademark after registration for various reasons. I will support you in cancellation proceedings before the Offices or Courts.
An owner of a prior right can also claim injunctive relief and damages. This can be done by a warning letter, interim injunction or claim. I will develop the strategic procedure tailor-made case-by-case so that we achieve the best result for you.
Trademark right on the active side
Trademark law affects you not only in a passive role. If an identical or similar younger trademark is used on the market by a third party or if identical or similar products are offered under an identical or similar business identifier, this can (significantly) damage your trademark. Such signs disturb your positioning on the market, lead to a weakening of your trademarks (brand dilution), free-riders benefit from the result of your services and in the worst case, if you are inactive after a legally prescribed period, you even have to tolerate the younger sign and cannot take actions against it anymore.
To avoid this, you have the opportunity to file oppositions or cancellation requests against younger trademarks. If third parties infringe your signs, you are entitled to injunctive relief, damages, information, destruction and removal. The ways to assert these rights are warning letters, interim injunctions or claims. We will choose the most appropriate procedure based on all circumstances of the case and the best means of attack.
By monitoring your trademarks, we learn about new applications on time and can intervene immediately to prevent their establishment on the market before they seriously infringe your rights. An early action can save costs, e.g. opposition proceedings are a cost-effective legal remedy. Trademark monitoring is a sensible way to prevent dilution and weakening of your trademarks.
The reputation created by brand positioning is the image that customers, contract partners and competitors notice and feel about your trademark. Therefore, it is the result of brand identity and positioning and shows how the trademark is accepted by market actors. The image is subject to constant development, since a trademark can gain or lose image, which may be due to changes in brand identity or positioning – both, intended and unintended.
Why is legal professional support still important now?
Like every value, a trademark must be looked after and further developed.
This includes not only the renewal of the protection and the genuine use of the trademark to obtain the right (a trademark must be used, otherwise it is invalid).
As with trademark positioning, it is important to observe the market and to take action against infringing younger signs so that your trademark is not damaged or its reputation is exploited.
It will please me to support you in all these important steps to a successful and strong trademark.
- searches for prior trademarks, business signs and other rights that could conflict with your desired sign,
- trademark applications,
- development and managing of your trademark portfolio,
- trademark monitoring to detect conflicting new applications,
- out-of-court defence of your trademark by means of authorization requests and warning letters,
- conducting Office proceedings, such as in particular opposition and trademark invalidity proceedings,
- trademark infringement proceedings before the courts, in particular preliminary injunction proceedings and claims,
- deposition of protective letters,
- trademark contracts, namely license, trademark transfer and coexistence agreements (also called delimitation agreements),
- trademark renewals and
- border seizure procedures.