Which makes more sense: To apply for a national German trademark or an EU trade mark?
Attorney at Law | Certified
Intellectual Property Law Attorney
If you or your company are active not only in Germany, but also in at least some other EU countries, and if you offer or wish to offer your products and/or services there under a particular trade mark, it makes sense to apply for an EU trade mark at the European Union Intellectual Property Office (EUIPO).
The EU trade mark has the advantage that protection can be obtained throughout the European Union by filing a single trade mark.
The EU trade mark is also relatively inexpensive. The official fee for an electronic application for an EU trade mark with three classes of goods and/or services is EUR 1050 and for a national German trade mark EUR 290.
It usually takes four to six months from the filing of an application to the registration of an EU trade mark, unless the application is refused on absolute grounds (e.g. for lack of distinctive character or because of the need to maintain the availability of the trade mark, i.e. the need for the public to be able to freely use the trade mark applied for for identical or similar goods or services) or your trade mark is attacked by an opposition based on earlier rights of third parties.
The period between filing and registration of a national German trade mark is usually between one and three months – provided the trade mark application is not objected by the German Patent and Trade Mark Office (DPMA) – and is thus significantly shorter than the period between filing and registration of an EU trade mark. The main reason for this is that a German trade mark application is registered after the examination of protectability and registrability by the DPMA, and the three-month opposition period, during which third parties can assert prior rights, such as earlier trade mark rights or company name rights, against the trade mark, only starts to run from the date of publication of the registration of the German trade mark (so-called post registration opposition procedure; Sec. 42 German Trade Mark Act).
In contrast, an EU trade mark application will be published in the EUIPO’s trade mark register after the examination of registrability and will be registered after the expiry of the three-month opposition period which starts from the date of publication of the application (Article 46 EUTMR), provided that no opposition has been filed against the EU trade mark.
Before filing a trade mark application – whether for a German trade mark or an EU trade mark – it is always advisable to search for prior rights of third parties which could prevent the registration and use of the trade mark applied for. Please do not hesitate to contact me for further information.