Trademark Act Requirements (PDF)

A. Requirements concerning the application, Sec 32 TMA (German Trademark Act) (1) Applications for the registration of a trade mark in the Register shall be filed with the German Patent and Trade Mark Office. […] (2) The application shall contain: - a request for registration - information permittin...

A. Requirements concerning the application, Sec 32 TMA (German Trademark Act) (1) Applications for the registration of a trade mark in the Register shall be filed with the German Patent and Trade Mark Office. […] (2) The application shall contain: - a request for registration - information permitting to identify the applicant, - a representation of the trade mark, which is not subject to the ground for refusal specified in section 8 (1), and - a list of the goods or services for which registration is being requested. Excursus: Classification for trademarks as required by Sec 32 (2) no. 4 TMA Summary: Classification of trademarks under Article 32(2)(4).4 TMA ➢ ➢ ➢ ➢ uniform classification database as agreed on in Nice-Agreement Goods and services must be assigned to their respective classes at the time of application 45 different classes, 73.000 keywords Differentiation according to the subject matter of the goods / services Excursus: Forms of trademarks 小结：商标的形式 ➢ Word marks (Sec 7 GOTMA) = consisting of one or more words or of characters such as letters, numbers or special characters; all customary forms of reproduction are included ➢ Figurative marks, word/figurative marks (Sec 8 GOTMA) = marks with word and figurative elements (combination marks), where the color indication and color design are important for determining the subject matter of protection ➢ Three-dimensional marks (Sec 9 GOTMA) = similar requirements as set out in Sec 8 GOTMA ➢ Abstract color marks (Sec 10 GOTMA) = subject matter of protection are colors and color combinations of single or multiple colors detached from concrete representations and figurative limitations (=> NOT colored trademark representations of another form of mark) ➢ Sound marks (Sec 11 GOTMA) = the application must be accompanied by a representation on a data carrier or a graphic representation of the sound mark (e.g. musical notation, mp3 file, ...) ➢ Tracer marks (Sec 12 GOTMA) = they are used in particular for cables and are subject to the same standards as other graphic design elements, designs and presentations ➢ Position marks (Sec 12 GOTMA) = the object of protection is the placement of the sign in a specific, always identical position ➢ Further forms of trademarks: Motion marks, multimedia marks, pattern marks, hologram marks, tactile marks, light marks, smell marks & taste marks 16 B. Formal filing requirements pursuant to Sec 36 TMA (1) The German Patent and Trade Mark Office shall examine whether 1. the application for the trade mark satisfies the requirements for the accordance of a date of filing in accordance with Sec 33 (1); 2. the application complies with the other conditions of filing; 3. the sufficient amount of fees has been paid; and 4. the applicant may be a proprietor of a trade mark in accordance with Sec 7 【Attached】 Article 33, paragraph 1 Section 33 Date of filing, right to registration, publication of the application (1) The date of filing of the application for a trade mark shall be the date on which the applicant has filed the application containing the information specified in section 32 (2) at the German Patent and Trade Mark Office. The receipt of the application documents by a patent information centre which has been designated to accept trade mark applications by notice published by the Federal Ministry of Justice and Consumer Protection in the Federal Law Gazette shall be deemed as receipt by the German Patent and Trade Mark Office. What happens, if the requirements pursuant to Sec 36 (1) TMA are not met? ➢ Problem with Sec 36 (1) no. 1 TMA? => Solution in Sec 36 (2) TMA! ➢ Problem with Sec 36 (1) no. 2 TMA? => Solution in Sec 36 (4) TMA! ➢ Problem with Sec 36 (1) no. 3 TMA? => Solution in Sec 36 (3) TMA! ➢ Problem with Sec 36 (1) no. 4 TMA? => Solution in Sec 36 (5) TMA! Section 36 Examination of the conditions of filing (1) The German Patent and Trade Mark Office shall examine whether 1. the application for the trade mark satisfies the requirements for the accordance of a date of filing in accordance with section 33 (1); 2. the application complies with the other conditions of filing; 3. the sufficient amount of fees has been paid; and 4. the applicant may be a proprietor of a trade mark in accordance with section 7. (2) If deficiencies of the application ascertained in accordance with subsection (1) no. 1 are not remedied within a period set by the German Patent and Trade Mark Office, the application shall be deemed to have been withdrawn. If thedeficiencies ascertained are remedied within that period, the date on which the deficiencies were remedied shall be accorded as the date of filing. (3) If class fees are not subsequently paid within a period set by the German Patent and Trade Mark Office, or are not paid in a sufficient amount, or if the applicant does not specify which goods or service classes are to be covered by the amount of fees paid, first the leading class and then the other classes shall be accounted for in the order of the classification. In other respects, the application shall be deemed to be withdrawn. (4) If other deficiencies are not remedied within a period determined by the German Patent and Trade Mark Office, the German Patent and Trade Mark Office shall refuse the application. (5) If the applicant cannot be a proprietor of a trade mark in accordance with section 7, the German Patent and Trade Mark Office shall refuse the application. 17 5. Preconditions, scope and restrictions of the protection of trademarks (2) 5.1 Subject of protection of the property right, Sec 3 (1) TMA Section 3 Signs eligible for protection as trade marks (1) All signs, particularly words including personal names, designs, letters, numerals, sounds, three-dimensional designs, the shape of goods or of their packaging as well as other wrapping, including colours and colour combinations, may be protected as trademarks if they are capable of distinguishing the goods or services of one undertaking from those of other undertakings. P.: Worldmarks (monogram, letter mark, letterhead logo) All customary forms of representation have to be considered 【subtitle】does it makes sense when you have just a word to protect only a certain to type of writing, or does it make you more sense to pack every kind of protection? (Does it make more sense to protect a specific type of writing or to package every single word to protect it?) when you're having a physical product and you want to put your trademark apple on it, but you don't write it like apple does it with a capital A and “pple” in small letters, but you just write it with only capital letters, didn't make any difference.Summary：(Upper and lower case letters do not justify distinguishing a trademark because it does not affect comprehension.) P.: Figurative marks 图形商标 Scope of protections is limited to the specific color request in registration 【subtitle】I think it's limited to the specific color that it is registered. Because the consumers remember the specific colors and they don't want to change it. 5.2 Special grounds for exclusion from protection under Sec 3 (2) TMA Section 3 (2) Signs consisting exclusively of shapes or other characteristics 1. which result from the nature of the goods themselves; 2. which are necessary to obtain a technical result; or 3. which give substantial value to the goods shall not be capable of being protected as trademarks. 18 【subtitle】these are special grounds for exclusion of protection. 1. The shape or character of the goods themselves The goods specific form, Sec 3 (2) no. 1 TMA = Excluded from protection are signs which consist exclusively of shapes or other characteristic features which are due to the nature of the goods themselves Extensive Interpretation by the CJEU: the ground for refusal already applies if the sign represents characteristics of the product which are typical for the type of product Rittersport-case: The Federal Court of Justice (BGH) found, that the shape of the packing simply followed the shape of the product => No protection under trademark law 【subtitle】The shape of the packing is depose the shape of the product, we cannot have trademark Protection. Even if you have any kind chocolate bar, it's. more or less in some quadrangle form, so you can't think of any different form. 2. Technically necessary forms The technically necessary form, Sec 3 (2) no. 2 TMA = Trademark protection is excluded if the sign consists exclusively of shapes or other characteristic features necessary to achieve a technical effect  In order to examine the functionality of a sign, the essential characteristics of a shape must be assessed with regard to the technical function of the specific product in question  Rubik's cube: Is the technical function of a three-dimensional puzzle protectable as a trademark? 【subtitle】You can only map the course if you have again this 3 dimensional form. So they need simply need to have a certain form. And now if this is technically necessary, of course you cannot protect that as well. (You can only realize the effect if you have a three-dimensional form. So they need to have a certain form. It's technically necessary and certainly not protectable under trademark law.) 3. Having substantial value The value-based form, Sec 3 (2) no. 3 TMA = Trademark protection does not cover the substantial value that it gives to the product  However, the aesthetic value must be so important that the public sees the aesthetic 19 design itself as the actual tradable good  Possible criteria: Nature of the category of goods in question; artistic value of the shape in question; distinctiveness compared to other shapes commonly used in the respective market; significant price difference compared to similar products; elaboration of a marketing strategy that highlights the aesthetic qualities of the respective product 【subtitle】can be protected as copyright or design. 5.3 Proprietors of filed and registered trademarks, Sec. 7 TMA  Natural Persons  Legal Persons  Partnerships in so far as they are equipped with the capacity to acquire rights and enter into liabilities 【subtitle】Basically anyone can be a trademark owner 5.4 The representability of the mark in the register, Sec 8(1) TMA Section 8 Absolute grounds for refusal (1) Signs eligible for protection as a trade mark within the meaning of section 3 which are not capable of being represented on the Register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of protection shall be excluded from registration. 【subtitle】only once in the register that is important. And 2 principles follow from that. The first one is the principle of irreversible that they might apply before. So due to the fact that we have definitely leave established a trademark, we cannot change it afterwards. So we can apply it for another trademark for protecting, but we cannot change the already existing trademark. Because your trademark is actually assigned to distinguish yourself from other companies. And no one would recoginse you if you change your trademark. Then this distinctive character would not be there anymore. So it just wouldn't make sense to allow that. the content authorities and the public must be able to clearly and unambiguously. Determine the subject of Protection just from what is in your registration. And just from what is in your register, it must be able to assess the scope of protection of this specific framework.  Requirement of particularity of the representation of the mark, Sec 32 (2) 20