Top 7 Misconceptions in Trademark Law

No. Let’s say you name your new beverage Coca-Cola, but don’t register a trademark. Would you seriously hope that would go well? Of course not.

Why should it be any different if you intentionally or negligently infringe one of the hundreds of thousands of other trademarks without having registered a trademark yourself? Trademark law affects every entrepreneur.

Even the selection of the color of the chocolate wrapper in the owner-managed chocolate factory can lead to severe trademark infringements.

No. All identifiers of companies, goods and services must be checked before the market launch. Trademark law does not tolerate any delay.

Speaking of “putting it off until later.” Anyone who launches new goods or services invests an enormous amount of time and money to be successful. Do you want to risk this investment by only resolving basic legal issues when the company is finally doing well?

Don’t do that. We have already seen hardened entrepreneurs with tears in their eyes because everything was taken from them by competitors who were excellently positioned in terms of trademark law.

In the event of trademark infringements, there is a threat of a prohibition that is unlimited in time, the total loss of the established reputation and high claims for damages. Not even the previous domain may then be forwarded to the new domain.

No. A check for identical marks is not enough. It depends on the risk of confusion. This means that even merely similar terms can be an obstacle.

When assessing the risk of confusion, all aspects of the trademark and the selected classes must be taken into account. There are (without exaggeration) thousands of court rulings on this. Trademark law cannot be solved with common sense.

To make it even more complicated: conversely, under certain conditions, even identical terms can be completely unproblematic.

Miro, Myrro, Wiro, Xiro, Siroo – with which arguments would you assess the risk of confusion between these trademarks?

No. A risk of confusion can also exist between trademarks in different classes. Therefore, the interactions between the classes must be observed.

This is easy with classes that have obvious similarities, e.g. class 9 software and class 42 IT service. A trademark for software in class 9 therefore also requires a search in class 42 – and in up to five other classes.

What is necessary and useful often differs even between companies in very similar business areas. Therefore, there is currently no automatic tool for selecting all the classes to be included. Trademark law is very much case-by-case.

Do you know how many classes a bicycle dealer – i.e. not a particularly complicated profession – might need?

No. Research in the trademark register is a good start. However, a trademark also has company law, copyright, design law and competition law aspects.

Anyone who only checks a trademark under trademark law continues to risk life and limb. Trademark protection needs more than trademark law.

For an EU trademark, 29 trademark registers, 27 company registers and countless other databases for business names, product names, designs and copyrighted titles in 27 countries must therefore be searched. Do you have the necessary tools for this?

No. The trademark office does not check whether your trademark infringes earlier rights. Even if you register a trademark that is quite clearly already registered and infringes earlier rights, the trademark office would register your trademark.

It is not the task of the trademark office to inform you about infringements. That is the task of trademark attorneys.

The apparent feeling of success “trademark registered” does not offer you any protection against earlier rights – this is provided exclusively by a comprehensive legal review before the trademark is filed. Do you really want to try it yourself?

Quite a bit. A preliminary search via Google for identical trademarks in your industry is a good idea. If there is a competitor with the same name in your country, then this is often a showstopper.

In addition, check whether there is still a useful domain available for your desired trademark. Thanks to the many new domain endings, this is often the case.

But this is not really necessary. Upon request, we offer an initial quick check including ranking for up to three trademark names as part of our trademark protection packages at no extra charge. The detailed check is then only carried out on the most promising candidate.