Patents, trademarks and designsINVEST IN GERMANY

Patents, trademarks and designs

Intellectual property (IP) rights are important as quality indicators and distinguishing characteristics of products. The number of filings at the European and German Patent and Trademark Offices is growing, because IP rights are of particular significance for innovative SME as well as universities. Also foreign investors are welcome to register their IP rights as well as to take part in transfer actions.

Patents

Patents
  • New inventive step applicable
    in the industry
  • Protection period: 20 years
Proceedings period
  • 2 ~ 2 ? years
Costs
  • Filing fee: EUR 60.00
  • Examination fee: EUR 350.00
  • Lawyer’s fee: negotiable

The patent grants to the owner the exclusive individual rights to his invention for 20 years. He can gain profits from licensing or prohibit competitors from using his invention so making it difficult for them to enter the market.

Applications should be filed at the German Patent and Trade Mark Office (www.dpma.de). They should be granted for technical inventions which are new, involve an inventive step and are suitable for industrial or IT application. For definition of these terms the complex patent regulations, which combine technology, law and industry as well as case law, have to be taken into account. The filing date ensures that applications filed by others at a later date for a similar invention will not be granted. It is essential not to disclose the invention in any way prior to the application (file first, publish later). The filing is not detrimental to a subsequent publication and the invention will remain secret for 18 months from the filing date.

If the invention is found to be patentable and the applicant feels that there are good market prospects, he might seek protection in other countries, too. Since the costs of international patent (e.g. European patent) procedures are high, starting by the national route is a cost-effective way of protection while assessing the prospects for an invention.

Trademarks

Trademarks
  • Word, picture, sound etc
  • Protection period: 10 years
    plus
Proceedings period
  • 3 months (Germany)
  • 6 months (Europe and International)
Costs
  • EUR 300.00 (Germany)
  • EUR 900.00 (Europe)
  • EUR 500.00 plus national fees (International)

Trademarks (TM) can provide protection for a company logo and build confidence in the quality of goods and services. The holder has the right to prohibit the use by other competitors, which can be enforced by very effective court proceedings, e.g. injunctive relief, that lead to high cost burdens for the losing party. The German TM provides this strong legal position for Germany, while the European TM includes 27 EU member states. The International TM can be protected in 80 member states of the Madrid Agreement.

In addition to word marks and picture marks, or combinations thereof, it is also possible to register three dimensional shapes, sounds and colours. A trademark can be renewed an unlimited number of times. The application should be refused, if it lacks a distinctive character, consists exclusively of descriptions, contains a State emblem or an element which may deceive the public. The TM Office does not check whether the application violates another’s TM, unless the other party files an objection. As a consequence, even registered TM can be challenged by other prior-ranking TM a long time later. So the research for potentially similar TM should be conducted very carefully before filing the application, or before using a name without registering as a TM, e.g. the name of a company.

The protection starts from the filing date and lasts for 10 years. The period can be extended an unlimited number of times. For each extension a payment has to be made on time.

The duration of the proceedings for the German TM is about 3 months, for the European or International TM about 6 months. The costs amount to EUR 300.00 for the German TM, EUR 900.00 for the European TM; for the International TM EUR 500.00 may be charged plus the national fees of the appropriate countries where the TM shall be protected. All charges may be subject to additional lawyers’ fee.

Apart from the patent or TM, also the design of a product can be registered.

Design protection for shapes and colours

Trademarks
  • Three-dimensional objects and
    two-dimensional patterns
    Word, picture, sound etc
  • Protection period: 10 5 to 25 years plus
Proceedings period
  • 3 months (Germany)
  • 6 months (Europe and International)
Costs
  • EUR 300100.00 (Germany)
  • EUR 900350.00 (Europe)
  • EUR 500.00 plus national fees (International)

A design registration provides the adequate IP protection for the appearance of the product. The registered design protects the design of three-dimensional objects - for example furniture, cars or toys, as well as two-dimensional patterns - such as textiles, wallpapers, logos, graphical images or icons.

The German registration gives the exclusive right to use the design. Design protection arises when the design is entered in the Designs Register. Designs registered at the German Patent and Trade Mark Office are only valid in the territory of the Federal Republic of Germany. If you wish to market your products in Europe or worldwide, you can apply for a Europe-wide Community design or an international industrial design.

Design protection can only be obtained for a design that is “new” on the date of filing the application and have “individual character”. However, The Designs Unit of the German Patent and Trademark Office examines only the compliance of the application with the formal requirements (as prerequisite) for registration, so that the substantive requirements and validity may also be challenged after registration, e.g. in case of infringement disputes. The applicant may call on assistance from advisors experienced in industrial property protection and authorised to provide legal services. If you do not have a residence, seat or establishment in the Federal Republic of Germany you must appoint a patent attorney or an attorney-at-law in Germany as your representative. The office registration fees start from EUR 100.00 (Germany) and EUR 350.00 (Europe) for a 5 years registration which can be extended to 25 years upon application. All charges may be subject to additional lawyers’ fee.

Intellectual property disputes at German trade fairs

Foreign exhibitors are a prime target for attacks by German companies for alleged violations of intellectual property. They have learned that it is relatively easy to get a court order forcing to close the booth of foreign exhibitors, and that foreign exhibitors rarely resist. It is a popular tool to stifle competition. They apply before or during the fair a preliminary injunction with the court, which shall be granted without the foreign exhibitor was heard. It is sufficient if the plaintiff's alleges the injury and makes it credible.

There are also efficient legal remedies available for the attacked exhibitor, so that the reopening of the booth could be reached during the fair, e.g. within 24 hours. But the exhibitor may hesitate to exercise his rights, because, for example, he may not be well informed or threatened by the security authority’s actions closing the booth. The fair organizers sometimes involve lawyers to settle the situation. These lawyers, however, are likely to represent primarily the interests of the fair organizer and the attacker who might be a good customer of the organizer.

    To prevent such attacks in advance, foreign exhibitors can meet the following preparations:
  • Check of the promotional material and the exhibit products for conflicts with existing intellectual property rights in Germany. In Germany intellectual property rights may apply which may not be effective (anymore) in the exhibitor’s county of origin. Consider promotional material that you publish in advance, as it can already provide a basis for an attack.
  • Take technical documentation of the products, of which you fear conflict because of patent protection, with you to Germany. Keep contact details of German or European business partners available, so that their expert statements could be obtained immediately. So you have evidence to hand quickly when you are attacked.
  • Instruct a German lawyer, who may examine the documents and products in advance and is present during the fair (or at the beginning, when most attacks occur). If you are travelling in a group, the lawyer can support and be present for the entire group, so the costs can be distributed as a kind of insurance package for the group. In the case of an attack, the lawyer can handle the situation on par with the involved security authorities and attacker as well as provide advice for next steps.
  • If an attack it likely to happen, a defense can be filed at court in advance, so the court must consider not only the aggressor but also the exhibitor’s statements. Furthermore, several counter strategies may be available depending on the individual circumstances.
    In the event of an attack, you should
  • Not sign any documents that are not checked by your counsel, otherwise you may be overwhelmed with unjust acknowledgments.
  • Keep cool, and discuss the matter with the people involved in a different place to prevent any commotion arising in front of your booth.
  • Attack court decision, effective legal protection is possible within 24 hours or less.

Attack is the best defense. Also foreign exhibitors have the opportunity to protect their products, to check other exhibitors and to attack in case of conflict.

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