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Register your brand

November 2024  ⁄  735 words  ⁄  Image © istock Matthew Troke

Registering a trade mark without the assistance of a lawyer should be carefully considered. The following points should be taken into account:

  1. As a rule, the trade mark and patent offices only examine whether absolute grounds for refusal exist. Absolute grounds for refusal include the need to keep the mark free, i.e. that the general public and competitors have a legitimate interest in the free use of this sequence of letters/symbols or this sign, and the lack of distinctive character of this sequence of signs.

  2. It is not examined whether rights to already existing, identical or confusingly similar names are infringed (exception USA).

  3. Trade mark protection also extends to the area of similarity. Therefore, an in-depth examination of the possible infringement of earlier rights is required here. Essentially, it is a question of possible confusion such as phonetic identity but different spelling (brandmonkees/brandmonkeys), similarity of meaning (brandmonkees/brandgorillas, paperhorse/paperpony), but also similar spelling (brandmonkys, brndmonks, brankmondees). What falls within the scope of similarity can only be fully understood by experienced trade mark attorneys. Similarity searches are usually carried out in the trade mark register, the commercial register and with Google on the internet.

  4. As already mentioned, it is important to also check the commercial register entries in the respective country, as there are often name rights that can be infringed here too. This can also extend across borders to neighbouring countries, such as Coachrebell (CH) and Coachrebellin (DE).

  5. If a name cannot be protected, there is the possibility of design protection for a word/figurative mark. In this case, the creative depth and distinctiveness, i.e. a unique design solution, are important for the examination. The aim here is also an ® on the logo, which should protect against imitators and signalise trust to the customer. However, a subsequent and clearly visible change to a word/figurative mark is not eligible for protection. It must be recognisable from the ® sign whether the protection relates to the design of the word mark or to the added element.

  6. There is also the possibility that a term may develop into a protectable term through constant use (trade penetration), see 'TEMPO'.

  7. The registration of a word mark is always accompanied by the obligation to continuously check it for possible infringements. This effort is not insignificant.

  8. There is an obligation to use the trade mark. The most important indication for the use of a trade mark is an existing and verifiable trade in goods or services.

  9. If a word mark is not used within five years of its registration, a third party can apply for cancellation at the Patent Office. As a rule, the third party submits a transfer offer beforehand.

  10. A copyright © is a self-declared right and must be proven by the authorised party in the event of a dispute or for enforcement purposes.

On our own behalf

The trademark application for BRANDMONKEES was filed out of curiosity: is this combination of words registrable, what about misspellings and how does a trademark application work from the perspective of a private individual? However, as there was no commercial interest, there was no extension beyond the 10 years.

In the meantime, similar creations such as Brand-Monkeys (brand-monkeys.com/) and Brandmonkey (brandmonkey.co, brandmonkey.co.uk, brandmonkey.dk, brandmonkey.in) have established themselves on the market. The genus-like gorillas (/brandgorillas.com/en) and letter-like monks like Brandmonks (in DE and NL) have also arrived.

And there was Monkey Brand, a polishing soap for cleaning metal that was very popular at the turn of the century. The product originated in the USA and was acquired by Lever to gain a foothold in the American market. The Monkey brand (https://en.wikipedia.org/wiki/Monkey_Brand) later became VIM (https://en.wikipedia.org/wiki/Vim_(cleaning_product)) and was later replaced by the Cif, Jif and Viss brands. You could say that the grandparental genes of the Monkey Brand are still present in today's VISS brand. VISS was one of the first brands I worked for.

Trademark registration offices, verification of registrability

There are three trademark registration offices and responsibilities: National brands (e.g. German Patent and Trade Mark Office, DPMA for short, in Munich for Germany), Europe for EU trademarks (EUIPO in Alicante, Spain) and worldwide for IR trademarks (World Intellectual Property Organization, WIPO for short, in Geneva, Switzerland). All trademark registration procedures can be carried out online.