Trademark Application

a) Application

In order to have a trademark registered, an application must be filed with a national trademark office, the Community Trademark Office or the International Office of the WIPO/OMPI depending on the scope of geographical protection sought (see b). To this end, the name and address of the applicant, the trademark as such and a list of goods and services intended to be covered shall be included.

b) List of Goods and Services

Particular care should be paid to compiling the list of goods and services, since once said list has been filed, it may merely be limited and not extended any more. In this context, it is recommendable to make use of the terms enlisted in the "Alphabetical List of Goods and Services according to the Nice Agreement concerning the International Classification of Goods and Services for the purpose of the registration of Marks". Given that making use of this list should not be helpful, commonly used terms that are customary in trade shall be employed for designating the goods and services for which trademark protection is sought.

c) Different application methods

Depending on the geographical scope of protection sought for a mark, different application methods and strategies should be pursued.

Filing an application for a German trademark with the German Patent and Trademark Office is expedient where the trademark shall be conferred protection exclusively within the territory of Germany.

It is appropriate to file an application for a community trademark (also called EU trademark) if the protection conferred on the trademark shall have validity within the EU member states. In case of accession of any further state, trademark protection shall be automatically extended to each such state.

International registration of the trademark (IR trademark) is recommendable if trademark protection is to be obtained in the contracting states to the Madrid Agreement or the Madrid Protocol. The IR trademark may be an option for instance when trademark protection is sought not only in the domestic market but also in individual Asian or US American states. To this end, however, filing an application for a national German trademark or a EU trademark as a basic trademark represents a prerequisite.

d) Term and extension of protection

The term of protection for a registered trade mark commences on the filing date of the application and initially stretches over a period of ten years and may indefinitely be extended by another ten years subject to the payment of fees.