Your brand is one of your company’s most valuable assets. We help businesses in Germany and across the EU register, protect, and enforce their trademarks – from names and logos to packaging and slogans. Our practice also extends to design protection and key copyright matters relevant to business.
We advise clients in English, German and Polish.
Before
Trademark Registration
Trademark Registration
Procedure
Trademark Monitoring
& Protection
Intellectual Property
Litigation
Before Trademark Registration
Trademark Strategy, Brand Development and Trademark Clearance
Early legal advice is essential—ideally before a trademark is developed from a marketing perspective. A brand strategy can only succeed if trademark conflicts are avoided and the mark is ultimately registrable and enforceable.
Key strategic decisions at this stage include:
- the appropriate form of the trademark,
- its registrability, and
- the choice of territorial scope of protection.
We support clients at an early stage by analysing possible trademark forms, suitable protection territories, legal risks, costs and long-term enforcement options, in order to establish a protection strategy tailored precisely to their business objectives.
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Choosing the Right Trademark Form
What Types of Signs Can Be Registered as Trademarks?
Trademark law allows a wide range of signs to be protected, provided that they are capable of distinguishing the goods or services of one undertaking from those of others and are not subject to statutory grounds for refusal.
Under § 3(1) German Trade Mark Act (MarkenG) and Article 4 EU Trade Mark Regulation (EUTMR), registrable signs include in particular:
- word marks (including personal and company names),
- letters and letter combinations,
- numbers and number combinations,
- figurative marks and logos,
- word-and-device marks,
- sound marks,
- three-dimensional shapes (including product shapes),
- colours (under strict conditions),
- holograms and multimedia marks.
A trademark can take many forms, but it must always be distinctive and capable of identifying commercial origin.
Selecting the Appropriate Territory of Protection
The choice of protection territory is fundamental to effective trademark enforcement. As a general rule, a trademark should be protected in the jurisdictions where the goods or services are offered or planned to be offered.
In practice, most clients choose:
- a German trademark (national protection),
- an EU trade mark (unitary protection across all EU Member States), or
- selected national trademarks in specific foreign markets.
International expansion can be achieved through international registrations under the Madrid System, based on an existing national or EU trademark.
Choosing the wrong territory may result in gaps in protection or unnecessary costs. Strategic planning at this stage is therefore critical.
Assessing Registrability: Absolute Grounds for Refusal
Not every sign can be registered as a trademark. After filing, trademark offices examine applications for absolute grounds for refusal in order to keep trademark registers free of inadmissible signs.
The main legal bases are §§ 3 and 8 MarkenG (Germany) and Article 7 EUTMR (EU).
Distinctiveness as a Core Requirement
Distinctiveness means that the sign must be capable of distinguishing the goods or services of one undertaking from those of others. While invented terms usually meet this requirement, purely descriptive signs do not.
Signs lacking distinctiveness include, in particular:
- terms describing the nature, quality, quantity, purpose, value or geographical origin of the goods or services,
- customary designations in trade,
- signs subject to a general need to remain free for competitors.
Example:
The term “Auto” cannot be registered for motor vehicles because it directly describes the product and must remain available to all competitors.
Trademark registrability is a complex area shaped by extensive case law. To avoid unnecessary refusals and costs, we assess registrability at an early stage and provide a clear legal evaluation.
Trademark Clearance Services: Identity and Similarity Searches
Registering a trademark that conflicts with earlier rights entails significant risk. Earlier rights holders may oppose the registration or issue cease-and-desist letters if the sign is used in commerce.
Identity Search
An identity search verifies whether an identical trademark is already registered. While indispensable, this step alone is insufficient.
Similarity Search and Likelihood of Confusion
Trademark conflicts frequently arise from similar, not identical, signs. Similarity searches therefore analyse phonetic, visual and conceptual similarities, taking into account the similarity of goods and services.
The decisive legal criterion is likelihood of confusion (§ 14 MarkenG; § 42 MarkenG; Articles 8 and 9 EUTMR). Confusion exists where consumers may believe that the goods or services originate from the same or economically linked undertakings.
Example: A mark such as “BMV” for vehicles would be highly similar to “BMW” and likely infringing.
Comprehensive identity and similarity searches are essential to identify risks early and ensure sustainable brand protection.
If you are planning to develop, register or commercially exploit a trademark in Germany, the EU or internationally, ab&d Rechtsanwälte will be pleased to advise you comprehensively and strategically.
Filing a Trademark: Germany, EU and International Registration
Trademark and desing registration in Germany (DPMA), EU (EUIPO) and internationally (WIPO) – comprehensive filing support.
Trademarks are far more than names or symbols placed on products. They identify goods and services as originating from a specific undertaking and distinguish them from competing offerings. At the same time, consumers associate trademarks with particular quality standards, reputation and brand image.
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To prevent third parties from exploiting this value without authorisation, trademarks must be registered in the relevant trademark registers. Only registration grants the trademark proprietor an exclusive right to use the mark for the designated goods and services. If a registered trademark is used unlawfully by others, trademark law provides a comprehensive set of enforcement mechanisms to stop the infringement and claim damages.
Trademark registration therefore serves multiple strategic objectives: it protects brand value against misuse, enables commercial exploitation through licensing, and legally secures investments made in brand development. However, trademark registration is not a purely administrative exercise. It is a strategic legal decision that must be planned carefully and implemented in a legally sound manner.
Trademark Monitoring and Protection
Regular surveillance and quick response to threats.
Trademark protection does not end with registration. It is an ongoing legal and commercial process requiring strategic planning, professional monitoring and timely enforcement.
Every month, thousands of new trademark applications are filed with national, European and international trademark offices. Because no authority conducts a conflict check against earlier trademarks, the responsibility for protecting an existing mark lies entirely with the trademark owner.
Systematic trademark monitoring allows brand owners to detect potential conflicts at an early stage and to take timely and cost-efficient legal action before the conflict escalates. With experienced trademark attorneys at your side, trademarks become not only legally secure, but also a powerful and flexible business asset.
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Trademark monitoring is the continuous observation of trademark registers, company registers and relevant markets in order to detect newly filed or registered trademarks that are identical or confusingly similar to an existing trademark at an early stage.
Professional trademark monitoring goes far beyond checking trademark registers. It combines legal surveillance with market observation.
In practice, trademark monitoring typically includes:
- national and international trademark registers,
- EU trade mark applications,
- international registrations designating relevant territories,
- company and trade name registers,
- domain registrations,
- online marketplaces,
- social media platforms and advertising channels,
- and, where appropriate, title protection registers.
For trademark owners, professional and continuous trademark monitoring is not only essential to become aware of potentially conflicting trademark applications at an early stage. It is also a prerequisite for being able to act in time, because opposition proceedings are subject to strict and non-extendable deadlines.
If you wish to ensure long-term protection of your trademark rights and avoid costly disputes, we would be pleased to assist you with a professional trademark monitoring solution tailored to your business needs.
Intellectual Property Litigation
Securing your intellectual property requires decisive action—whether opposing conflicting marks, enforcing your rights, or negotiating agreements that align with your business goals.
Proactively opposing conflicting marks and enforcing your IP rights to safeguard your business—while skillfully negotiating agreements to secure your competitive edge. Strategic legal action and dispute resolution protect your interests, ensuring your intellectual property remains both defended and valuable.
Opposition and cancellation proceedings – defending against competitors and removing conflicting marks.
To prevent third parties from exploiting this value without authorisation, trademarks must be registered in the relevant trademark registers. The registration grants the trademark proprietor an exclusive right to use the mark for the designated goods and services. If a registered trademark is used unlawfully by others, trademark law provides a comprehensive set of enforcement mechanisms to stop the infringement and claim damages.
Trademark registration therefore serves multiple strategic objectives: it protects brand value against misuse, enables commercial exploitation through licensing, and legally secures investments made in brand development. However, trademark registration is not a purely administrative exercise. It is a strategic legal decision that must be planned carefully and implemented in a legally sound manner.
Enforcement of intellectual property rights (cease-and-desist, injunctions, court proceedings)
A trademark infringement occurs when a third party uses an identical or confusingly similar sign in the course of trade for identical or similar goods or services, or exploits the reputation of a well-known mark, without authorisation.
Once infringement is established, the trademark proprietor may assert, in particular:
- Cease-and-desist claims (§ 14(5) MarkenG; Article 9(2) EUTMR)
- Information and accounting claims (§ 19 MarkenG)
- Claims for damages (§ 14(6) MarkenG)
Which enforcement route should be chosen always depends on the specific circumstances of the case and must be assessed carefully. Evaluating likelihood of confusion, trademark use, reputation and scope of protection is legally complex and fact-intensive. Incorrect assessments can lead not only to financial loss but also to severe commercial damage.
Trademark rights may be enforced out of court or before the courts. The available instruments include cease-and-desist letters, preliminary injunctions and infringement actions on the merits.
Our services include:
- detailed infringement and risk assessment,
- litigation-proof evidence preservation and test purchases,
- strategic enforcement planning,
- cease-and-desist and settlement negotiations,
- preliminary injunction and main infringement proceedings, and
- defence against unjustified trademark claims.
If your trademark has been infringed—or if you have received a trademark warning letter—we will provide a clear assessment of your legal position, risks and strategic options, and represent your interests with precision and experience at every procedural stage.
Representation in disputes with competitors and authorities (e.g. Schutzschrift).
Where a company anticipates a possible injunction application, a protective letter may be filed in the central protective letter register. Courts are obliged to consider such submissions before granting an injunction.
Protective letters can prevent ex parte decisions or ensure that the alleged infringer is heard before any injunction is issued. We regularly prepare and file protective letters to avert imminent injunctions.
As specialised trademark attorneys, we regularly represent both claimants and recipients of trademark warning letters. Having handled hundreds of such cases, we support clients — whether enforcing trademark rights or defending against unjustified or excessive claims.
Negotiation and drafting of license and coexistence agreements.
If you need rapid assessment after spotting a conflicting filing, or if your own application has been opposed, we can structure the next steps to protect your brand while keeping cost and timing risk under control.
Remember – being opposed does not mean you “lose” your mark. An opposition only means an earlier right holder alleges a conflict—whether that allegation succeeds depends on the office’s full analysis.
Defence can involve challenging similarity, goods/services overlap, and the assumptions about distinctiveness or marketplace context. In some cases, narrowing the specification is commercially rational if it removes the collision while preserving the core business scope. In others, the best outcome is a negotiated settlement during the settlement window, particularly where coexistence can be defined with precise limitations that reduce future enforcement risk.
Advice on transfers of rights and licensing agreements
After Registration: Licensing and Assignment of Trademarks
Once registered, trademarks can be commercially exploited.
Trademark Licensing
Licensing allows third parties to use a trademark for consideration or free of charge, for example in franchise structures or corporate group arrangements.
Key elements of a licence agreement include:
- scope and type of licence (non-exclusive or exclusive),
- territory and duration,
- remuneration,
- termination provisions,
- non-challenge clauses and rules for enforcement against third-party infringements.
Trademark Assignment
Trademarks may also be transferred in whole or in part. Assignments require updating the trademark register and are governed by the law of the jurisdiction in which the mark is registered. While assignments are generally form-free, written agreements are strongly recommended for evidentiary reasons.
We advise on drafting, negotiating and registering licence and assignment agreements and ensure compliance with all formal and strategic requirements.