Should be used with care: The sign of a registered trademark
Would it make sense to register several trademarks at once?
Ratjen: That does happen quite frequently, and it may well be an advisable move. Take a trademark that consists of a word and a device element, which are intended to be used together. When it comes to trademark law, it makes sense to apply for the combination of word and device as a trademark, since the intended form of use should always be given trademark protection. But in addition to this it is also advisable to register the word element and the device component as a separate wordmark and figurative mark. That is the only way to obtain optimum trademark protection. There may be trademark disputes in which it is insufficient to have registered ‘only’ the combination of word and device, and the individual protection of the components as a wordmark and a figurative mark are required in order to have legal grounds for a claim.
Is an Intellectual property rights strategy just something for large corporations, or should SMEs consider it too?
Ratjen: Every company should have a strategic approach to the application of Intellectual property rights in order to avoid unnecessary costs. For new or small companies the emphasis will often be on protecting their own use of a trademark and the associated products. It’s quite possible that, in addition to trademark protection, design protection may also have a significant part to play in this respect. Product design can be legally protected and its use controlled by means of Design law. Another option open to innovative companies is patent protection. Once a company has reached a certain size, an Intellectual property rights portfolio could even be employed as a specific tactic against competitors, for example to protect and strengthen your own market position.
How important is trademark protection abroad?
Ratjen: If a company’s business activities are restricted to its home market then trademark protection at national level should normally be sufficient. But you shouldn’t underestimate the importance for some companies to also obtain trademark protection abroad. Generally, trademark protection should be obtained in all countries where products are being manufactured, exported, imported or sold under the trademark. The problems in foreign markets are ultimately the same ones as in your home market. But experience shows that the costs of trademark disputes abroad are often significantly higher than in Germany, making it advisable to take the necessary precautions at an early stage.
What are the typical mistakes when entering foreign markets?
Ratjen: We frequently see companies enter foreign markets without giving any consideration to questions of trademark law. This can have very unpleasant consequences. In addition to costly trademark disputes, national authorities in certain countries may impose draconian penalties. For example, in many countries you are only allowed to use the ® trademark identifier if the relevant trademark has actually been registered. The rules of trademark law vary considerably around the world. So companies would be well advised to look into the local laws before they enter a market, in order to avoid nasty surprises.
While we are talking about international markets – will Brexit have an impact on trademark protection?
Ratjen: Brexit will have a significant impact on issues relating to trademark law.
Rather than obtaining a German trademark, up to now many companies have opted to register EU trademarks instead, which not only provide protection in Germany but also in every Member State of the European Union. Once the United Kingdom leaves the European Union, the EU trademark will no longer offer any protection there. Holders of EU trademarks should therefore take action and check whether they need to maintain trademark protection for the UK. Unfortunately there is a lack of certainty at the moment on whether the UK will be allowing the holders of EU trademarks to convert the ‘UK elements’ of their EU trademarks into national UK trademarks. It is possible that it could become necessary to register new national trademarks in the United Kingdom.
The issue also greatly affects holders of EU trademarks who are not based in the European Union. Up to now, many of these companies have used UK law firms to apply for their EU trademarks. After Brexit this will no longer be possible, as those law firms will no longer be entitled to represent before the EUIPO. Any companies affected should endeavour to find new lawyers within the European Union as soon as possible.
Dr Ratjen, thank you for talking to us.
Fact file: Dr Eckhard Ratjen
Dr Ratjen is a lawyer who specialises almost exclusively in trademark, design and competition law, as well as copyright law. Born in Schleswig-Holstein, he is a supporter of Werder Bremen football club and has been working at law firm Boehmert & Boehmert in Bremen since 2013. The firm represents German and international companies in all areas of intellectual property and copyright law. With nearly 100 lawyers and patent attorneys based at several locations in Germany and abroad, it is one of Germany’s largest intellectual property and copyright law firms.