Who can apply for trademark registration

What does a trademark application cost? Strategy, tips, examples

If you want to find out more about the costs of a trademark application, this is the right place. In addition to the individual fees, we have compiled many examples and strategic tips. Finally, we explain when it makes sense to consult a lawyer.

The cost of a trademark application

The cost of a trademark application depends crucially on three factors: Protection area and Scope of protection of the trademark as Your willingness to take risks.

1. Scope of protection of the trademark

This applies to trademark law Principle of territoriality. According to this, trademark protection can only be achieved for those countries in which the trademark right arose - typically through trademark registration. The cost of a trademark application increases with the number of countries for which trademark protection is to be obtained. An exception is the registration of an EU trade mark (formerly "Community trade mark"), in which a kind of collective discount applies for the entire EU.

- Costs of a German trademark application (DPMA)

The registration of a German trademark takes place through Request at the German Patent and Trademark Office (DPMA). The basic fee for registering a German trademark is 300 Euro (or 290 euros for online registration). This basic fee is the same for all types of brands. It makes no difference whether a word mark, figurative mark or even an exotic 3D mark or color mark is registered.

In the official fee is Brand protection for three classes of goods and services contain. If you want further protection for additional product areas, the German Trademark Office charges a surcharge of 100 euros per extra class.

example: For a German trademark registration with effect for four classes of goods and services, the official fee of the DPMA is 400 euros. If the German trademark is only registered for one class, the registration fee is not 100 euros, but 300 euros. There is no discount if not all classes are exhausted. The minimum fee is always due for German trademark applications.

- Costs of an EU trademark application (EUIPO)

If you want to sell your branded product (besides Germany) in other EU countries, you should register a EU trade mark (EU trademark) with effect for the entire European Union. The registration of an EU trade mark is also carried out through Request at the Trademark Office, but not at the DPMA, but vis-à-vis the European Union Intellectual Property Office (EUIPO), which was called the Office for Harmonization in the Internal Market (OHIM) until it was renamed in March 2016.

Cost tip: In addition to the name of the trademark office, the previous fee system has also been changed. For an electronic trademark application, the EUIPO now calculates an Basic fee of 850 euros. In contrast to the DPMA, this fee is included only one class of goods or services contain.

Brand protection for two classes costs 900 euros, each additional class costs 150 euros extra. Compared to the earlier tiered charges, it is cheaper to only claim protection for one class. The applicant then pays 50 euros less than before to the trademark office. For two classes, the previous official fees of 900 euros remain. Since each additional class costs 150 euros extra, trademark protection for three classes or more is more expensive than before.

- Costs of an international trademark application (WIPO)

If you want to protect a trademark in countries outside the EU, there are two possible approaches.

  1. The first step is to register the desired trademark with the DPMA or EUIPO. For this so-called Base brand can through the World Intellectual Property Organization (WIPO) a Extension can be applied for in the desired destination country, for example the USA or Japan. It is important that the extended brand depends on the existence of the basic brand, at least in the first few years. If the basic trademark is wholly or partially deleted or not even approved for registration by the local trademark office, this also has a direct impact on trademark protection in the target country. Please also note that not all countries allow a trademark extension via WIPO, e.g. important markets such as Canada or Brazil. If you decide for an international trademark extension via the WIPO (variant 1), this arises at least a fee of 653 Swiss Francs. In addition, there is the official fee of the respective country, which can vary significantly depending on the destination country. The WIPO Fee Calculator provides an overview of costs.
  2. The second option is to register the desired brand directly in the target country as a independent new brand to register. In this case you don't need a base brand. The registration does not take place via WIPO, but directly at the trademark office of the target country, for example the USPTO in the USA. Note that in this variant, a national lawyer must be regularly commissioned, e.g. a US law firm. In such cases, we support you in finding a suitable law firm and take over the correspondence with colleagues.

Cost tip: In an absolute comparison, an EU trade mark is more expensive than a German trademark registration. If you bear in mind that an EU trade mark achieves trademark protection in all member states of the European Union, it quickly becomes apparent that an EU trade mark is relatively much cheaper than registering individual trade marks at the national trade mark offices, for example in Austria or France and Spain. It should also be noted that a resident lawyer would usually have to be commissioned with the trademark application in the respective country, which is associated with additional costs. An EU-wide EU trade mark, on the other hand, can be registered through a German lawyer.

Do you want that Protect trademarks in non-European countries as well, the first step is to register a German or European basic trademark, which is extended to the desired countries via WIPO, e.g. Switzerland, Japan and the USA.

Trademark registration planned? You can find our all-inclusive prices here

- the cost of a trademark renewal

After the registration of a German trademark or EU trade mark exists Trademark protection for ten years. The trademark can be renewed as often as required after the protection period has expired. The renewal of a German brand, for example, currently costs 750 euros for up to three classes. From the 4th class, the DPMA charges a further 260 euros for each additional class. Interestingly, a trademark renewal at the DPMA is significantly more expensive than the original trademark application. The EUIPO renewal fees, on the other hand, correspond to the amount of the registration fees set out above.

Important: Please note § 25 MarkenG, according to which the trademark must be used within the first five years, specifically for the goods and services registered (Compulsory use). If the trademark owner fails to start using it during this period, he can no longer assert any trademark claims against more recent similar or identical trademarks. In this situation, the owner of the younger trademark can use the Objection of non-use to raise. The plaintiff's trademark owner must then prove actual use.

2. Scope of trademark protection

With rare exceptions, the following applies Brand protection is not a blanket, but a product-related one. It is therefore of crucial importance for which goods or services the trademark is registered.

Just as much attention should be paid to the contents of the list of goods and services as to the trademark. According to our observation, this is often not the case. Instead, the directory is regularly limited to reproducing the generic terms of the respective class of the Nice Classification. According to the “IP Translator” decision of the European Court of Justice, this is no longer sufficient to achieve brand protection for those products that are to be sold under the new brand - the brand then misses its actual goal (see ECJ, judgment of June 19, 2012 , Ref. C-307/10 - IP Translator).

In addition, the Conception of the Nice Classification is often not properly understood will and the Trademark registered for unnecessary classes becomes.

Fictitious (very common) example from practice: A company in the metal industry does not have to apply for trademark protection for the services "advertising" or "marketing" in Nice Class 35 if it only pursues the goal of advertising its own services, e.g. advertisements in print media or on the Internet. The reason is that a Brand only for services to third parties is needed. Registering a trademark in Nice Class 35 makes sense, for example, for an advertising agency that provides marketing services for its customers.

Practical tip: The drafting of a precise list of goods and services is just as important as the development of the trademark itself. An incorrectly worded list can mean that no trademark protection is created for the targeted product area or that money is spent on classes that are not needed. The help of a specialized lawyer helps here.

The most important questions and answers about trademark registrations

3. Your risk tolerance

In addition to the principle of territoriality described above, another central principle applies in trademark law: that Priority principle. According to this, if there are two identical or confusingly similar brands, the older brand has priority over the younger brand. Due to the priority principle, the owner of a confusingly similar older trademark can demand that the trademark applicant of the younger trademark cease and desist, including damages in the event of fault. Claims for trademark infringement are enforced via a fee-based warning and, if necessary, legal action or injunction.

To minimize the risk of trademark registration older trademark rights or other trademark rights such as company logos should violate a trademark before registering Trademark research be performed. In the first step, one is usually enough simple identity research from the register of the DPMA and from Google, which the trademark applicant can do himself. If this search for identical trademarks does not result in any hits, the trademark applicant should do a professional trademark research Have it carried out by a law firm specializing in trademark law, which, in addition to identifying identical trademarks, in particular also identifies confusingly similar trademarks and company names. The lawyer commissioned will assess how great the risk of trademark infringement is as part of a similarity report.

example: Whoever uses the word mark "Coca kola“Wants to protect and is looking for this term in the DPMA register, will not find a trademark of the same name. However, that does not mean that the well-known beverage manufacturer Coca-Cola would have to accept such a trademark application. The terms "Coca kola" and "Coke“Are tonally identical. Despite the different spelling, that's enough for a trademark infringement - the worldwide fame of the older trademark wouldn't even matter.

If you transfer this aspect to your brand, it becomes clear why, as a law firm, we always advise you to carry out a professional brand search that includes similar brands before applying for a trademark. Such a similarity search in the trademark registers of the DPMA, EUIPO and WIPO contain our all-inclusive packages

  • DE-WORT (suitable when registering a German word mark)
  • DE-GRAPHICS (suitable when registering a German figurative mark or word / figurative mark)
  • EU WORD (suitable when registering a European word mark)
  • EU GRAPHICS (suitable when registering a European figurative mark or word / figurative mark)

We register your brand at a low flat rate

4. Register a trademark without a lawyer?

There is no obligation to register a trademark through a lawyer. From a purely legal point of view, a trademark can of course be registered without the assistance of a specialized lawyer. However, if you are not familiar with trademark law, you risk it to a greater extent Rejection of the application due to the existence of absolute grounds for refusal. Registration is particularly relevant in practice Smoothly descriptive brands or brands that need to be kept clear, as we experience in our daily consulting practice. The official fee paid to the Trademark Office is forfeited in the event of a rejection. There will be no reimbursement, not even in part. This risk of loss can be reduced to a minimum through legal advice and the development of a viable brand strategy.

If you manage to have the trademark entered in the trademark register without a lawyer, that does not mean that the trademark is invulnerable. When registering, the trademark office does not check whether relative barriers to refusal exist, i.e. the question of whether older identical or confusingly similar brand registrations are already available. In order to enable the owners of existing trademarks to take easy action against trademark infringements, there is a period of three months after the trademark entry has been published in the register, within which third parties for a fee of 120 euros (DPMA) or 320 euros (EUIPO) Opposition to the trademark can insert.

If the opposition proceedings before the Office show that the new mark infringes the earlier mark, a partial or even complete one followsDeletion from the trademark register. Before the DPMA, the trademark applicant only bears his own costs, not those of the other party (exception: trademark application in bad faith). It is different with an EU trade mark: here the EUIPO often makes a cost decision, according to which the loser has to bear the costs of the other party in addition to his own expenses. That can quickly turn into money.

Even if no objection has been filed against the trademark, the trademark applicant can still receive a trademark warning after years, with which he is asked to refrain from using the trademark within a period of usually 1-2 weeks, to submit a declaration of cease and desist with penalties and as compensation for the brand usage that has already taken place damages (mostly in the form of fictitious license fees), which can quickly run into the thousands.

Cost tip: If one assumes in favor of the trademark applicant that a customary object value or value in dispute of "only" 50,000 euros will result in warning costs of 1,531.90 euros plus sales tax, which the trademark applicant must reimburse a trademark owner who has been warned by a lawyer. If he hires his own lawyer to defend the law, his bill will be added. Anyone who refuses to submit a declaration of cease and desist risks an even more expensive injunction and / or legal action. The Litigation cost risk is then already around 9,000 euros in the first instance.

Finally, it should not be forgotten that in the event of a loss of legal action or the submission of a declaration of cease and desist with a criminal offense, goods marked with the brand may no longer be placed on the market, new business documents are required and a new brand must be developed and made known on the market.

In view of these costs, the expenses for early recourse to a law firm specializing in trademark law are largely in the background.

Take advantage of our many years of experience when registering your trademark. We register German trademarks, European Union trademarks and, upon request, extend them internationally, e.g. to the USA. Of course, we can also research older, confusingly similar brands on request. Use our online forms to place an order.