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GRP Rainer Rechtsanwälte – Report on the distinctiveness of a trade mark

April 2018

In order to be able to register a company symbol or logo as a trade mark, it needs to have the necessary distinctive character to distinguish it from the products and services of other businesses.

Trade marks are a valuable commodity for businesses. They create a high degree of brand recognition among consumers and distinguish from competitors’ goods and services. Once it has been registered as a trade mark, the company symbol or logo is protected and can then only be used by the trade mark’s proprietor. In general, marks that are capable of distinguishing one’s own goods and services from the products of other providers can be registered as a trade mark. In our experience at the commercial law firm GRP Rainer Rechtsanwälte, trade mark registrations are most likely to fail because attention is not paid to absolute grounds for refusal that preclude registration as a trade mark.

One such absolute ground for refusal is a lack of distinctiveness. A mark’s distinctiveness should place consumers in a position to be able to associate the origin of goods or services with a particular business and distinguish them from other providers’ products. If a mark consists of several elements, the distinctive character must apply to the mark as a whole. The average reasonably well-informed and circumspect consumer cannot be expected to analyze the mark. Purely descriptive information can also constitute an absolute ground for refusal, as there is a public interest against exclusive use in these circumstances. This may be the case, for example, with respect to descriptive terms such as “vegetarian” or “vegan”.

Another criterium is that the mark be capable of being represented as a graphic. In the case of word marks or figurative marks, this is normally not a problem. That being said, this requirement also applies, for instance, to sound marks. It may, however, be possible for the mark to be represented by the notes in these cases.

Furthermore, any rights associated with existing trade marks cannot be infringed, nor can consumers be misled.

Company symbols or logos that satisfy these requirements can be registered as a trade mark, e.g. as a word mark, figurative mark, sound mark, colour mark, 3D mark or a combination of the above.

We at the commercial law firm GRP Rainer Rechtsanwälte have a great deal of experience in the field of trade mark law and can assess whether registering a mark is possible. We can equally be of assistance in enforcing or fending off claims in the event of trade mark violations.

https://www.grprainer.com/en/legal-advice/intellectual-property-law-and-trademark-law/trademark-law.html

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