The right IP right for every idea - with Dr. Diana Taubert

Fatih-Kağan Taşkoparan

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  • In an interview with fynax, Dr. Diana Taubert highlights the parallels between the e-commerce industry and the start-up scene and explains what is important when launching a brand.
  • Dr. Diana Taubert is Managing Director of ETL IP Patent -und Rechtsanwaltsgesellschaft. She is a German and European patent, trademark and design attorney.

In our consumer society, the variety of products available to customers is almost infinite - just think of Nespresso, Tchibo, Melitta or Eduscho. Companies are competing for similar markets, which is why the main difference lies in the brand itself rather than the product. This is another reason why branding is one of the most important factors determining the success or failure of a company. To build a successful company, you need a strong brand that is consistent and relevant and that appeals to and binds your customers emotionally.

Diana, in your role as Managing Director of ETL IP Patent - und Rechtsanwaltsgesellschaft, you deal intensively with trademark and patent law. What exactly is a trademark?

In addition to the purely legal aspect, a trademark can be defined in very different ways. In purely legal terms, a brand is a term or sign that identifies a company's products and services and distinguishes them from those of the competition for the consumer. In other words, a good brand is a unique and special brand. And special is what customers perceive and memorize. For a brand to stand out from others, it must be as different as possible from other brands in the same category. But the more crowded the market, the more difficult it is to create uniqueness. Companies are competing for similar markets and therefore the difference often lies in the brand rather than the product itself.

Is it difficult to protect a trademark with such a far-reaching definition? What do you have to pay particular attention to, or what can you protect?

A trademark is just one of the many property rights: aesthetic forms, i.e. designs, can be protected. Objects, chemical products, processes and uses, on the other hand, belong to patent law. In trademark law, there is the so-called origin function. This means that a trademark can be linked to a company and its product or service and can distinguish it from goods or services of other origins. The trademark is therefore a kind of corporate ambassador, as it links the unique selling proposition or the so-called "unique selling points" with the company among consumers. The characteristics of the company are thus firmly anchored in the minds of customers and are called up as soon as they encounter the brand. This is the brand.

Can you describe the different areas of trademark law?

In trademark protection law, a distinction is generally made between word marks and figurative marks. Special focus is placed on the word mark, as it can always be modified without falling outside the scope of protection. Only the word element of the respective trademark must remain as the nucleus. A figurative mark, on the other hand, has no word element and is, for example, the logo of a company. There is also the so-called word-image mark, i.e. a combination of word and image, in which the term is at the center and the logo design can be seen around it.

But more exotic brand forms, such as color brands, scent brands, sound brands and 3D brands are possible. Sparkasse is red, Langenscheidt is yellow, Telekom is magenta, Nivea is blue. These color marks are all legally protected, which means that other manufacturers in the same industry are not allowed to use the same color in their product advertising.

Could you go into more detail about the process: For example, I have a product and want to protect it: How exactly does that work?

There are several steps here. It makes sense to conduct a trademark search beforehand in order to avoid correlations and collisions with other trademarks. This is done on the applicant's own initiative or by commissioning a corresponding service provider, as the German Patent and Trade Mark Office does not check whether your trade mark already exists. Of course, you could ask yourself who checks and verifies this at all. Sure, a lawyer who specializes in trademark law, for example. But the rule of thumb in trademark law is that the market is self-regulating. This means that the market independently regulates and regulates overlaps and similar situations. So if you feel disturbed by other trademarks, you have to take action yourself and take action against them, otherwise trademark overlaps will simply continue to exist. In addition to formal requirements, the German Patent and Trade Mark Office mentioned above only checks the absolute grounds for refusal or grounds for refusal of registration of the trade marks for offensiveness and, above all, descriptiveness. For example, you cannot register "milk" as a word mark for the product milk, because then none of the manufacturers would be allowed to write "milk" on their packaging.

There is a good chance that you may correlate or collide with existing trademarks, which is precisely why trademark searches are essential - just because a trademark is registered does not necessarily mean that you have the right to use it. In fact, there may be older trademark rights that could prevent you from using it. A trademark search and a qualified assessment of the results are therefore advisable before using a trademark.

You also talked about the so-called "relative protection". Could you explain this special feature of trademark law?

Relative trademark protection must always be read in relation to something else, i.e. in relation to so-called "earlier rights", i.e. rights to the use of a sign that arose prior to your own use or application. These do not always have to be registered trademarks. An earlier right may, for example, also have arisen through an earlier entry of a company in the commercial register.

Trademark law is always about similarity and not just identity. What is important is how the trademark affects consumers and how consumers perceive it. If the similarity is so high that they could confuse the trademark with another trademark, then this could constitute a trademark infringement and therefore falls under the relative protection procedure. It is irrelevant whether two trademarks are held next to each other. Similarity" is also about what customers associate with a trademark. Here too, however, it is the market itself and not the Office that examines this.

One example is the word mark "Focus". It is immediately associated with the magazine, but the term Focus is also a registered trademark for Ford passenger cars. The terms are identical. Nevertheless, the marks do not conflict with each other as they are used for different goods and services and are therefore dissimilar in this area. The situation would possibly be different if, for example, an e-bike with the name Focus were to be produced: an e-bike is also a means of transportation powered by an electric motor. This could possibly lead to a trademark dispute between the owner of the Focus brand for passenger cars and the eBike manufacturer.

What happens if I violate the rights of my competitors? What consequences will I face?

The question is always how trademark protection is enforced. A registered trademark is not protected forever: if a trademark is not used for five years, it expires in the register. In a scenario in which one party feels infringed, it usually draws up a warning letter, i.e. a letter pointing out the trademark infringement and requesting the other party to cease and desist. This often initially leads to out-of-court settlement attempts in which the parties try to distance themselves from each other and sign an agreement to this effect. If this fails, the courts decide after a lawsuit has been filed.

What would you recommend to our online retailers in connection with a trademark application?

The problem is often that founders do not concern themselves with trademark law. They have come up with a name and a brand name, they have started up the marketing drum and know that they have not knowingly copied their own brand. Nevertheless, similar trademarks are often created in the same field. On the one hand, because a descriptive aspect is often deliberately desired so that the user knows immediately what it is about, and on the other hand because of fashion trends, which also play a role in the choice of words or the design.

And that is precisely the dangerous thing - especially in e-commerce: there is a start-up spirit and the market is fast-moving. In this industry, you generate immediate visibility and are not only active and visible regionally, but your trade takes place online - more or less without borders. This means that competitors can feel disrupted in the entire e-commerce cosmos. In the worst-case scenario, you may even be doing your competitors a favor, because if you are banned from using the domain, your logo or your term, you will have to start all over again. At the same time, you will generate better traffic for your competitor. However, it can also happen that you continue to exist on the Internet after years of inactivity and are therefore responsible for an infringement.

I am an e-commerce retailer and want to sell a product and therefore register my trademark. When does it make sense?

That is difficult to say. Trademark research is important in order to know the risk of infringing the rights of others.

Marketing is largely carried out via the brand. A strong brand makes sense for strong marketing. And this is not descriptive and registered.

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