Many start-ups rely on the fact that the mere use of a name or logo is sufficient to secure rights to it. However, German trademark law (Section 4 MarkenG) primarily provides for the registration of a trademark in order to ensure comprehensive protection. Contrary to what is often assumed, there are only very limited possibilities under German law to invoke a right of prior use. Without an official application, there is a risk that third parties will register the name or logo and thus acquire exclusive rights of use. This can lead to start-ups no longer being allowed to use their trademark – even if they have already established it. In this article, I will show why it is essential to register a trademark with the German Patent and Trademark Office (DPMA) or the European Union Intellectual Property Office (EUIPO), what risks exist without trademark protection and how strategic trademark registration creates long-term competitive advantages.
Why is a trademark application so important?
Registering a trademark offers start-ups numerous advantages that go far beyond mere legal protection. A registered trademark is not only a legal instrument, but also a strategic asset.
- Exclusive rights of use:
Registration gives the owner the exclusive right to use the trademark for certain goods or services. This means that competitors can be prevented from using similar or identical signs. Without this protection, third parties may register the trademark and prohibit the original user from using it. - Protection against imitation:
A registered trademark protects against imitators and strengthens the start-up’s competitive position. Especially in highly competitive markets, it is crucial to differentiate yourself with a protected trademark and avoid confusion among customers. - Increasing the value of the company:
A registered trademark is carried on the balance sheet as an intangible asset and increases the value of the company – an important factor in financing rounds or a later exit. - Legal certainty:
Without trademark protection, there is a risk of legal conflicts with competitors or third parties. A registered trademark provides a clear legal basis and makes it easier to enforce claims in the event of trademark infringements. - International expansion:
With a national registration at the DPMA or a European application at the EUIPO, start-ups can also expand their trademark rights internationally – for example through the Madrid system for worldwide trademark protection.
Example:
A startup has been using a creative brand name for its products for two years. However, a competitor registers this name as a trademark and obtains an injunction against the startup. The company has to change its name and not only loses customer loyalty, but also valuable resources for rebranding measures.
The fairy tale of prior use: why use alone is not enough
Many founders mistakenly believe that the mere use of a name or logo automatically establishes trademark rights. In fact, German trademark law (Section 4 MarkenG) stipulates that trademark protection in Germany primarily arises through registration in the trademark register. Prior use only grants protection in exceptional cases – for example, if a trademark has gained a reputation through intensive use. However, this presupposes that a significant proportion of the target group clearly associates the sign with the company, which is rarely the case in practice, and the requirements for proving reputation are high and involve considerable costs (e.g. through expert opinions or market studies). In addition, prior use does not protect against registration by third parties, unless it can be proven that they are acting in bad faith (Section 8 (2) No. 14 MarkenG). In practice, it is therefore much easier and cheaper to apply for a trademark at an early stage in order to secure comprehensive rights and avoid conflicts. Many founders also underestimate the fact that not only company or product names are affected, but also functions, event names or other specific designations that are used in a business context. Without a registered trademark, there is often no protection whatsoever – neither as a work within the meaning of copyright law nor as a business name. Example:
A young company has been using the name “GreenTech Solutions” for its services in the field of renewable energies for years. A competitor applies to register this name as a trademark and is granted registration. The original company can only continue to use the brand name if it can prove that “GreenTech Solutions” has already acquired a reputation – a time-consuming and uncertain process. Another example shows that this does not only affect names: In a recent case from my practice, a game developer had established a special event in its online game that was held regularly over the years and was very popular with players. However, the name of this event was never registered as a trademark. A competitor has now had this very event name protected as a trademark and therefore has exclusive rights to it. The original game developer can no longer use the event under this name and is faced with the challenge of either finding a new name or taking legal action against the registration – a lengthy and cost-intensive process with an uncertain outcome. These examples illustrate this: Regardless of whether it is a company name, product name or specific designations such as event names – without a registered trademark, there is always the risk that third parties can have it protected and thus block its use by the original user. Start-ups should therefore check at an early stage which terms or signs are essential for their business model and register them with the DPMA or EUIPO in good time. This is the only way to create long-term legal certainty and secure your own competitive advantage.
How can startups protect their brand?
Thorough trademark research
Before applying for a trademark, you should check whether identical or similar trademarks already exist. A professional search at the DPMA and in international databases such as the EUIPO helps to avoid conflicts. You should not only look for identical names – similar signs can also be problematic if there is a risk of confusion. A thorough search protects against expensive legal disputes and prevents unnecessary investment in a trademark that may not be protected. Start-ups should be aware that there may also be regional differences in the registration of trademarks – especially in the case of international registrations via the Madrid system.
Choosing the right brand shape
Startups can choose between different brand forms:
- Word mark: Protects the name regardless of font or design.
- Figurative mark: Protects the logo.
- Word/figurative mark: Protects the combination of name and logo.
The choice of the appropriate form depends on how the startup wants to use its brand – for example, whether the focus is on the name or the visual design. For many founders, it makes sense to register a word mark first, as this can be used more flexibly than a purely figurative mark.
Application to the DPMA and EUIPO
The application is filed online via the DPMA for national trademarks or via the EUIPO for European trademarks (European Union trademarks). The following steps are required:
- Description of the brand.
- Selection of goods and service classes according to the Nice Classification.
- Payment of the application fee (from € 290 at the DPMA; from € 850 at the EUIPO).
After successful examination, the trademark is entered in the register and enjoys legal protection in Germany (DPMA) or in all EU member states (EUIPO) from this point on. The registration thus offers comprehensive protection within the respective geographical area of application.
International registration
For start-ups with global ambitions, international registration via the Madrid system (WIPO) is recommended. This allows the trademark to be protected in several countries at the same time – an important step for companies with expansion plans. International registration is based on a national or European basic trademark and enables start-ups to efficiently extend their rights to several markets. This is particularly relevant for industries with strong competition on a global level.
Conclusion: Early trademark protection pays off
Protecting a trademark by registering it with the DPMA or EUIPO is essential for start-ups to ensure long-term success and avoid legal conflicts. Contrary to what is often assumed, the mere use of a trademark does not offer reliable protection against imitators or competitors. By registering early, founders can secure exclusive rights and strengthen their market position. As a lawyer specializing in start-ups and companies, I also support you in legally protecting your ideas – from researching and registering to defending your rights in the event of conflicts. Invest in the protection of your trademark – because it is far more than just a name!
