Trademark Protection In The Life Sciences Business - Why Start-Ups And Founders Should Take Care

Taylor Wessing PartG mbB


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For the founders of a company, their first thought is not necessarily about brand protection, most likely other issues seem to be more pressing and the approach may be...
Germany Food, Drugs, Healthcare, Life Sciences
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For the founders of a company, their first thought is not necessarily about brand protection, most likely other issues seem to be more pressing and the approach may be: no time, too expensive, too complicated, and anyways, brand protection is only for big companies. The opposite is true! Below we explain why it is worthwhile to invest in protecting your trademarks at an early stage.

Why is a trademark application important?

The biggest advantage of a protected trademark is that only the owner is entitled to use the trademark. Third parties are prohibited from using identical or similar signs for similar or identical products from the start of protection. It pays off to protect your trademark as early as possible: Competitors usually become aware of a product or service at the latest as it becomes better known. It is not uncommon for them to become "free riders" who want to profit from the success of your idea, imitate it and often choose a trademark that is at least similar. If you have not had your rights protected, you can hardly have such an action prohibited. In the worst case, an imitator or competitor will beat you to it, register the (copied) idea as a trademark himself and prohibit you from using the sign any further. All the effort you have put into your new business idea will then suddenly be for nothing. If, on the other hand, you have had your trademark(s) protected in good time, you have the option of issuing a warning letter to the imitator yourself. As the owner of a trademark, you can also oppose the registration of identical or similar trademarks for identical or similar goods or services so that third parties cannot benefit from your success. You should also bear in mind that a trademark can gain considerable value in the medium to long term and thus increase the value of the company at the same time. If, for example, you are looking for investors at some point or would like to sell your company, the money invested in protecting the trademark will more than pay for itself.

When should you take care of trademark protection? Does a trademark search make sense?

As early as possible! As soon as a project or business idea has a name, you should think about protecting the chosen name, a logo or even the particular shape of your product. Ideally, you should register the trademark before you launch it on the market. Before using the name or logo externally, you should first carry out a trademark search or have one carried out, i.e. check whether the chosen or a similar sign or logo is already registered for the same or similar goods or services. If you use - even unknowingly - a sign that is protected for a third party, it can quickly mean the end of your trademark and become expensive: This can result in a warning letter from the trademark owner with corresponding costs and the obligation to submit a cease-and-desist declaration. If you have already started marketing your brand and the market may even have already memorized it, the damage to your image and the material damage may be considerable. However, it is often difficult to recognize whether an older trademark susceptible to confusion with your trademark has been registered for a third party. This is particularly the case because not only identical, but also similar, already registered trademarks are sufficient to exclude protection for your own sign. It therefore makes sense to entrust this search and assessment to a trademark law expert. We will be happy to assist you with this.

What actually is a trademark?

If you offer goods or services on the market, you inevitably do so under a specific sign. This sign assigns the goods or services to a specific company, namely your company, and at the same time distinguishes them from the goods and services of other companies. A trademark therefore primarily has the function of embodying the origin of the goods or services. This is particularly clear in the case of so-called well-known brands, i.e. brands that are familiar to the majority of consumers: For example, everyone immediately knows what headache remedy "Aspirin" is and which company it belongs to.

Which signs can you protect as a trademark?

The "simplest" and most frequently chosen form of trademark is the word mark, which protects the name of a company or product as a (pure) word mark. Figurative marks (such as a logo or other graphic elements) and so-called word/figurative marks (combinations of word and figurative elements) are also frequently registered. There are also special types of trademarks, such as the three-dimensional trademark (e.g. certain shapes of packaging), the color trademark or the sound trademark. For some time now, so-called position marks (e.g. the red fabric flag on Levi's jeans), motion marks, hologram marks or identification thread marks have also been eligible for protection, although the latter are rarely registered.

Does one brand automatically apply to all your products and services?

No. Trademark protection never exists in the abstract, but always only in relation to certain product or service categories according to the so-called Nice Classification. This classification contains 45 different categories with generic terms for goods and services. When applying, you must specify the classes for which the trademark is to be registered, e.g. in goods class 5 "Pharmaceutical products" or 10 "Surgical, medical, dental and veterinary instruments and apparatus" or in services class 44 "Medical services". To ensure that your trademarks are fully protected, we work with you to create a list of goods and services tailored to your needs.

Where are your trademarks registered and in which countries are they protected?

This depends on your product range. A national trademark with protection (only) for Germany must be registered with the German Patent and Trademark Office (Deutsches Patent- und Markenamt DPMA). In many cases, however, further protection as a European Union trademark, which is registered with the European Union Intellectual Property Office (EUIPO), is recommended. A European Union trademark offers protection in all EU member states with one application. It is also possible to extend protection to other selected countries worldwide by filing an IR trademark application with the World Intellectual Property Organization (WIPO). Before registering your trademarks, we will clarify with you which type of registration is best suited to your needs and business objectives.

Not that expensive - What does a trademark application cost?

A trademark application is inexpensive - especially compared to other costs that founders have to invest at the beginning. The costs vary depending on the type and scope of the desired trademark protection. For example, an (electronic) trademark application for a national German trademark at the DPMA in up to three classes of goods or services currently costs an official fee of EUR 290 (electronic); each additional class costs EUR 100. The application for a European Union trademark at the EUIPO costs slightly more: EUR 850 must be paid for the application in one class. A second class of goods or services costs EUR 50, each additional class EUR 150. The fees for an extension of a German or European trademark (IR trademark) at the WIPO vary depending on the number and selection of countries for which protection is sought. In all cases, there are also our consultancy fees, which vary depending on the scope of the signs to be registered and the research. Please contact us, we will be happy to give you an initial assessment.

How long is your trademark protected?

Theoretically forever - but only if protection is repeatedly renewed. Once the trademark has been registered, it is initially protected for a period of ten years. Protection can be renewed as often as required for a renewal fee.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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