COMPANIES AND TRADEMARKS

Slogan. Motto. Promise. The music of expression ... A striking image, a name with a certain ring to it. They make your business distinctive, they characterise it and they advertise your company all by themselves. They can protect your image with a word, a picture, a combination of these two forms or a three-dimensional shape.

When you register a trademark, you as its proprietor, acquire an exclusive right to use it for the protected goods and services and can prohibit others from using it. A mark is initially registered for ten years but this can be extended by ten years at a time as often as you like. Marks can last till the cows come home. They can go on forever.

The effect of a mark is defined territorially. A mark can be applied for to cover Germany, for example, or to cover the whole of the EU (with the Office for Harmonization in the Internal Market = OHIM in Alicante). To cover a large number of states an application for international registration can be filed with the World International Property Organization (WIPO) in Geneva.

When creating a mark it is important to ensure that it doesn't overlap with the scope of protection of existing marks or company logos, at least not where similar goods or services of other companies are involved. Before applying to have the mark entered in the register and before using it, the applicant should therefore do some research in order to keep the risk of infringements and the associated financial risks to a minimum. A trademark search is the answer, this places the created mark under the microscope.

However, when creating the mark it is necessary to consider that it should be a mark design which has not been cobbled together boringly or from typical attributes ('com' for computers and IT or 'med' for medical substances). Bugdahl in www.at10tion.de provides advice whilst also offering active assistance in the creative design of a suitable mark.

Its main themes ...

1. no directly descriptive NAMES (SAHNESTEIF)
2. no complimentary names (PLUS)
3. no geographical names (NORDSEE)
4. no Greek letters (alpha)
5. no imitation of the market leader
6. no defamation of the deceased (Lady DI)
7. no trendy names (e.g. no wishy-washy expressions)
8. no watered-down name components (BIO*, *TEC).

But carefully researched, memorable, catchy, enduringly likeable

9. fancy names, synthetic, abstract names
10. meaningful names containing an indirect reference

Real-life examples

"Capelli", "HAIRlich", "Vorher Nachhair", "Abschnitt", "CreHairtiv", "RUND HAIR UM", "Haarlekin", "Hauptsache", "Killing Hair", "Pony Club", "NO-HAIR studio", "Haar-em" are used for hairdressing salons and hair science services. As expressive marks they are distinctive and do not need to be kept free for the trade. They allow the term defining the services to be recognised or guessed by association but are not to be equated to it, cf. German Trademark Law § 8, sections 1 (1) and (2). The following should be viewed differently: "Hairdoc", "King Hair", "Hair 21 Salon", "Brilliant Hair Studio", "Hair Company", "hairlover", "Haircut", "New Hair", "Haus des Haares", "Haarkosmetik", "Haarzentrum", "Haar-Club" or "Haar in Haar - Friseur", which contain nothing more than the actual object concerned, cf. Federal Court of Justice in Wettbewerb in Recht und Praxis 2001, 1082, "marktfrisch" or European Court of Justice in MarkenR 2002, 391, "Companyline".

An earlier publication by Bugdahl, MarkenR 2015, 184 names extensive creative hair trademarks, such as "Haarakiri", "hairport", "Fönix", "Schnittstelle", "Querschnitt", "Haar ab solut" which we happily refer to at this point but it would be remiss of us not to mention that our idea of the hair-related trademarks had already been published in August 2013.

But how borderline cases look, i. e. "Hair Saloon" or "holyhair" has not so far been tackled. Association, yes, imitation, yes, direct recognition, no. Exceptionally easy to explain, but a borderline case could make you tear your hair out.

A trademark must be used for the goods or services for which it is applied for. To get the ball rolling, the law allows for a five-year period of protection within which lack of use will not incur any penalty. If a mark is not used, the trademark protection becomes an apparent right for the unused goods or services. The registered specification should also only contain goods or services for which the proprietor actually wishes to use or to allow his mark to be used or for which usage is to be included in the near future.

 

First published: 12 August 2013
Updated: 12 June 2015