KLAKA law firm regularly represents BMW AG in cases of alleged trademark infringement. Affected parties receive cease-and-desist letters accusing them of infringing trademark rights to well-known designations such as "BMW", "M", "M1", "MDrive" or "MINI".

The letters often include trademark register extracts and a pre-prepared cease and desist declaration – with a request to sign it within a short period of time.

Our law firm specializing in trademark law helps you protect your rights, minimize the risk of cease-and-desist letters, and ensure your online presence is legally compliant – before a trademark issue turns into an expensive legal dispute.

What exactly is demanded in the BMW warning letter?

As a rule, KLAKA lawyers assert several claims on behalf of BMW AG:

• Submission of a legally binding declaration of discontinuance and undertaking
  • The person concerned is to declare that he will refrain from the disputed use in the future and will pay a contractual penalty in the event of a recurrence.
• Providing information about the type and scope of use
  • BMW is requesting information on sales figures, suppliers, and advertising measures.
• Claims for damages
  • Following the provision of information, financial compensation is to be paid for the alleged trademark infringement.
• Reimbursement of legal costs
  • For the calculation of legal fees, a value in dispute of up to [amount] is often used. 5€00,000 has been allocated. 
  • Depending on the individual case, the required out-of-court costs can amount to up to to 6.The gross amount is €0.000.

These high sums demonstrate that BMW consistently prosecutes trademark infringements – and those affected should therefore not react rashly.

How should you react to a cease and desist letter from BMW?

If you have received a cease and desist letter from KLAKA lawyers:

• keep CalmNot every warning letter is legally valid.
• No contact with the other sideAny communication without legal advice can worsen one's own position.
• Do not sign anything.The enclosed cease and desist declaration is usually formulated in a one-sided manner and should not be submitted without being reviewed.
• Do not make any payments.: Any potential claims should only be decided after a legal review.
• Act quicklyThe deadlines are short. Have your case reviewed promptly to avoid legal action.

Why legal support is crucial in trademark law

A cease-and-desist letter from BMW is legally complex and financially risky. The right strategy depends on the specific allegation and the type of use. An experienced trademark attorney will review the case.,

• whether a trademark infringement actually exists,
• whether the claims are justified,
• and how you can best defend yourself – out of court and in an economically sensible way.

Our law firm has many years of experience in trademark law and is familiar with the approach taken by KLAKA lawyers in numerous BMW cases. We offer you legal support.

If you've received a cease-and-desist letter from BMW, don't ignore it. With legal assistance, you can have the claims reviewed to determine their validity and how best to protect your interests. Have your cease-and-desist letter reviewed now – before it turns into a costly legal battle.

Online retailers and spare parts suppliers are increasingly receiving cease-and-desist letters from Zierhut IP on behalf of KTM AG. The accusation: trademark infringement through the unauthorized use of the term "KTM" in article titles or product descriptions. Sellers offering accessories or spare parts for motorcycles without selling genuine KTM products are particularly affected.

This article explains what is behind the KTM warning letters, what demands are made, and how to react correctly to avoid high costs and legal risks.

KTM – strong brand, strict trademark protection

KTM AG is one of Europe's leading motorcycle manufacturers and is known worldwide for its high-performance models – from motocross and racing bikes to touring motorcycles. With annual sales of over €1.8 billion, KTM is considered the market leader in the European motorcycle segment.

To protect its brand identity, KTM AG has registered numerous word and word/figurative marks containing the well-known "KTM" logo, which are protected under trademark law in Germany and internationally. This protection extends not only to motorcycles, mopeds, and scooters, but also to spare parts, accessories, bicycles, and maintenance and repair services.

This comprehensive trademark protection means that KTM consistently takes action against unauthorized trademark use – especially when third parties use the designation „KTM“ without authorization in their online offers.

What demands does Zierhut IP make in the KTM cease and desist letters?

In the current cease-and-desist letters issued by the law firm Zierhut IP on behalf of KTM AG, those affected are confronted with a number of demands and obligations. These include both the cessation of trademark infringement and the disclosure of information, as well as the reimbursement of costs.

Typically, Zierhut IP lawyers demand:

Submission of a legally binding cease and desist declaration

Those who received cease-and-desist letters are required to submit a declaration of discontinuance according to the so-called "Hamburg custom." This obligates them to refrain from using the "KTM" trademark without authorization in the future. Violations can result in substantial contractual penalties.

Comprehensive information provision

Furthermore, detailed information is required – for example, regarding manufacturers, suppliers, delivery quantities, purchase prices, sales times, offers, and advertising measures – and this information must be substantiated with supporting documents. This information serves as the basis for the subsequent calculation of damages.

Reimbursement of warning costs

Finally, Zierhut IP Attorneys typically demand payment of €4,120 in warning costs. This sum is calculated based on a high value in dispute, reflecting KTM AG's economic interest in protecting its trademark.

Do not sign or pay anything without legal review.
A hasty reaction can have long-term legal and financial consequences. An experienced trademark attorney can assess the validity and scope of the claims and develop an appropriate defense strategy.

Do not ignore KTM's warning letter under any circumstances – legal action and high costs are imminent.

Anyone receiving a cease-and-desist letter from KTM AG via the law firm Zierhut IP should under no circumstances ignore it. Such letters are serious trademark infringement notices, not forgeries or mass emails.

If the warning letter is not answered or only inadequately answered, legal enforcement of the claims is threatened – with significant financial consequences.

A lawsuit can quickly become expensive:

• In a case involving an injunction valued at 300,000 euros, court costs alone amount to approximately 8,000 euros.

• In addition, both parties will incur legal fees of up to 7,000 euros.

• The total legal costs can exceed 20,000 euros.

If the warning letter is legally justified, it is advisable to avoid litigation regarding the cease-and-desist claim. An out-of-court settlement – for example, through an amended cease-and-desist declaration – can significantly reduce costs and risks.

The situation is often different with regard to warning costs and claims for damages: Here, a legal review is worthwhile, as these amounts are often set too high and can be negotiated or reduced.

Why a trademark infringement notice should always be reviewed by a lawyer

Not every trademark infringement notice is legitimate. Even letters that appear convincing at first glance may contain formal or substantive errors. Therefore, those affected should always have a cease-and-desist letter from KTM AG or other trademark owners reviewed by a trademark attorney.

Trademark law is one of the most complex areas of intellectual property law. Even experienced lawyers find it difficult to assess,

• whether there is actually trademark use,

• whether a legitimate use under Section 23 of the German Trademark Act is possible,

• whether the trademark rights are exhausted in accordance with Section 24 of the German Trademark Act,

• or whether there is any likelihood of confusion within the meaning of trademark law.

Especially in the case of a KTM trademark warning issued by Zierhut IP, it is essential to carefully examine whether the designation "KTM" was used in the respective product description as an indication of origin (and thus as a trademark) or merely descriptively – for example, in the sense of "suitable for KTM models".

In addition to sound legal knowledge, experience in dealing with law firms specializing in cease-and-desist letters and negotiation skills are also crucial.

Only a trademark lawyer can properly assess the legal situation, defend against excessive demands, and develop a tailored defense strategy.

Why legal support really pays off in a trademark cease and desist letter.

A cease-and-desist letter for trademark infringement, for example from the law firm Zierhut IP on behalf of KTM AG, can quickly become expensive. In addition to legal fees and claims for damages, there are also long-term risks – especially contractual penalties if a cease-and-desist declaration is violated.

Therefore, hiring a trademark lawyer is not only recommended, but also economically sensible:

Unjustified warning letter?

If the trademark infringement notice turns out to be unfounded, you do not have to pay damages or legal fees. In many cases, the sender of the notice is even obligated to reimburse your legal fees.

Justified warning?

Even if the warning letter is essentially correct, legal advice can help limit damages. An experienced lawyer will ensure that no overly broad cease-and-desist declaration is issued – because such declarations are valid for life.

Avoid contractual penalties

Violations of a previously issued cease-and-desist declaration are particularly risky. A legal review ensures that you adapt your online offerings to be legally compliant and avoid future contractual penalties.

Therefore, before submitting a cease and desist declaration, all affected product offerings – especially those containing the term „KTM“ – should be carefully reviewed and revised.

Competent legal advice ensures that you can continue to advertise your products legally, without infringing trademark rights.

What to do if you receive a cease and desist letter from Zierhut IP and KTM?

A KTM cease-and-desist letter should not be ignored or underestimated. Short deadlines, high amounts in dispute, and far-reaching declarations of discontinuance carry significant risks. These steps are now important:

Stay calm and note the deadline.

Don't let yourself be pressured. Note the deadline and respond promptly – otherwise, you risk legal action and high additional costs.

Do not sign anything.

The enclosed cease and desist declaration is valid for life and is usually too broadly worded. It should only be submitted after legal review.

No payments without verification

Warning letter costs of around €4,000 are often negotiable. A lawyer can check whether the claim is justified or excessive.

Contact a lawyer

Trademark law is complex. A lawyer examines whether a trademark infringement has actually occurred and develops a sound defense strategy.

Do not communicate with Zierhut IP yourself

Direct contact can weaken your position. Leave all communication to your lawyer.

Anyone involved in online retail knows the risk: even using a seemingly harmless term can lead to an expensive trademark infringement notice. MO Streetwear GmbH is currently making headlines again – not for fashion, but for a wave of cease-and-desist letters alleging trademark violations. Those affected are often online retailers who use terms like "MO" in product names or descriptions – for example, on platforms such as Amazon, eBay, or classifieds sites.

Many people are caught off guard by such cease-and-desist letters. Suddenly, they are asked to sign declarations of discontinuance, claim damages, and pay legal fees – often involving high amounts in dispute. In this situation, thoughtful action and legal support in trademark law decisive.

„HOMEBASE“, „MO“, „myMO“ – when brands become a risk

Do you run an online shop and use terms like "MO", "myMO" or "HOMEBASE" as model names for clothing or shoes? Then you might suddenly receive a cease and desist letter for trademark infringement.

In many cases, MO Streetwear GmbH, through the law firm of Have Fey Rechtsanwälte, issues cease-and-desist letters to retailers who use these terms in article titles or product descriptions – often without knowing that they are protected trademarks.

As a result, those affected are asked to,

• to submit a legally binding cease and desist declaration,

• To provide information on sales figures and sources of supply,

• as well as to pay warning costs.

In cases with a value in dispute of up to 150,000 euros, costs can quickly amount to several thousand euros – a considerable burden, especially for smaller online retailers.

Third-party brands in product descriptions – legal gray area or clear boundary?

In online retail, it is common practice to label items with model names or descriptions. However, caution is advised: if these designations are also protected as registered trademarks, accusations of trademark infringement can quickly arise.

Whether the use is actually impermissible depends on how the trademark is used – and whether it is understood by customers as an indication of the origin of the goods.

When is a use considered trademarked?

Trademark use occurs when consumers assume that a particular product originates from a specific manufacturer or brand owner. This can be the case even if terms like "MO," "myMO," or "HOMEBASE" are used in an online offer—even if these terms only appear in the article title or product description and not on the product itself.

In such cases, there is a risk that the impression will be created that it is a product of the respective brand – and that can constitute trademark infringement.

Federal Court of Justice (BGH) on trademark infringement: The decisive factor is the type of use.

Whether the use of a mark in online commerce constitutes trademark infringement depends largely on the specific use. The German Federal Court of Justice (BGH) clarified this in a widely noted ruling in 2019 (BGH, Judgment of April 11, 2019 – I ZR 108/18) – in a case that also concerned the trademark "MO".

The court clarified that not every model name in an online offer is automatically used in a "trademark-like" manner. Rather, it depends on the overall effect of the offer and the consumer's expectations.

Well-known brands – clear origin attribution

For well-known brands, the legal situation is clear: If a protected brand name is used as a model name, the consumer usually understands this as an indication of the manufacturer.

For example, if an online shop offered a sports bag under the name "Nike Travel 3000", the average consumer would naturally assume that it was an original Nike product – even if the item actually came from another manufacturer.

Unknown brands – the circumstances are crucial

The situation is different with lesser-known brands such as "MO", "myMO" or "HOMEBASE". In these cases, the courts examine precisely how the mark is used in the specific offer.

Key factors include:

• the design of the product page (article title, description text, placement),

• the representation on the product itself,

• as well as the entire presentation in the online shop.

Specifically:

• If a symbol is placed on the label or on the product itself, the consumer regularly sees it as an indication of origin.

• If the symbol is on the packaging or prominently displayed in the offer, this also suggests trademark use.

• If the symbol is only mentioned in the article title, trademark infringement is possible, but not necessarily the case – the wording in the overall context is decisive.

Received a trademark infringement notice? Why ignoring it can be costly.

A trademark infringement warning is not a trivial matter. Anyone who receives such a letter – for example, from MO Streetwear GmbH – should under no circumstances ignore it. Even a failure to respond can lead to legal proceedings, which incur considerable costs.

In many cases, it can be advisable to submit a cease-and-desist declaration with a penalty clause to avoid legal proceedings. This declaration does not constitute an admission of guilt – neither with regard to an actual trademark infringement nor with regard to the claimed costs.

However, beware: The pre-prepared cease-and-desist declaration sent by the opposing party should never be signed without careful review. It often contains excessive penalties, far-reaching obligations, or an unfavorable jurisdiction. A customized, so-called modified cease-and-desist declaration that protects your own interests is generally the better option.

Anyone who submits a cease-and-desist declaration commits to permanently refraining from the disputed infringement – usually for 30 years. Companies like MO Streetwear GmbH frequently and carefully check whether those who have received a cease-and-desist letter are complying with this obligation. Even a minor infringement, such as a forgotten listing on eBay or in Google search results, can trigger a contractual penalty of several thousand euros.

Before submitting a cease and desist declaration, all infringing content must therefore be completely removed – not only in one's own online shop, but also on sales platforms, in search engine caches and on social media channels.

Reduce risks with legal support

Ignoring the problem is costly, as is acting rashly. With support a trademark lawyer This avoids the risk of expensive contractual penalties and legal proceedings.

According to the FAZ Institute, Anne-Kathrin Renz is among the top female lawyers in the field of intellectual property law for 2026. This award recognizes our many years of experience dealing with legal issues of the digital age – from trademark registrations and IT contracts to the protection of creative works in media and on online platforms.

The complete list of award-winning law firms can be found on the website

Why the FAZ award is so important

The annual FAZ study is based on an independent survey conducted in collaboration with renowned analysis partners. outstanding law firms to identify in their core areas – based on objective criteria such as:

• demonstrable competence,
• practical experience,
• Client satisfaction,
• as well as sustainable success in handling mandates.

For our firm, this recognition is an important signal: The connection between legal precision and technological understanding is crucial today to effectively support clients in the digital economy.

What does intellectual property protection mean for us?

"Intellectual property rights" refers to all legal measures companies use to protect their brands, designs, software, and content. Especially in the digital economy, these intellectual property rights are often the foundation of business success.

Our firm represents clients in all areas of law, particularly in:

• Trademark law: Registration, defense and licensing of national and international trademarks.
• IT law: Drafting and reviewing software, cloud and development contracts, legally compliant online presences.
• E-commerce and competition law: Defense against warnings, legally compliant terms and conditions, protection against unfair behavior.
• Copyright: Protection of creative content, usage rights, social media content, file sharing.

Our service

We have been advising companies in the technology, agency, retail, and startup sectors for many years. We combine legal rigor with technical expertise.

Our clients benefit from:

• tailor-made advice at eye level,
• fast response time in the case of short deadlines and urgent procedures,
• clear communication and transparent costs,
• and a consistently digital way of working.

The demands on law firms in the digital environment are constantly increasing. IT and trademark law, in particular, require legal expertise that combines technical understanding with business acumen.

Especially at a time when AI, data, and online commerce are constantly creating new challenges, we want to provide companies with legal support – with competence, clarity, and a modern way of thinking.

We thank all clients for their trust – and see the award as an incentive to continue to be one of the leading law firms in trademark and IT law in the future.

Termination of the German-Swiss Agreement of 1892 – What trademark owners should pay attention to

With effect from May 31, 2022, Germany has terminated the “Agreement between Switzerland and Germany on Reciprocal Protection of Patents, Designs and Trademarks” of 1892.
This bilateral agreement, in force for over 100 years, made it easier for owners of intellectual property rights to exploit their rights in the other contracting state. A key provision concerned the use of trademarks to maintain their legal standing: actions in Switzerland were recognized for German trademarks, and vice versa. This option, which was often helpful, is now no longer available. Depending on the current usage situation, it may therefore be advisable to re-register trademarks – as long as this is legally possible.

Otherwise, the familiar rules apply: Anyone wishing to enjoy trademark protection in Germany and Switzerland must in future submit trademark applications separately in both countries or, alternatively, protect a national trademark through an international registration.

The abolition of the German-Swiss Agreement has far-reaching consequences in trademark law, particularly for trademark owners.
A key advantage of the agreement was that the legally valid use of a trademark was also recognized in the other country. This made it easier, in particular, to protect the trademark against cancellation applications due to lack of use.

Following the termination of the agreement, trademark owners must now ensure that their trademark is actually used in Germany and Switzerland to maintain protection. Acts of use in the other country are no longer automatically considered to be valid. This means that a trademark that has only been used in one of the two countries can no longer automatically be defended against cancellation applications in both states.

I can provide comprehensive advice on the consequences of the abolition of the German-Swiss agreement and support you in effectively protecting your trademark rights in both countries. Contact me to continue to reliably protect your brand.

The abolition of the German-Swiss agreement applies ex nunc, meaning only for the future. There is no retroactive cancellation.
Although some details are still unclear, everything indicates that trademark owners can continue to rely on acts of use in the territory of the other country over the last five years – but only for actions until 31 May 2022.

From the May 31, 2027 The termination of the agreement will be decisive for all trademarks. Acts of use in the other country will then no longer count within the five-year period and can therefore no longer be used to maintain the legality of a trademark.

Trademark owners who have previously used their German or Swiss trademarks exclusively in the other country must now adapt their usage practices.
With the abolition of the German-Swiss agreement, acts of use in the other country can no longer be used to maintain rights.

It is advisable to carefully review your trademark portfolio and, where appropriate, consider filing new applications for the trademarks in question – to the extent permitted by the rules on repeated applications.
This will ensure long-term trademark protection in both countries and minimize potential risks associated with the new regulations.

Optimize your brand strategy with my expert support! As a trademark attorney, I will support you in efficiently implementing your trademark application in Switzerland and adapting your trademark portfolio in a timely manner to ensure protection in both Switzerland and Germany.

Contact me to professionally secure your trademark rights and to optimally design your brand strategy.

Trademark application and registration by an experienced trademark lawyer

Have you developed a new product or founded a startup? Then you should consider registering a trademark early on. Trademark protection is a crucial step for the long-term success of your company and protects your corporate identity.

A trademark is a legally protected mark that distinguishes your goods or services from those of other providers—the so-called origin function of the trademark. With a registered trademark, you increase recognition, position yourself clearly in the market, and lay the foundation for a strong, positive brand image.

Why registering a trademark is worthwhile: By registering your trademark with the German Patent and Trademark Office (DPMA) or the European Union Intellectual Property Office (EUIPO), you secure exclusive rights of use. This creates the foundation for brand loyalty, trademark protection, and defenses against product piracy or trademark infringement.

The registration of a trademark with the German Patent and Trademark Office (DPMA) is not automatic. Every trademark application is carefully examined and may be rejected if so-called absolute grounds for refusal exist.

These include, among others:

• Lack of distinctive character of the mark
• Descriptive information that must be kept free
• Misleading brand components
• Included national emblems or official inspection marks
• Violations of morality or public order

Important: The German Patent and Trademark Office (DPMA) does not check whether identical or similar-sounding trademarks already exist. Without a prior trademark search, you risk costly opposition proceedings or warnings for trademark infringement.

As an experienced trademark attorney, I provide comprehensive support in legally compliant trademark registration – including trademark research, checking for grounds for refusal, and protecting your trademark against third parties.

Avoid costly mistakes – have your trademark professionally reviewed before registering. Contact us now for a free, no-obligation consultation.

Even after your trademark has been successfully registered, ongoing protection is crucial. Conflicts with younger trademarks or third-party trademarks can arise at any time. Professional trademark monitoring helps identify potential conflicts early and take action promptly.

I will take care of ongoing brand monitoring for you – reliably and at a fair annual flat rate.

Furthermore, actively maintaining your brand is essential. Due to the mandatory use requirement under trademark law, you otherwise risk your trademark being classified as purely descriptive and thus becoming subject to cancellation. Prevent descriptive use by third parties and protect the long-term economic value of your brand.

Secure your trademark rights sustainably – have your brand professionally monitored and maintained. Request a consultation now!

Even after your trademark has been successfully registered, ongoing protection is crucial. Conflicts with younger trademarks or third-party trademarks can arise at any time. Professional trademark monitoring helps identify potential conflicts early and take action promptly.

I will take care of ongoing brand monitoring for you – reliably and at a fair annual flat rate.

Furthermore, actively maintaining your trademark is essential. Due to the mandatory use requirement under trademark law, you otherwise risk your trademark being classified as purely descriptive and thus becoming subject to cancellation. Prevent descriptive use by third parties and protect the long-term economic value of your trademark.

Secure your trademark rights sustainably – have your brand professionally monitored and maintained. Request a consultation now!

Would you like to register and legally protect a trademark? As a specialized trademark attorney, I will guide you through every step – from initial strategic consultation to successful registration and beyond. With in-depth expertise in intellectual property law, I will ensure that your brand is protected for the long term and positioned with legal certainty.

My trademark services at a glance:

• Individual advice on brand strategy: I will help you select a suitable brand name and develop a customized registration strategy with you.
• Checking the protectability of your trademark: I will clarify whether your mark has the necessary distinctive character and whether there are any grounds for refusal.
• Trademark searches at the DPMA, EUIPO and WIPO: To avoid conflicts with existing trademarks, I conduct comprehensive identity and similarity searches.
• Creation of a tailor-made list of goods and services according to the Nice Classification.
• Formulation and filing of the trademark application: I will handle all correspondence with the trademark office and accompany you until you receive the trademark certificate.
• Objection procedure: I will represent you legally if third parties file an opposition against your trademark – or if you wish to take legal action against a younger trademark.
• Enforce trademark protection: I will help you defend your trademark both in and out of court – for example, through cease-and-desist letters, contractual penalties, injunctions, or lawsuits.

Your advantage: legal clarity, financial security, and professional brand management. Get expert support with your trademark registration – nationally, Europe-wide, or internationally.

Trademark registration in Great Britain – Professional trademark protection for your company

Registering a trademark in the UK can be done not only nationally with the help of our UK colleagues at the United Kingdom Intellectual Property Office (UKIPO), but also through the World Intellectual Property Organization (WIPO). We will discuss with you which of these two options is best for your company in a detailed preliminary consultation.

To register an IR trademark with protection in Great Britain:

A British trademark application is filed through the World Intellectual Property Organization (WIPO) in Geneva. A so-called basic trademark, previously registered as a national trademark, for example, in Germany, is forwarded to WIPO and registered internationally (an IR trademark). The IR trademark is then forwarded to the UKIPO, which verifies compliance with national trademark protection requirements. If the IR trademark is accepted by the UKIPO, trademark protection is extended to Great Britain.
This procedure is possible if both the country of origin of the basic trademark and the United Kingdom are members of the Madrid Agreement (MMA) or the Protocol to the Madrid Agreement (PMMA). This applies to German trademarks, European Union trademarks, and many other countries.
An application for an International Registration (IR) with protection in Great Britain must first be filed with the national trademark office of the country of origin (e.g., the DPMA for German trademarks or the EUIPO for European Union trademarks). After examination, the application is forwarded to WIPO, which re-examines it and then forwards it to the UKIPO, where registration takes place after the final examination.

Let us professionally guide you through the entire registration process for your British trademark. Contact me for comprehensive advice on trademark registration in the UK and protect your brand now!

Before registering a trademark in the UK, it is crucial to check your chosen trademark name for so-called "absolute grounds for refusal." The UK Intellectual Property Office (UKIPO) will only register your trademark if no such grounds exist.
An absolute ground for refusal could arise, for example, if the trademark lacks the necessary distinctive character or cannot be registered due to its purely descriptive nature. Likewise, a risk of deception or a need to keep the trademark available may prevent trademark protection.

Why a collision search is essential:
A thorough trademark search is essential before registering to minimize the risk of conflict with existing trademarks. If your trademark is registered despite a potential conflict with an older trademark, the owner of the older trademark may file an opposition, file a cancellation action, or issue a cease-and-desist letter to your company.
Cost savings through collision research
The costs of a legal dispute, opposition proceedings, or cancellation action are usually considerably higher than the costs of a professional conflict search. Through early and comprehensive research, potential conflicts can be identified and avoided early on.

Avoid costly trademark disputes in the UK by getting professional support with your trademark conflict search. Contact me now for a thorough and cost-effective trademark search that will protect you before registering your trademark in the UK!

Filing a British trademark as an International Registration (IR) involves various fees, which vary depending on the number of Nice classes and the relevant trademark office. Here is an overview of the most important fees:

Trademark registration fees:

• Forwarding fees of the trademark offices (DE + EU):

  • DPMA fees: 180.00 EUR for forwarding after registration of the basic trademark, excluding the registration costs for the basic trademark.

  • EUIPO fees: EUR 300.00 for forwarding after registration of the basic trademark, excluding the costs for registration of the basic trademark.

• WIPO fees:

  • CHF 653.00 for a word mark or a black and white figurative mark.

  • CHF 903.00 for a coloured figurative mark or word/figurative mark (basic fee of the World Intellectual Property Organisation).

• UKIPO fees:

  • CHF 202.00 for the first Nice Class and CHF 56.00 for each additional class from the second Nice Class onwards (UK Trademark Office fees).

What are Nice classes?
When registering your trademark in the UK, you must specify the goods or services for which your trademark is to be protected. These can be classified into one of the 45 Nice classes. The amount of fees at WIPO and UKIPO depends on how many of these classes you select for your trademark.

Renewal of the trademark after 10 years:
After 10 years, you must renew your trademark protection. The following fees apply:

• WIPO: In addition to the basic fee of CHF 653, there is a fee of CHF 224.00 for the first Nice class and CHF 56.00 for each additional class from the second onwards.

• UKIPO (direct): If the mark is renewed nationally at the UKIPO, the fees are GBP 200.00 for the first Nice Class and GBP 50.00 for each additional class from the second onwards.

As a trademark attorney, I provide comprehensive advice on registration fees and renewal options, and support you in structuring your trademark protection in the UK efficiently and with legal certainty. Contact me for detailed advice on trademark registration in the UK!

In the UK, a five-year grace period applies after trademark registration. This means that a trademark must be actually used no later than five years after registration to retain legal trademark protection.

What happens if the trademark is not used?
If the registered trademark is not used within five years, a third party may file a cancellation request. In this case, the trademark will be canceled unless the owner can prove actual use.

Why is the grace period relevant?
The grace period ensures that trademark protection is only granted for trademarks that are actually actively used in commerce. It prevents trademarks from being registered solely for strategic reasons to make it more difficult for others to use similar trademarks. To ensure long-term trademark protection, it is crucial to actively use the trademark.

As a trademark attorney, I will assist you with your trademark registration in the UK and ensure that your trademark is registered with the UKIPO in a legally sound and efficient manner. I will guide you through the entire process – from trademark research and registration to ongoing monitoring of trademark protection. Trust in my expertise to ensure the best possible protection for your trademark in the UK.

Contact me now for comprehensive advice on trademark registration in Great Britain!

Register a European Union trademark – Effective trademark protection throughout the EU

A European Union trademark application is filed with the European Trademark Office (EUIPO). Here are the steps you should follow for a successful application:

• trademark search
  Before applying for an EU trademark, it is crucial to ensure that no identical or similar trademarks are already registered in the European Trademark Register. A thorough trademark search will help you avoid potential conflicts and increase your chances of a successful application.

• Submit registration
  You can conveniently register your EU trademark online via the EUIPO platform. The electronic filing process is simple and efficient, and the EUIPO offers a user-friendly interface for a straightforward filing process.

• Examination by the EUIPO
  After filing, the European Trademark Office will check whether your trademark meets the legal requirements, such as distinctiveness and compliance with formal requirements.

• publication
  After successful examination, your trademark will be published in the European Trademark Register. This publication gives third parties the opportunity to file oppositions against the application if they believe their earlier trademark rights are being infringed.

• registration
  If no objections are raised within the opposition period, your trademark will be registered and you will receive legal trademark protection throughout the European Union.

Conclusion
Registering a European Union trademark can be complex. With my support as a trademark attorney, I will ensure that your trademark is registered professionally and efficiently. I will guide you through the entire process and help you avoid potential pitfalls.

Creating a list of goods and services for trademark registration is often challenging, both for laypeople and for attorneys who are not specialized in trademark law. It is particularly important to strike the right balance to prevent future problems.

The correct representation of your activity
The list must not only accurately reflect the applicant's current activities but also consider potential future activities. The trademark applicant has a grace period of five years after filing the application, during which they are not required to use their trademark. However, trademark applications cannot be amended or supplemented after filing. If an important class or product is omitted, a new trademark application must be filed, or trademark protection will not be guaranteed in that area.

The risks of too broad a selection
It's important to be careful when selecting the goods and services in the list. Including too many classes increases the risk that third parties with prior rights will file an opposition to the trademark application. It's also important to note that after the five-year grace period, third parties may file a cancellation request if the trademark has not been used at all or has not been used in full.

Our support with trademark registration
My support as a trademark attorney will help you create a comprehensive and accurate list of goods and services that protects your rights in the long term and minimizes potential risks. I will ensure that your application covers all relevant goods and services while complying with the legal requirements.

Before applying for an EU trademark, it is crucial to conduct a thorough trademark search. This checks whether there are any prior trademark rights that could conflict with the trademark application. The EUIPO (European Union Intellectual Property Office) does not conduct this check ex officio, so it is the applicant's responsibility to identify potential conflicts early on.

Which signs can conflict with an EU trademark?
Not only EU trademarks can be opposed, but also national trademarks from the 28 EU Member States, international trademarks protected in the EU, company logos, company names, and domains. Similar trademarks or signs that could create a likelihood of confusion also pose a risk.

Why a comprehensive trademark search is important
Earlier trademarks or signs may oppose your EU trademark application if there is a likelihood of confusion. An opposition can be filed with the EUIPO within one month of the publication of the trademark application. If the opposition is successful, the trademark will not be entered in the trademark register, and the application will be rejected by the EUIPO.

Protect your brand in time
A thorough trademark search before filing can avoid costly errors and delays. My support as a trademark attorney will help you conduct a comprehensive trademark search to identify potential conflicts with older trademarks early on and securely file your EU trademark application.

Contact me now for a professional trademark search and ensure that your EU trademark is successfully registered without any legal obstacles!

Before a European Union trademark is registered, it must possess the necessary distinctive character and, in particular, must not be descriptive of the goods and services for which registration is sought. The EUIPO examines ex officio whether these requirements are met. If the EUIPO considers the trademark to be descriptive, the trademark application will be refused, and the application will not even be published.

Why review by a lawyer is important
The decision as to whether a trademark is descriptive is often unclear. For this reason, it is advisable to consult a lawyer specializing in trademark law before applying for an EU trademark. In some cases, a descriptive word mark can still be protected by converting it into a word-figurative mark.

Contact me today for legal advice on trademark registration and protect your trademark in advance against possible obstacles to registration!

The costs for registering a European Union trademark depend on the number of classes of goods and services you choose for trademark protection. Here is an overview of EUIPO fees:

• Basic fee: 850 € for first class

• Additional fee: 50 € for the second class and 150 € for each additional class

These fees cover trademark protection for a period of 10 years. After this period, trademark renewal fees can be paid to continue protecting your trademark.

The more classes you choose, the higher the cost. However, it's important to select the right classes to ensure your trademark is protected in the relevant areas.

Contact me for detailed advice on the costs and registration process for your European Union trademark!

Trademark registration in Switzerland – your professional trademark protection for sustainable success

The registration of a trademark in Switzerland is done through the World Intellectual Property Organization (WIPO) in Geneva. First, an international registration of a basic trademark is applied for under the Madrid Agreement (MMA) or the Protocol to the Madrid Agreement (PMMA).

This process extends the trademark protection of an already registered trademark to Switzerland. The basic trademark is registered with the Swiss Federal Institute of Intellectual Property (IGE), ultimately giving you a Swiss trademark.

Requirements for international registration

Registration through WIPO is possible if both the country of origin in which the basic trademark is registered or at least pending and Switzerland are members of the MMA or PMMA. This applies to German trademarks and European Union trademarks, as both Germany and the European Union are members of the PMMA. Many other countries are also members of the agreement.

An overview of the relevant member states of the MMA and PMMA can be found in my overview of international trademark applications.

A Swiss trademark application must be filed with the national trademark office of the country of origin of the underlying trademark. This means:

• For a German basic trademark, the application is submitted to the German Patent and Trademark Office (DPMA).

• If a European Union trademark is used as a basic trademark, the application is made to the European Union Intellectual Property Office (EUIPO).

After the initial examination, the national trademark office forwards the application to WIPO, which examines it again. Upon successful completion of the examination, the application is forwarded to the Swiss Trademark Office (IGE). There, the final examination and decision on trademark registration in Switzerland are made.

As a trademark attorney, I will guide you through the entire registration process and ensure that your trademark is registered efficiently and correctly in the Swiss trademark register. Contact me today for comprehensive advice on trademark registration in Switzerland!

The successful registration of a trademark with the Swiss Federal Institute of Intellectual Property (IGE) requires that no absolute grounds for refusal exist. Such grounds may exist if the trademark lacks the necessary distinctive character or is not eligible for protection due to its descriptive nature for the goods and services in question. A risk of deception may also lead to the trademark not being registered.

Why a collision search is necessary

To reduce the risk of a conflict with an older trademark, it's important to conduct a thorough trademark search before filing a trademark application. A collision search will show you whether similar or identical trademarks already exist that could be confused with your new trademark.

Otherwise, the owner of an earlier trademark that may cause confusion could file an opposition against your trademark application in Switzerland or even seek cancellation.

Save costs through collision research

The costs of opposition proceedings or cancellation actions usually significantly exceed the costs of a professional conflict search. By conducting an early and thorough search, you can avoid these potential risks and ensure that your trademark application is processed smoothly and legally.

There are various fees for trademark registration in Switzerland, depending on the number of Nice classes and the type of trademark. Here is an overview of the most important costs:

Fees for registering a Swiss trademark:

• DPMA fees: 180.00 EUR for a German basic stamp or 300.00 EUR for an EU basic stamp.

• WIPO fees: 653.00 CHF for a black/white mark or 903.00 CHF for a color mark (basic fee of the World Intellectual Property Organization, WIPO).

• IGE fees: 100.00 CHF for the first three Nice classes and 100.00 CHF for each additional Nice class from the fourth class onwards (Fees of the Swiss Federal Institute of Intellectual Property, IPI).

What is a Nice Class?
When applying for a trademark, you must specify the goods and services for which your trademark is to be protected. These can be classified into one of the 45 Nice classes. The fees charged by WIPO and the Swiss Trademark Office (IGE) are based on the number of Nice classes selected for the application. This applies regardless of whether the trademark is a word mark, figurative mark, 3D mark, or color mark.

After ten years, trademark protection can be renewed in Switzerland. The renewal fees are:

• 100.00 CHF for the first three Nice classes

• 100.00 CHF for each additional Nizza class from the fourth grade onwards
  In addition, the WIPO basic fee is charged.

In Switzerland, a grace period of five years applies after trademark registration. This means that your trademark must be actively used no later than five years after registration to receive legal protection.

If the trademark is not used correctly within this period, a third party may file a cancellation application, which could lead to the loss of your trademark rights in Switzerland.

The grace period protects against trademarks registered solely for the purpose of hindering other trademark applications. It is therefore crucial that you actively use your trademark within the five-year period—whether by selling products or providing services under the brand name.

Would you like to register your trademark in Switzerland? I'm here to provide you with professional support during this important step. I offer transparent and fair fixed fees for an initial consultation, which will be credited towards any subsequent work.

In my consultation I will discuss with you:

• The chances of success of your trademark application

• The estimated costs for the entire registration process

My goal is to register your trademark in a legally secure and efficient manner and to facilitate your path to trademark protection in Switzerland.

The World Intellectual Property Organization (WIPO) – A key role in international trademark law