Brand: “Does the spelling matter?”

B4B readers ask, our industry experts from the region answer: “Traditionally, we only use lower case and no umlauts in product names – e.g. allgaeu. Is this also permitted for a protected regional designation of origin, or must the official spelling be chosen for this in order to claim protection?” Dr. Bertram Rapp of CHARRIER RAPP & LIEBAU, our expert on patent issues, knows the answer.

First of all, when using a trademark or a geographical designation of origin, it is important to ensure that no third-party rights are infringed. Thus, if one uses a trademark, it should be ensured beforehand through a search that there are no older identical or confusingly similar trademark comparisons or similar goods and services in order to avoid difficulties. This also applies to geographical indications, appellations of origin, collective marks and warranty marks. In these cases, the trademarks may only be used if the contractual and legal requirements are met. For example, a geographical indication of origin may only be used if the product meets the specifications of the geographical origin, i.e. “Bavarian beer” only for beer from Bavaria.

Trademarks must not be alienated

It is also recommended that the trademark be used in its registered form, i.e. not alienated. If – as in the case of “Allgäu” – a specific figurative mark is registered, this should also be used. At the latest after the expiry of five years after registration of a trademark, it is subject to the obligation to use it, i.e. it can only be enforced for goods and services for which it was used in the registered form by the trademark owner or persons authorized to do so. If one does not use the trademark in the registered form oneself, it should at least be ensured that another authorized user uses it in the registered form, so that the trademark cannot be cancelled at the request of a third party due to non-use. Thus, already for these reasons of compulsory use, it is strongly advised to use the trademark at least also in the registered form. In this context, the further requirements for use preserving the rights must also be observed, namely use in Germany (or in the case of a European Union trademark within the European Union), to a sufficient extent, on the goods or their packaging or in connection with the services provided, continuously over time and in a serious form, i.e. not merely as a sham use. If you meet these requirements, the trademark, whether it is your own trademark or a trademark to which you have a right to use, is safe and can be enforced even against unauthorized third parties.

Do you have any questions for patent expert Dr. Bertram Rapp, or would you like more in-depth advice?

Patent attorney Dr. Bertram Rapp, Charrier Rapp & Liebau

Brand: “Does the spelling matter?”“

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