Does the German Patent and Trade Mark Office check whether a name is already taken?
The German Patent and Trade Mark Office only checks, at the filing stage, whether absolute grounds for refusal exist, such as a purely descriptive term or a lack of distinctive character. Whether an earlier mark with the same or a similar name already exists is not checked by the office on its own initiative. That check is the applicant's responsibility.
According to the DPMA's own account of examination and registration, the application procedure does not examine whether earlier trade mark or other sign rights held by third parties block registration. If an opposition or invalidity proceeding based on earlier rights follows later, the mark can be cancelled again.
What it does examine are the absolute grounds for refusal: features that merely describe a good or service, or signs that lack distinctive character. Relative grounds, meaning conflict with a right that already belongs to someone else, are left out.
The EUIPO applies the same division of tasks: earlier rights are a relative ground for refusal that the office does not examine of its own volition. Anyone who wants to use a name has to rule out collision with earlier rights independently, before the filing fee is paid.
Fixed order for querying the databases before filing
A collision requires two things at once: an identical or a similar sign, and an overlap in the goods or services that the earlier right and the planned mark each stand for. The second question can only be answered along the Nice Classification, which divides goods and services into 45 classes, 34 for goods and 11 for services. Each query below therefore only gives a reliable answer if it covers both the name and the matching class.
1. DPMAregister
The first stop is the official, free register of the DPMA. It lists applied for, registered and refused national German marks, and alongside these also EU trade marks and international registrations with protection extended to Germany, for which the office itself does not guarantee accuracy or completeness, according to the DPMA's page on trade mark research. The search fails there on a technical point: a similarity search is not possible, according to the office, only an exact or truncated character search. A name that is spelled differently but sounds similar can pass through this query undetected.
2. TMview
Because the DPMA does not itself vouch for the completeness of the EU and international entries it also lists, the second step is TMview, the joint research tool of the EUIPO, the WIPO and the national offices. Use is free of charge according to the EUIPO's page on availability checks, and the database pools applications and registrations from all national EU offices, the EUIPO itself, and numerous offices outside the EU. The limit lies in participation: what is captured is what the connected offices report there, not any office outside that network.
3. eSearch plus
For EU trade mark applications and registrations in detail, for international registrations designating the EU, and for EU designs, the EUIPO runs its own database called eSearch plus, whose advanced search area also offers the daily publication bulletins for download. As an official EUIPO register, it too stays limited to EU related data and does not replace the national registers of the individual member states.
4. Madrid Monitor and the Global Brand Database
For international registrations under the Madrid System, Madrid Monitor, run by the WIPO, follows next, described by the WIPO itself as a free public service. The limitation concerns the depth of the data: only the current search is free of charge, while the complete historical Madrid backfile is explicitly not free. As a further research option for marks from national and international sources, the DPMA additionally names the WIPO's Global Brand Database.
5. What no register shows
Even if all four registers return no hits, the research is not necessarily complete. According to the DPMA's own classification, registers do not capture marks that exist through use alone, business designations, and other rights that arise purely through use in trade. For that area, the office itself recommends internet research and checking directories and commercial registers. No register query, however thorough, can close this blind spot, because such rights are not recorded in any of the four systems named above.
Effort of independent research against the cost of a collision
Three of the four registers state that their use is free of charge: DPMAregister is free according to the DPMA, TMview is free according to the EUIPO, and Madrid Monitor describes itself as a free public service, in each case for the current query. For eSearch plus the EUIPO states no cost information on its pages. The effort of independent research therefore lies not in fees but in the time spent working through all stations in order and researching unregistered signs online.
If the research is skipped or left incomplete, and the registered mark is later challenged over an earlier right, a quantifiable amount stands against that saved time. If the mark is cancelled in opposition or invalidity proceedings, the electronic filing fee of 290 euros under the fee schedule to the Patent Cost Act ends up having been paid for a mark that no longer exists. For the holder of the earlier right, the attack itself is comparatively cheap: an opposition costs 250 euros for one opposing sign under the fee schedule to the Patent Cost Act, plus 50 euros for each additional sign, while an invalidity proceeding based on earlier rights costs 400 euros, plus 100 euros for each additional earlier right relied on. Against these amounts stands, on the applicant's side, the filing fee paid for a mark no longer in existence, plus the effort of withdrawing the mark from trade, an item no official fee schedule records. Research that costs nothing at any point therefore stands against a risk that starts with a filing fee spent on a mark that no longer exists and continues with the procedural fees of the other side.
Related reading
- Procedure, classes and fees of a filing: Filing a German trademark
- Obligations and deadlines after registration: Trademark watch
