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National trade mark or EU trade mark?

Your company is already active in many countries. You would like to introduce a new trade mark for your new product. You are considering protecting it as a European trade mark (EU trade mark) because protection for Germany is included. Or are there good reasons to apply for both trade marks?

At first glance, the question seems trivial: What’s wrong with registering the trade mark as an EU trade mark right away? It saves money and you get protection for currently 27 countries “in one go”. At second glance, the question is far less banal. Anyone who applies for an EU trade mark faces possible counter-rights from 27 member states. The risk of the trade mark not being registered due to older third-party rights is significantly higher. The requirements for the rights-preserving use of the trade mark are different, particularly in terms of quantity. The EU trade mark also has considerable disadvantages when it comes to enforcing the trade mark in court: Proceedings are suspended as soon as a third party files a cancellation request against the trade mark, whether justified or not. As a result, the proceedings against the infringer can be delayed for many years until a judgement is issued, after which the infringer is often unable to pay. On the other hand, the German trade mark is presumed to be legally valid as long as it has not been legally cancelled, which makes it easier to enforce. And these are just a few of the aspects that need to be considered when making a choice. Not to mention the question of whether the EU trade mark should be applied for directly at the EUIPO or whether protection should be applied for via an International trade mark registration. It is worth thinking about this in detail. We can advise you on which route is the most suitable for you.

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