Ownership, Licensing, and Online Disputes — Managing Your Trademark Post-Registration

1. Change of Ownership

Once a German trademark is registered, ownership can change either by operation of law (e.g., inheritance, merger) or through a legal agreement (assignment). Although registration of the ownership change in the DPMA register is not mandatory, it is strongly recommended, as it ensures that the new owner’s rights are publicly recorded and enforceable without delay.

Key points:

• The validity and form of a transfer depend on the applicable law of the contract.
• A German patent attorney or attorney-at-law may request the change to be recorded without submitting the assignment document.
• In other cases, the DPMA requires documentary proof such as a signed deed of assignment.
• No notarisation is needed unless foreign law requires it.
• Failing to record the transfer can delay enforcement and create uncertainty in litigation, especially if the prior owner remains listed on the register.

2. Licensing of Trademarks

Licensing allows the trademark owner to grant another party (the licensee) the right to use the mark under agreed conditions.
Licences can be exclusive, non-exclusive, or sole, and may apply to all or some of the goods or services.

Important legal aspects:

Licensing does not require registration to be valid between the parties. However, either the licensor or the licensee may apply to record the licence in the register, provided the other party consents. The entry specifies the type of licence and any restrictions (territorial or product-specific). Registration is advisable to enhance transparency and enforceability, especially in co-branding or franchise structures.

A licensee may sue infringers only with the licensor’s consent, unless the licence agreement explicitly grants independent enforcement rights.

3. Commercial Designations and Trade Names

Beyond trademarks, German law protects commercial designations and company names automatically once used in commerce.
Such rights arise without registration, provided the name identifies a specific business in trade.

However, trade names are inseparable from the business they represent. They cannot be transferred or licensed independently of that business. Any assignment or licence must therefore include the associated enterprise, otherwise the right is invalid.

This distinction ensures that trade designations reflect genuine commercial identity rather than become detached tradeable assets.

4. Intersection with Copyright Law

In some cases, a trademark may simultaneously qualify as a copyrighted work, provided it demonstrates sufficient originality and creativity. Examples include:

• Logos with artistic or graphic originality
• Distinctive typography or stylised lettering
• Occasionally, slogans meeting the creativity threshold

This dual protection offers stronger control over reproduction, distribution, and adaptation of the mark. However, the copyright term - 70 years after the author’s death - differs from trademark protection, which can be renewed indefinitely every 10 years.

5. Best Practices for Post-Registration Management

• Maintain accurate records: promptly record any assignments or licence updates in the DPMA register.
• Monitor market use: regularly review online platforms and domain registrations for potential infringements.
• Renew on time: track the 10-year renewal cycle and pay fees early.
• Enforce consistently: tolerate no unauthorised use to prevent dilution or genericide.
• Integrate IP contracts: ensure that IP clauses in mergers, joint ventures, or employment agreements clearly address ownership of marks and trade names.
• Effective portfolio management transforms registration into lasting brand value.

Summary

Trademark ownership in Germany offers flexibility for transfer and licensing while maintaining strict rules to ensure authenticity and fairness in the marketplace. Proactive management - through timely recordal, licensing control, and domain monitoring - ensures that trademarks remain valuable, enforceable, and aligned with commercial goals.