The life of a trade mark usually begins with its application for registration - often after prior searches for any conflicting earlier rights. This is followed by the registration procedure with the examination as to registrability and absolute grounds for refusal, as well as, possibly, an opposition procedure with the examination of relative grounds for refusal.
Once the trade mark has been applied for or even registered, the principle of the inalterability of the trade mark applies (on the EU trade mark, Article 54(1) EUTMR). In particular, the sign itself cannot be altered at a later date or the scope of protection of the trade mark extended, as a rule, for reasons of protection of trade. Only the name and address of the applicant, linguistic errors, spelling mistakes or obvious inaccuracies can still be corrected, provided that such a correction does not affect the essential content of the trade mark (Art. 49 II EUTMR; Art. 11 EUTMIR; Section 45 I MarkenG). There is a further exception under certain conditions for EU trade marks which contain the name or address of the applicant if these change (Art. 54 EUTMR; Art. 10 EUTMIR).^[1]
If, for example, the scope of protection of a trade mark registered for beverages is later to be extended to further products such as items of clothing, a further, new trade mark application is required for this purpose. Even a specification of a trade mark is not permitted.^[2] The same applies to a change in the form of the trade mark, for example from an abstract colour mark to a figurative mark.^[3]
However, there is an important exception to this principle of the immutability of the trade mark. Namely, restrictions can also be made at a later date to the products for which the trade mark claims protection.^[4]
For example, a trade mark that is initially protected in general terms for 'clothing' can be restricted to 'men's socks'. However, the respectively reverse extension would not be permissible.
A certain period of time after registration - usually after the expiry of the grace period of five years - a trade mark must be used by its proprietor or at least with his consent. If the trade mark is not used, it can be challenged by third parties on the grounds of non-use alone and thus declared invalid. At the same time, no injunctive relief^[5] can be derived from an unused trade mark after the grace period for use has expired. It thus effectively loses its function as an exclusive property right.
Therefore, even if an initially well-known trade mark such as 'Aral' was not used for more than five years, it would be subject to cancellation and thus more or less worthless.
The grace period for use must be distinguished from the protection period. Initially, a trade mark is protected only for a period of - in most countries - 10 years.^[6] However, upon payment of a fee, the trade mark protection can be renewed - repeatedly - for a further 10 years. Compared to other intellectual property rights such as patents, designs or copyrights, trade marks thus enjoy the advantage that - at least in theory - trade mark protection is possible for an unlimited period of time.^[7]