BRAND REGISTRATION

BRAND REGISTRATION

For many businesses, a brand is not just a logo or a name – it is one of the company’s most important assets. The brand is a mirror of your hard-worked reputation; it is a representation of everything your customers are coming to you for.

But what if a competitor copies what you’ve been working on for so long?

Don’t panic, the solution exists! Just Register a Trademark – a legal tool that protects your brand. By registering, you will receive the following benefits:

1. 1. You own the brand and no one else! When you spend time and money building a company’s brand, legal protection should be a given.

1. 1. You will be unique! A trademark will help keep competitors from copying your brand and profiting from it. Often all you have to do is refer to your trademark registration, and the other side will back down.

1. 1. A registered company name is not enough! The company’s registered name in the commercial register only prevents the creation of another company with the same or similar name. However, a brand consists of other elements (logo, colours, slogan, etc.) besides the company’s name.

With a trademark, you are in a much better position in any disputes.

WHAT IS A TRADEMARK?

A trademark is a form of industrial property that legally safeguards a brand. Its main objective is to differentiate an individual’s goods or services from those of rivals. It can be a unique word, a short slogan, a picture, a logo, or a combination. Nonetheless, it can also be a characteristic colour, the shape of a product, or even a sound. To be eligible for trademark registration, a symbol or logo must meet specific legal requirements, such as having distinctive qualities. Successful trademarks should also possess originality, be easy to remember, and have lasting relevance.

WHAT IS THE DIFFERENCE BETWEEN WORDMARK AND LOGO / A FIGURATIVE TRADEMARK?

Before registering a trademark, it should be wisely considered in which form this trademark should be protected. Registration in the wrong form could lead to a cancellation for non-use later or it could be that the protection is not broad enough.

1. 1. Wordmarks

Wordmarks consist only of words, letters, numbers, or other characters. They can be represented with a standard font.  Such a word mark generally protects all forms of reproduction which are customary in the trade, in particular case-insensitive or uniform case-sensitivity and the exchange of common font types.

• • Figurative marks, logo’s

It cannot be said on a general basis that the protection of a word mark is sufficient because it encompasses all forms of representation. There are constellations in which the brands contain signs which cannot be represented by a font, but which are nevertheless to be protected. If the trademark contains such characters which cannot be represented by a normal font, this is treated as a word / image mark or as a graphic mark.

If the applicant applies for the registration of a word sign in a particular notation, font arrangement, font design or colour, if it is to a particular visual impression, it is also a word / image mark or image mark. This includes, in particular, the following variants:

• • Combination letter / string and picture element

• • Multi-line arrangement of the words

• • Locked words (character between the individual characters)

• • Italic or bold words wors or single letters in a particular font

• • Image marks Image marks are pictures,

• • picture elements or illustrations (without word components).

• • Many non-Latin characters, such as Chinese, are also displayed as image tags.

Scope of protection of a word / image mark

The entry of a word / figurative mark does not indicate whether the contained character sequence would be protected as a “pure” word mark. However, a non-protectable word sign can become a protection by adding a special graphic design.

Simple or customary graphic designs or embellishments are generally not sufficient for this. The more descriptive the word is, the higher the requirements are to the graphics. However, no prohibition rights against the use of the word can be inferred from a verbal word / figurative element which is not protected.

HOW DOES A TRADEMARK SECURE THE EXCLUSIVE RIGHT OF USE?

After registering a trademark, the owner gains the sole right to use that particular sign for the goods or services associated with it. No other individual or entity is allowed to use any identical or similar sign for similar goods or services in the region where the trademark is registered. There are different levels (regions) of registration: national level, regional level, EU level, international level. We will be happy to discuss with you the one that is most suitable for your business.

HOW DOES A TRADEMARK HELP AN ENTERPRISE TO BE DIFFERENTIATED FROM ITS COMPETITORS?

As competition continues to rise within different industries, having a unique and well-crafted trademark is crucial in clearly identifying and separating the products or services of one company from those of others. This helps avoid confusion between similar products or services offered by different entrepreneurs.

HOW DOES THE BRAND STRENGTHEN YOUR MARKET POSITION?

When an entrepreneur registers a trademark, it gives him a decisive advantage in case of any future attempts by others to use similar signs or exploit the established business identity without permission.

HOW LONG DOES THE TRADEMARK LAST?

One more significant benefit of having a trademark is that it can safeguard a business for an indefinite period, as long as it is utilised. Although the duration of the registration is limited (on EU level to 10 years), the proprietor can renew it multiple times for another 10-year term, without any restrictions, by paying a nominal charge.

WHAT DOES THE USE OF A TRADEMARK MEAN?

The use of a trademark is a central aspect of trademark protection. The purpose of a trademark is to distinguish the goods and services of one company from those of another. You can register your trademark here. However, the trademark laws of the various countries vary in terms of how the trademark is used. What all legal regulations have in common is that the trademark owner must be able to prove the use of the trademark at some point in time. In the case of trademarks, such as those that are possible in the USA, for example, proof of use of the trademark for the goods and services must be provided regularly at the time of registration. Because in the case of a user trademark, protection begins with the day of first use. In the European Community, trademark protection can also be acquired through use. The trademark protection, on the other hand, is independent of its use. It is acquired by simply registering the sign in a trademark register (register mark). Thus, trademark protection can only be used to prevent the registration of similar trademarks in the register.

However, the purpose of a trademark is to distinguish the goods and services of one company from those of another. Therefore, the serious use of the trademark in the protected area is also required for registered trademarks. If the proprietor of a registered trademark has not seriously used the trademark for the goods or services for which the registered trade mark has been registered within 5 years from the date of registration, the trade mark may be deleted from the protected area due to the lack of use. The same applies if the use of the mark has been suspended for an uninterrupted period of 5 years if there are no legitimate reasons (for example, war) for non-use.

WHAT IS “PROOF OF USE”?

Proof of use is evidence that clearly shows how you are using your mark in commerce on the identified goods or in connection with the services in your registration.

Examples for goods:

• • Photographs that show the mark on a tag or label affixed to the goods.

• • Hang tags or labels with the mark and the generic name of the actual goods on the tag or label and informational matter that typically appears on a tag or label in use in commerce for these types of goods.

• • Screen shots of web pages with the URL and access or print date that show the mark being used in connection with the goods at their point of sale.

• • Photographs of the mark on packaging where the goods are visible through the packaging.

• • Photographs of the mark on packaging where the packaging identifies the generic name of the goods included in the package.

Examples for services:

• • Copies of brochures or flyers where the mark is used in advertising the services. 

• • Photographs of the mark on retail store or restaurant signage

• • Photographs of the mark on service vehicles

• • Screen shots of web pages with the URL and access or print date where the mark is used in the actual sale or advertising of the services. 

WHAT IS THE MADRID PROTOCOL & AGREEMENT?

The Madrid Agreement Concerning the International Registration of Marks and the relating Protocol offer an easy to access way to file multiple trademark applications in a good number of countries worldwide, including the USA and China. The International Registration will be filed with the International Bureau of the World Intellectual Property Organization (WIPO) at Geneva, Switzerland, and may be designated to all countries party to the Agreement, the Protocol or both.

WHAT IS NICE CLASSIFICATION?

When applying for a trademark for entry in the trademark register, you must specify the goods and/or services for which the trademark is to be protected. The trademark is then only protected precisely for the areas registered. That is why brands of the same name can “co-exist” in different areas. The list of goods and services must be drawn up following the International Nice Classification of Goods and Services for the Registration of Brands (“Nice Classification”). In a total of 45 classes (34 for goods and 11 for services), it contains around 10,000 standardized and permitted terms that can be used for the list of goods and services in a trademark application.

HOW DO I REGISTER A TRADEMARK?

We have kept our trademark registration process as simple as possible.

1. Search

It is recommended to the availability of a trademark. Older trademarks can conflict with your application and cause oppositions or litigation regarding trademark infringements. Therefore, we recommend searching for identical or similar trademarks. You can choose between a free search by yourself or our professional availability search report. In the latter case our expert trademark lawyers conduct the searches, sent you the search report together with the risk calculation and answer your further questions.

2. Select country

Trademarks are valid for specific countries. Therefore, you must select in which country your trademark will be protected. Usually this corresponds with the countries in which you offer your products and services. If you intend to cover several countries, you might consider filing a so-called international registration.

3. Order

The order form asks you about the trademark and the owner. You can choose between wordmarks or figurative trademarks. Wordmarks are usually recommended if there are no substantial graphical elements, and this offers flexibility if the trademark later gets a facelift. Furthermore, you have to mention for which products or services your trademark seeks protection. Just give us an idea about your business. This could also be a link to your website. We will then find the correct wording and you can review this later.

4. Review

Once we have received your order, we will instantly send you a confirmation email.

First, we check whether the mark being registered is entitled to protection (absolute grounds of refusal). Not all marks may be registered as trademarks. For instance, merely descriptive information for the respective goods and services may not be registered as a trademark. These marks are to be freely useable for everyone. A trademark lawyer will then prepare the application and especially draft the correct wording for the list of goods and services. Afterwards, we send you our power of attorney form and a form with the details of the application. Both needs to be reviewed, signed and returned to us by email. Usually, the POA needs not to be notarized.

5. Registration process

Now when we have your acknowledgement, we file the application and send you a filing receipt. The prosecution of the application depends on the relevant jurisdiction. It ranges between several weeks in western European countries to several years. However, in most countries the trademarks are valid from the date of application once they have been registered. So, if someone files an application after yours you can then enforce your trademark rights against this younger trademark.

We will continue to maintain standard correspondence with the Trademark Office. This includes any minor objections regarding the information on the trademark application. Should the Trademark Office however order a refusal the registration, we would need a separate assignment to do this work. In such a case we will pass on the order to you together with our assignment form; we will inform you regarding the necessary steps and any costs incurred. You then have the option of deciding how to proceed. We will pay the fees to the Trademark Office for the application to be handled properly. The registration certificate will then be sent to you. If your application has been opposed, which usually happens when someone has an older similar trademark, we will inform you, estimate the costs and ask if we should defend the application.

6. Fees

The price includes our lawyer’s fees as well as all official fees for the registration and implementation of the trademark without opposition.

Trademark registration costs by country