what is a trademark?

Trademarks are distinctive signs identifying brands of products or services; they may be made up of two- or three-dimensional components such as letters, numbers, words, shapes, logos or pictures, or even sounds. If you are in business, you have a trademark. It’s the way your customers identify you.

Trademarks can be licensed to others; for example, the Lego Group purchased a license from Lucasfilm in order to be allowed to launch Lego Star Wars. The unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known as brand piracy. The owner of a trademark may pursue legal action against trademark infringement. Most countries require formal registration of a trademark as a precondition for pursuing this type of action. As you see, trademark registration is not automatic, you need to file a trademark application to those patent offices, where you wish to have a registered trademark. Trademarks are protected in the territory of the particular country or international organization (e.g. European Union) where the registration is applied for.

A sign may not be registered as a trademark if an absolute ground for refusal applies, namely if the sign:

• is devoid of any distinctive character;

• exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

The scope of protection covers all similar marks where there is a likelihood of confusion. Both verbal and figurative elements will play a part in the global assessment of the similarity of the signs if they have a distinctive character. The dominant elements are always more important.

A trademark may be indicated by one of the following symbols:

• ™ (the letters „TM” in superscript are used for an unregistered trademark)

• ℠ (the letters „SM” in superscript are used for an unregistered service mark)

• ® (the letter „R” surrounded by a circle, for a registered trademark)

benefits of a trademark

• The trademark helps to identify the origin of particular products and services;

• it creates an exclusive link between the product/service and its owner;

• it guarantees constant quality for the consumer;

• It constitutes a powerful marketing instrument.

figurative, word or combined mark?

Brand names and logos are the most common forms of a trademark, but other distinguishing signs can also be registered. For example colours (for example Milka), products (as three-dimensional trademarks, for example the Coca-Cola bottle), sounds, slogans, if they meet the requirement of being capable of being represented graphically.

If you have a brand name and a logo, it is always an option to apply for the distinctive word elements and the graphical signs simultaneously. This will mean two separate trademark applications, double costs. If you need to choose between a logo and a word mark: a graphical element will always add some distinctive power to your trademark, and this will help in the registration process.

Companies usually like to use ‘descriptive’ brand names because of business considerations: these names will hint at the goods/services they offer. The patent offices will more likely refuse an application containing only a word (combination of words) that refer to the covered goods/services – they will claim that the mark has no distinctive character. A ‘combined’ mark (using a graphical element and word elements too) reduces the risks of rejection and helps in the registration process. A small figurative element will in principle eliminate the lack of distinctive character.

The advantage of a word mark is that no new trademark application will be required if the image and the graphical logo of the trademark holder changes in the future.

trademark registration process - HOW TO APPLY FOR A TRADEMARK?

Timeframe
The timeframe for registering a trademark is approximately 5-6 months provided there is no opposition. The trademark application procedure might differ in different countries, but generally it takes less than a year.

Trademark filing
When filing a trademark application, you are required to provide a clear presentation of the mark along with a list of goods/services in relation to the intended use. The list of goods contains all those products and services which are covered by the trademark. You should carefully choose and pick items that best describe your goods and services, and avoid unclear or too broad expressions. The list of goods it cannot be extended after filing, only limited. Do not choose unnecessary goods as you are required to use the trademark for those goods as well.

Opposition
Similar marks with similar services may mean that there is a likelihood of confusion. If there is likelihood of confusion, the owners of the earlier marks may oppose the application. Opposition is a procedure that takes place when a third party requests the Office to reject a trademark application. Once the trademark gets published, there is a three-month opposition period. If no oppositions are filed during this period, the application proceeds to registration. If there is an opposition, there will be a 2 months long ‘cooling off period’. If the applicant withdraws the application or withdraws all those goods and services against the opposition is directed before or during the cooling off period, the opposition proceedings are closed.

Trademark renewal
In most countries, trademarks enjoy protection for 10 years from the date of filing. This term can be extended with further 10-year periods, thus a trademark can be renewed as many times as the applicant wishes without limitation.

different routes to a trademark

There are many different routes to trademark registration. The best route for you will depend on the markets your company operates in. If you seek brand protection from more than one non-EU country, the international „Madrid system” might be your best option. Madrid system is a worldwide system for facilitating the registration of trademarks in multiple jurisdictions. In order to obtain trademark registration for the entire European Union the most convenient way is to file a European Union Trademark (EUTM) application. You can also file any national trademark applications in any country.

Learn more about the different procedures: