Trade marks can be protected through registration. Trade mark registration protects your brand value, defends against rival marks, defines your rights and prevents counterfeiting and fraud.
In many countries, so called well-known trademarks are also protected without being registered. Such obligation result from the provisions of the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement.
Furthermore, in common law countries (such as the UK and Cyprus), unregistered trademarks can also be protected under so called passing off law. Passing off is a common law tort and protects the goodwill of a trader from a misrepresentation. In other words, it prevents one trader from misrepresenting goods or services as being the goods and services of someone else.
Trade marks are signs used in trade to identify products and services. More specifically, a trade mark is a symbol your customers use to pick you out. It may consist of any sign, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, or sounds, provided that they can be clearly represented on the register and are capable of distinguishing the goods or services of your undertaking from those of other undertakings.
Unlike other intellectual property rights (patents, designs, copyrights), you can hold the right to your trade mark indefinitely. However, in order for your trade mark to be protected, it has to be renewed on a regular basis. The period of trade mark protection may vary, but is usually ten years and it can be renewed indefinitely upon payment of additional fees.
You should notice that, for the most of the countries, it is the trade mark owner’s responsibility to observe the time limit for renewal. However, national IP offices will usually inform you or your representative few months before the expiry date that your trade mark is due for renewal. The same applies for European Union Trade Marks (EUTMs) issued by the European Union Intellectual Property Office (EUIPO).
EUIPO will generally inform you, or your representative, six months before the expiry date that your EUTM is due for renewal. Moreover, any other person holding a right to your EUTM, e.g. a licensee, will also be informed by the EUIPO.
Trade mark protection is territorial by nature, i.e. the geographic scope of protection for trade marks is limited and depends on the place of registration. Hence, it is advised that you consider applying for protection for your brand in all territories of your commercial interest. E.g. think not only about intended markets of distribution of a product, but also about the place it is manufactured.
Note that trade mark protection can be obtained in few alternative ways. Depending on the brand characteristics and planned commercial strategy, it can be registered as:
· a European Union Trade Mark (EUTM) for the entire European Union by filing a unique application at the European Union Intellectual Property Office (EUIPO);
· as a national title, applied for separately in respective counties of interest;
· an international registration at World Intellectual Property Organization (WIPO) which is equivalent to a bundle of national registrations;
If you wish to register a trade mark which would be valid in the whole EU, you can apply for a European Union Trade Mark (EUTM). For doing so, you should file an application to the European Union Intellectual Property Office (EUIPO). As regards a EUTM applications, however, registration criteria will have to be assessed on a Community-wide scale and have be met at the same time in all 28 EU Member States. This might be problematic for many brand owners. That is why many of them decide for a national/international route instead. You can read more about EUTMs on EUIPO's website:
· general information on EUTMs - https://oami.europa.eu/ohimportal/en/trade-marks
· application guidelines - https://oami.europa.eu/ohimportal/en/apply-for-a-trade-mark
· FAQs on the application procedure - https://oami.europa.eu/ohimportal/en/application-procedure
· Registration procedure scheme – https://oami.europa.eu/ohimportal/en/registration-process
· FAQs on registration procedure - https://euipo.europa.eu/ohimportal/en/eutm-registration-procedure
If your intention is to obtain a national protection in your country or in any other country, you should file an application to the respective national IP office. For information on national applications and procedures please visit websites of the national IP offices of interest - http://www.wipo.int/directory/en/urls.jsp
Lastly, you may wish to register a trade mark internationally. A single international registration is equivalent to a bundle of national registrations. Although it is a single registration, protection may be refused by some or all IP offices of the designated countries. Please note that you can file an international application only with regards to the countries part of the so-called Madrid system (all EU Member States participate in Madrid system). It is administered by the World Intellectual Property Organization (WIPO) and offers a one-step solution for registering and managing trade marks worldwide. Its advantage is that you can have your trade mark protected in up to 117 member states by filing one sole application in a selected language and by paying one single registration fee.
More info on the international filings can be found on: http://www.wipo.int/madrid/en/general/
Trade mark searches are extremely important and typically designed to determine whether a particular trade mark is available for use on a relevant territory. Trade mark search is an investigation to discover potential conflicts between a proposed mark and the existing ones. Searches help to determine if you can register your trade mark on a relevant territory. The search may identify trade marks that are visually, phonetically, or conceptually the same or similar to the trade mark to be adopted and that cover the same or similar goods or services. The search report notes all use of identical or similar marks and the products or services in relation to which they are used. Conducting searches helps to avoid objections and reduces the possibility of infringement of the rights of a prior user or registrant.
A trade mark registration is performed in a specific area - always in connection with certain products and/or services offered by its owner. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is an international classification of goods and services - it groups goods and services into thematic classes for the purposes of the registration of trade marks. The heading of each class indicates the products or services included.
A trade mark with a reputation may be protected from unauthorised use in relation to non-competing goods and/or services. They are protected in case the use of a later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. When determining whether a trade mark has a reputation, the following aspects should be taken into consideration: the duration, extent, and geographical reach of advertising and publicity of the trade mark; the amount, volume, and geographical extent of sales of goods and services offered under the mark; the extent of actual recognition of the mark.
The wording of the Article 6bis of the Paris Convention and(or) Art. 16(2) of the TRIPS Agreement as well as the Article 5(2)(d)of the Trade Mark Directive refers to a well-known mark. Well-known marks are usually protected irrespective of the fact as to whether they are registered or not. Furthermore, they are protected for goods and/or services which are identical with, or similar to, those for which they have gained their reputation if there is a likelihood of confusion in the relevant sector of the public. In some countries they are also, under certain conditions, protected for dissimilar goods and services.
The appearance of the product itself or of the packaging of a product is protectable as a three-dimensional trade mark.
Some criteria of examination of the three-dimensional trade mark that consist of the appearance of the product itself are the same as for other categories of trade marks. However, it may be more difficult to come to a finding of distinctiveness. In general, a three-dimensional trade mark that consist of the appearance of the product itself can only be regarded as sufficiently distinctive if the shape departs significantly from the norm or customs of the sector and can thus be perceived as an indication of origin of the goods and/or services.
Additionally, in order to obtain protection, a form/shape must meet the following legal requirements:
- the form/shape must not be necessary to achieve a technical result;
- the form should not be imposed by the nature or the function of the product itself (e.g. the shape of a football for a football);
- the form should not give substantial value to the product (shapes which exclusively realise an aesthetic function, such as the shape of an object of art for objects of art).
The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is available in its entirety on the website of the World Intellectual Property Organisation.
In case of prolonged non-use of its mark, the owner may be deprived of its rights. Revocation of a mark is always pronounced by the courts following an application for revocation of the rights of the proprietor. It may be requested by any person if the owner has not begun to exploit its trade mark as it has been registered or has abandoned the use of its trade mark. Revocation of a mark may be total or partial - for all or part of the goods and services specified in the deposit.
In most countries, a mark will not be so cancelled unless it can be established that there has been at least three years of non-use. In this context, it would be advisable to check the legal position in the country or countries for which the trade mark has been registered. If, however, the owner of a mark can establish that, despite every intention to use the mark, it was prevented from doing so due to circumstances beyond its control, the mark may not be subject to cancellation.
Trade mark protection is territorial in nature. This means that, provided all conditions are met, such protection will be granted to your name only in the territories in which you have registered it as a trade mark. In other words, registering your name as a European Union Trade Mark only gives you exclusive rights to use that name with regard to specific goods and services (the ones identified in your application) across the European Union only.
For this reason, it is always advisable to develop your trade mark protection strategy in line with your business strategy – that is, to seek trade mark protection in all the countries where you intend to commercialise your products.
If you do not do so, your name or a similar one may be registered by third parties in those countries, possibly for similar or identical goods. Since you will not have exclusive trade mark rights over this name in these jurisdictions, others will indeed be allowed to protect it via trade mark. This might lead consumers in this area to mistake someone else’s products for yours. Commercialising your own product in those jurisdictions under “your” name, but without securing exclusive rights to it, might even in this context constitute an infringement of those third parties’ rights.
Furthermore, even if no-one else registers a name similar or identical to your trade mark in those countries, not having a registered trade mark there means that you will not have any intellectual property rights to that name in these territories. If other entities (such as competitors) copy your products and sell them on these markets under “your” name, you will not be able to enforce any rights (since you will not have any such rights in those territories) and in particular will not be able to exercise anti-counterfeiting actions.