We are a small Portuguese company operating in the music industry, mainly organising events (e.g. live concerts, promotions, festivals, seminars) under a specific name. Our company is gaining visibility and importance on the market; therefore, we would like to know how we can protect our intellectual property with regards to this name, in order to protect ourselves from infringement claims and misuse/misappropriation from our competitors on the market.
As your company offers commercial services (by organising music-related events) under a specific name, it is in your best interest to protect this name, so that no other entities can use it for the same or similar services as those which you are commercialising. This will allow your company to shape a distinctive image on the market and to improve its business profile.
Protecting the name (as a sign) used when providing goods and/or services in the course of trade is usually done via trade mark protection. This form of protection is territorial by nature, so you will need to apply for it (i.e. file for registration of the name of your choice as a trade mark) in all the territories where you intend to commercialise your services. When applying, you will also need to identify the classes of goods and services to which your trade mark will be connected - you cannot have a universal monopoly on the name for all goods and services, but only for specific ones in a certain territory.
There are several routes to trade mark protection. The choice of one path over another will be based on your business strategy, in particular on the envisioned geographical scope of your activity.
If you intend to provide your services solely in Portugal, filing for registration of the name as a national trade mark in this country will probably be sufficient. In order to learn more about the conditions and procedure to follow to be granted trade mark protection in Portugal, you should contact the Portuguese IP office. Contact information for all IP offices in the EU can be found here: http://www.innovaccess.eu, and worldwide here: http://www.wipo.int/directory/en/urls.jsp.
If, on the other hand, you are planning to provide your services in more than one country, you might consider other options:
- If you want to operate across the EU, now or in the foreseeable future, applying for protection of your name as a Community Trade Mark (CTM) can be a good option. Registering a sign as a CTM is subject to certain conditions: signs have to be distinctive (i.e. capable of distinguishing your services from another company's services), non-generic and non-descriptive. You should bear in mind that these criteria of distinctiveness and non-descriptiveness have to be assessed not only regarding Portugal but on a European scale, given the envisioned scope of protection. Your sign should also be compatible with public policy and principles generally accepted in terms of morality, and must not be misleading to consumers as to the nature, origin or quality of your services. If the name meets the aforementioned criteria, it will be eligible for CTM protection. When obtained, CTM protection will grant you an exclusive right to use this name across the EU and in connection with the classes of products and services which you have chosen, for a period of ten years (renewable indefinitely every ten years), with the right to prevent anyone from using the same or a similar sign on identical or similar products and services. Such protection is granted through a single registration procedure, filed directly with OHIM (the Office for Harmonization in the Internal Market) or via national or regional intellectual property offices. You can read more about CTMs, the application procedure and the associated costs here: https://oami.europa.eu/ohimportal/en/route-to-registration.
- As an alternative, in particular if you intend to commercialise your services beyond the boundaries of the EU, you can file for trade mark protection in each of the territories of your choice, by contacting every IP office individually. You could start with a registration in Portugal, for example, and extend the scope of your registration as your commercial strategy expands. National applications can also be a good solution in certain instances where a CTM application is not possible, e.g. if your trademark is descriptive in one member state and rejected from CTM protection on those grounds. You could then circumvent this problem by filing for national trade mark protection in all countries except the one where protection was refused.
In order for your application to be successful at national level, it will have to meet certain requirements, which are generally similar to the ones for CTMs but may vary slightly depending on the jurisdiction (particularly in non-EU countries). It is therefore recommended that you check those requirements along with national fees and procedural details with each national IP office and/or with national trademark lawyers before filing national applications.
- Finally, if you wish to register a trade mark internationally (on the basis of a basic national application which you can then seek to extend to other countries), please note that you can obtain an international registration using the Madrid System. This system is administered by the World Intellectual Property Organization (WIPO) and more than 90 countries are part of it. You can read more information on the International Trademark System (Madrid System) here: http://www.wipo.int/madrid/en/
As you can see, the procedure to follow to register the sign of your choice as a trade mark and the applicable conditions will depend on the route chosen. We would therefore advise you to carefully consider which route would best suit your needs and would be most cost-effective in your situation, and to consult a specialised trade mark attorney if necessary.
Before applying, you should carry out a trade mark search. This will allow you to check whether someone else is already using an identical or similar name for identical or similar products or services in the territories foreseen for protection, thus saving time and resources by anticipating potential issues. You should also consider well-known trade marks (which benefit from broader protection, even for dissimilar goods and services, under the rules of unfair competition law) and search for earlier non-registered signs which may allow their owners to oppose your registration. In practice, this means that you should check databases of registered trade marks and search the internet for existing uses of the name of your choice. There are free-of-charge trade mark databases that you can use to make a preliminary search by yourself, such as:
- ROMARIN: http://www.wipo.int/romarin
- TMview: https://www.tmdn.org/tmview/welcome
Furthermore, the European IPR Helpdesk has published a fact sheet on trade mark searches, which you can download from our online library:
You may also use professional search services provided by IP Offices, consultancies or law firms.
If you do not perform trade mark searches, there is a risk that another person can oppose your trade mark registration and even take legal steps to prevent you from providing services under this name.
Once you have clarified that the name which you intend to apply for is available within the territory of your choice, you can proceed with the application for registration through one of the above-mentioned routes.
Finally, once your trade mark is registered, do not forget to enforce your rights. Being granted an exclusive right in the form of a trade mark does not mean that others will not try to copy your sign. It is therefore your responsibility as a trade mark owner to protect your rights from any unauthorised uses that may constitute infringement. In this regard, taking preventive measures, such as setting up a monitoring system, is the best practice.