In today’s world, consumers are flooded and continuously exposed to trademarks in everyday life. We use words such as Chapstick, Jacuzzi, Powerpoint, Ping pong to signal out specific products without realizing that these are registered trademarks. A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It paves the way for how customers recognize you in the marketplace and distinguish you from your competitors. As a trademark owner, you cannot legally own a particular word or phrase, however you can control how that specific word or phrase is used with your specific goods or services and prevent others from using it in this way. The more creative and unique your trademark is, the more effective and protectable it can prove to be. This article will explore the benefits of trademark registration as well as explain the procedure to apply for the registration of your trademark and how to ensure your trademark will be considered distinctive.
Why are Trademarks important?
- Exclusivity: When you register a trademark, you as the owner have exclusive control over it and can use the trademark for all the products or services that fall under the specified classes in the application. This means that in situations where other businesses are trying to imitate your brand, without your endorsement, effectively trying to exploit or utilize it for commercial gain, your business can sue the company for trademark infringement or obtain an injunction to prevent further use of your trademark. It goes that if you do not register a trademark for your brand, you face the risk of lawsuits from other companies who did register one under a same or very similar logo, name, sign, slogan or design. You may be forced to alter all your campaigns, marketing material and even brand identity as a result.
- Builds trust and loyalty: Trademarks are designed to capture customer attention and make your goods or services stand out. Customers will begin to associate the trademark with your goods and services, and will become accustomed to it, less likely to go out looking for alternative brands. Your brand is a critical factor that drives customer sales, develops company credibility and clientele loyalty.
- Differentiates products or services: Trademarks are effective communication tools used to convey messages about your company, its vision, its products or services. When you trademark a company name, logo or slogan you distinguish your goods or services from those of your competitors, thereby promoting them. This paves the way for your company’s reputation and recognition on the consumer market, where your goods or services can be identified in a unique manner and with specific attributes and differentiated from those of competitors brands.
- Creates a valuable asset: Trademarks are valuable company assets. Overtime and as your business grows, they can appreciate in value and be added on the balance sheet as intangibles. A registered trademark can bring revenue when it is sold, franchised or licensed or in any way economically contracted.
How to register a European Trademark (EUTM)?
Steps to register a EUTM.
- Filing of the application at the European Union Intellectual Property Office (EUIPO): The first step involves the filing of an application of EUTM with EUIPO. The application includes the applicant’s details, a representation of the mark as well as the list of all classes of good and/or services for which the registration is sought. The correct filing fees must be paid for submission purposes and in order to proceed with the next step. Your designated representative will ensure the application is completed correctly.
- Examination of the EUTM Application: Examination at the EUIPO begins with a formality check involving an examination of whether the formal filing requirements have been met and whether the classification of the good/services is correct. Upon its completion, the EUPIO will proceed with a substantive check to evaluate and analyse whether the sign satisfies the requirements for a trademark and whether its type is registerable. The EUPIO may issue objections and will set deadlines within which the objections must be answered to proceed with the next step in the registration process. The EUIPO will carry out searches in the relevant trademark registers to check for conflicting trademark applications/registrations. The results of these searches will be forwarded to the applicant however these are for information purposes only as they do not give a right to respond. The owners of earlier TM’s will have the opportunity to oppose the filed application on the basis of these searches as well.
- Acceptance – Publication: Upon acceptance of the application by the EUIPO, it will be published in the European Union Trade Marks Bulletin, where third parties will then have the opportunity to oppose the application within 3 months from its publication. The opposition can be filed on the basis of any earlier rights acquired, satisfying relative grounds and must be filed by the owners of earlier TM’s. The applicant will have an opportunity to respond to any oppositions and it will be up to the EUIPO on whether the registration can proceed or whether the oppositions will be upheld.
- Grant: Upon the satisfactory response to any filed oppositions, the application will proceed to the grant stage where a digital certificate of registration is issued. An EUTM registration is valid for 10 years initially and is renewed every 10 years.
Key factors to consider for your Trademark:
- Is it distinctive?: Your proposed mark must be unique. Customers must recognize it and associate it with your products or services. It should distinguish your goods or services from those of other brands and promote your company’s distinct nature and identity. Trademarks which do not have a distinctive character will be refused.
- Is it descriptive?: A trademark should not describe what you intend to sell. Descriptive trademarks are deemed to monopolize a sign that merely attempts to describe the goods or services of a company. They tend to be general and cannot be registered as trademarks. They are available for everyone’s use.
- Do any of the absolute grounds for refusal of a trademark apply? The following are some of the absolute grounds for refusal of a trademark where if proven will automatically lead to refusal by the EUIPO for trademark registration:
- Trade marks which consist exclusively of signs or indications which may serve, in trade, 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;
- Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade
- Signs which consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods;
- Trade marks which are contrary to public policy or to accepted principles of morality;
- Trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services;
- Trade marks which have not been authorised by the competent authorities;
- Do any of the relative grounds for refusal apply?: Here there is a question of whether the proposed trademark if registered will in any way violate the rights of third parties who have similar already registered trademarks or filed applications for trademark registration. Where the trademark is identical with an earlier registered or filed application for trademark registration, and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected and where such similarity leads to likelihood that the public will be confused as they associate with the earlier trademark, the proposed trademark may be refused, pending evidence to the contrary.
How can we assist?
It is important to appoint a suitable legal representative to assist with every step of the way to ensure the successful registration of your TM.
- Conduct a trademark search: It is important to conduct a trademark search before applying for registration of your trademark with EUIPO. The search will allow us to identify any similar trademarks, analyse the registration chances for the requested trademark and determine the opposition and objections that may be received during the examination or publication stage. We will carry out a comprehensive trademark search to ensure that proper preparation has taken place before any application is filed with EUIPO and to increase the chances of a successful trademark registration with EUIPO.
- Design filing strategy: It is important to decide on a filing strategy for your trademark. This will depend on the countries where protection is sought and where you intend to use your trademark. A EUTM will be valid in all 28 member states upon its registration with EUPIO. On the contrary, a national TM will be valid only in the country of registration. International protection through WIPO may also be sought if applicable or desired in your specific case. We will discuss these matters with you with a purpose to understand your goals and design a filing strategy based on your requirements.
- Review and advise on classes and claims: We will ask you to upload the design of your trademark and to describe the types of good or services you intend to provide under it. We will then review it and also advise the applicable groups of classes for the application.
- Assist with responding to any objections throughout the examination period or after publication: We will respond on your behalf to any objections posed by third parties of EUIPO and suggest ways to prove the uniqueness, use and validity of your proposed trademark for registration purposes.
- Monitor your trademark: The EUIPO does not monitor or police the use of registered trademarks, that responsibility lays with each trademark owner. As such in order to maintain exclusivity and control of your trademark, use of the trademark must be monitored and legal action should be taken to cease any unauthorized use of a registered trademark. We can assist with monitoring the use of trademarks and navigate any legal disputes that may arise.
- Preparation of licensing agreements: As a law firm, our team is well versed and can prepare the relevant agreements for the licensing out of your trademark to other parties ensuring compliance and proper documentation for the use of your trademark are in place.
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The information provided above by C. Pilyugin & Co LLC is intended for general information purposes only and should not be construed as professional or legal advice in any sense. It is advised that readers should refrain from acting only on the basis of the above information without first obtaining legal or professional advice on the subject.
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