|
| CC Proof Idea Registration
Newsflash
3 April 2009 - European Trademarks Office fee reduction
Why register?
Your mark, or brand, may well be the most valuable asset of your company. But without the proper protective measures it may be free for all to steal! Pirates still have a good life. At your expense?
Laws generally only protect marks against infringement if registered in the (state) trademarks register. Otherwise anyone else can register and even prohibit the use by the original owner. (Note: this is different in the USA but holds true for most other countries of the world.)
 |
What is a mark?
What is defined a (registrable) mark is generally any sign that is capable to distinguish one from the other. The required level of distinctiveness is different for each country, so what is a registrable mark in one country may well be refused in another. Prior advice may well save you quite some money.
Marks can be words, the special writing thereof, letter and cipher combinations, logos, packaging shapes, make-up of packaging, even colours or colour combinations, sounds, smells, etc. If people associate something with a particular source, it usually is a mark and should be registered.
Although many famous marks may make you believe otherwise, surnames are usually less fit to be used as trademarks. Many countries refuse registration thereof or only accept them upon filing proof of extensive use. The same applies to geographical indications: they are often considered either descriptive for the origin of the goods, or misdescriptive (and therefore misleading) if the goods are not from the area described or suggested by the mark.
In general, the rule of thumb is that protection is greater the less the mark itself provides information about the goods or services or their characteristics.
We generally advise to also register trade names in the trademark registers, and vice versa.
| |
WYRIWYG
What You Register Is What You Get. In other words, do not expect to derive more rights from a registration than you have put in in!. For instance, if you have registered a word mark, your special writing or logo or special colour remains unprotected. Often, therefore, one registration may not be enough.
Registration systems
Most countries of the world have a separate registration system, but there are exceptions, most of which may save you considerable money:
| |
Duration of registrations
Registrations of marks always have a limited duration. Each country decides itself on duration but 10 years has become the most common. At the end of the registration term, renewal for the same duration is indefinitely possible, in some countries upon filing proof of actual use. So, protection can be eternally.
Priority
Most countries of the world have joined the Paris Convention. Under that convention the date of the first application of a mark in any one convention country may, during a period of six months, be claimed in any other as date of priority. This means that the second and further applications will be treated as if filed on the same date as the first application. Its intention is to prevent trademark piracy.
Classification
Marks are always registered for specific goods or services. With some exceptions, protection is generally limited to the goods/services mentioned in the registration. This is the reason that the same mark may be registered several times by different owners. In most countries, goods and services are divided in groups (classes) according to the international classification. Most systems require either separate registration for each class or the payment of an extra fee for classes over the first (second or third).
| |
Use
In order for a registration to uphold in court, in general the mark must also be used in the country where it is registered and in respect of the goods or services mentioned in the registration. Use in one country does not compensate non-use in another (note: this is different for European Community registrations). The owner should always be able to prove use e.g. in the case of litigation, and we advise to save at least some invoices and other material proving use (labels, packaging, advertising material etc.) for that purpose, for each year that the mark is used. Turnover figures should also remain available.
Use of the mark should take place in the same manner in which registration was effected. Small deviations do not always affect the validity of the registration, but we strongly advise to keep these to a minimum and to discuss deviations regularly with your trademark counsel.
| |
Trademark watching and objections
Many countries may register a mark even if it is identical to a mark previously registered for the same goods or services. In a limited number of countries the Trademarks Office refuses such application, but also there mistakes or misjudgements are made. Both groups of countries then leave it up to the owner of the prior mark to object.
There are two main systems for filing objections in the world. One is where the Trademarks Office allows for a term (which is one to three months in most cases) within which third parties may file opposition. Opposition is a simplified procedure before the Trademarks Office itself. After expiration of the term for opposition, and in countries where no opposition is available, only cancellation may be asked before the court.
It is obvious that missing the term for opposition is costly. But it may be much costlier to allow the similar mark onto the market! Having a trademark is just step one. After obtaining registration, a constant alert is required to trace and combat similar marks.
This is where trademark watching comes in. Specialised agencies (there are only a few in the world) scan every new application that is published or otherwise becomes available for inspection, world-wide. Just imagine: 6.000 new trademark applications are being filed in the world - daily! Compared to those staggering numbers watching is amazingly cheap: less than the subscription price of a trademark journal for one country!
This type of watching, however, is insufficient, since it only covers new applications and registrations. The trademark owner must also constantly and consistently monitor possible infringements in the actual market. You should instruct everybody in and related to your company to be on a constant lookout for look-alikes. Remember: the more important your brand becomes, the more attractive it will be for infringers and the more damage they can do you! Any look-alike will drain your profits and weaken your mark. Consider offering an incentive for reporting the infringement of the month!
| |
®, TM and SM
The registered trademark symbol ®, as well as TM and SM, indicating unregistered trademarks and service marks, respectively, are in general use. We recommend to use these symbols where applicable. In fact, ® is an American invention, but has become a global symbol to indicate registered trademark. Note, however, that some countries do still require different indications and that abuse in some countries may even lead to imprisonment.
Who we are
Merkenbureau Hendriks & Co. BV is a company dedicated to the protection of trademarks in the entire world. We have 30+ years of experience and love to share our experience with you! Our client base consists of small and large companies, private individuals to multinationals, and professionals, world-wide.
Are you interested in any country or need information not readily found in these pages? Just ask us . Any initial advice is free!
CC PROOF - Protect and sell your ideas easily!
Copyright © 1995-2009, Merkenbureau Hendriks & Co. BV All rights reserved.
|
