What is a trademark?
It is a graphical sign which intends to distinguish your product from that of your competitors’. Therefore, a trademark is always associated with certain goods and services. Moreover, as it has an essential role both in advertisement and in indicating quality, a trademark is practically the most powerful instrument of a business. Having the capacity of being distinctive is a definite criterion for a successful trademark registration; however novelty is not among the conditions. In case of having a successful registration, the holder is provided the exclusive right to use the mark in the territory of the European Union. An EUTM (formerly: CTM) can be renewed as many times as the applicant wishes without limitation.
Can a logo or company name be a trademark?
Yes, if a company provides its services under its company name and this is how it intends to distinguish its services from those of its competitors.
What is the difference between a trademark and a patent?
A patent is a protected invention that is technical in nature, while a trademark is a registered sign attributed to a particular product or service. Both denote a kind of legal protection.
What is the difference between a trademark and a domain?
A trademark is a symbol used to distinguish the products or services of a company. If registered, the owner will have the exclusive right to use it. In contrast, a domain name is an address that identifies a site on the World Wide Web, and it is not necessarily connected to economic activity. Registration is completed by national and international organizations (e.g.“.de”, “.fr” versus “.com” and “.eu”). A significant difference is that there can be only one domain of the same kind under a top level domain (e.g: .eu), while there may be several similar or even identical trademarks connected to different goods or services.
Why is it worth to have trademark?
The following advantages are provided by trademark:
- it 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.
Is it necessary to register a trademark?
In most of the cases, legal protection derives from the act of registration. However, in some countries trademarks without registration are also given a certain level of legal protection.
What does a granted legal protection imply for the owner of a trademark?
The owner gets the exclusive control over his trademark after the registration is completed. He is also granted legal protection against any other entities using similar or identical marks on similar or identical goods and services without authorization.
When can the owner start to use his trademark actively?
Although protection is granted by registration, it is granted with retroactivity to the date of filing. Therefore, the applicant may start to use the mark from the time of filing.
What is needed for registration?
Clear presentation of the mark, list of goods/services in relation to the intended use, power of attorney are generally required.
What is the scope of trademark protection?
Trademark registration ensures protection in connection with economic activities. The scope of protection is rather wide as not only identical but also similar marks may lead to infringement. Well-known trademarks enjoy additional special positions in many countries; in this case the protection applies also to those products which are different in nature but it can be assumed that the user of the mark would benefit from the well-known trademark’s reputation.
What is a list of goods?
The list of goods contains all those products and services which are covered by the trademark. The list of goods has to be prepared circumspectly as it cannot be amended after filing the trademark application. In order to uphold legal protection, the applicant must start the use of the trademark after a grace period which is generally 5 years.
What are the classes of goods and services?
Goods and services are classified into 45 specific classes based on an international agreement. The Nice Agreement is applied in 78 countries involving all European countries.
When filing a registration, it is strongly recommended to prepare the list of goods carefully since the owner is obliged to use the trademark according the list. It is important to note that the more classes are indicated in the application, the more the registration will cost the applicant.
Who can apply for a trademark?
Any natural person or legal entity that has legal capacity can apply for one. Note, that there are some countries where non-resident entities are required to appoint a local attorney to represent them before the national authorities.
What needs to be done before filing a trademark application?
First of all, it is suggested to choose a mark that best fits both the products and the profile of the company in question. Once a mark is chosen it is highly recommended to complete a similarity search in the targeted country as holders of conflicting earlier trademarks may hinder the registration of our trademark.
Is representation or countersigning compulsory?
In most countries foreign applicants are obliged to appoint a local representative who can take care of their case before the national authorities. Nevertheless, in order to avoid unrecoverable mistakes it is strongly recommended to seek professional assistance also in those countries where local representation is not required.
What is an opposition?
In many countries trademark holders are provided the opportunity to step up against new trademarks until their registration is finalized. The practice is granted by the authorities so as to make it easier to avoid possible infringements. Each jurisdiction provides a certain period of time, during which the opposition has to be filed. As many difficulties may occur during the process, the assistance of a qualified trademark attorney deemed to be essential.
What are the absolute and relative grounds for refusal?
Absolute grounds refer to the incapability of marks to be distinctive or graphically presented. Furthermore, deceptive marks or marks that are against the public order will also be automatically refused. In comparison, the relative grounds for refusal are always in connection with earlier trademarks and their related rights. In spite of the fact that most national offices scrutinize trademarks for similar or identical previous ones, the result of the search is not taken into account at granting (see CTM opposition).
What is an invalidation procedure?
A trademark can be cancelled from the register in three cases;
- if the trademark does not comply with the legal requirements for granting
- if it is in conflict with an earlier trademark
- in case the trademark has not been used after the grace period of time.
Invalidation terminates legal protection.
What is an infringement?
Any breach of the exclusive rights of a trademark holder constitutes an infringement. Accordingly, the trademark holder is entitled to make a claim against anyone who uses a similar or identical mark in connection with similar or identical goods and services without his authorization. The legal steps to be taken against such persons vary country by country and are determined by state laws. Generally, the following reparations can be requested:
- declaration of infringement,
- an injunction to cease infringement,
- surrender of enrichment,
- compensation for damages.
In most of the countries petition for temporary measures can be filed, if it is done within a specified time period.
How long does the trademark protection last and what is the territory of protection?
Trademark protection endures exactly for a decade and can be renewed every 10 years. Trademarks are protected in the territory of the particular country or international organization (e.g. European Union) where the registration is applied for.