A registered trade mark is a priceless asset to a brand. It’s a unique symbol that protects and distinguishes a brand’s product or services from rival trade marks. It also prevents third parties from using it for commercial trade without the owner’s consent.
A trade mark may consist of any of the following: words, letters or numbers (with or without graphical elements), shapes, colours, or even sounds. It could also be a combination of any of these. Once a trade mark is registered, it becomes an intellectual property protected by law.
Here is a comprehensive trade mark step-by-step guide on essential things to do before and after applying.
Step 1: Defining a trade mark
Firstly, businesses will need to brainstorm the symbol they think would best represent their brands. When doing that, they should avoid the following situations:
- Trade marks that are offensive or that contain swear words or pornographic images.
- Using misleading words to describe your product or services. For example, avoid using the word ‘vegan’ for products that are not vegan.
- Making use of national flags without obtaining appropriate permission.
- Using special, dedicated emblems or hallmarks such as a coat of arms.
- Using a descriptive word or term.
- Using a too common and non-distinctive symbol.
Step 2: Conducting a trade mark search
Once a decision is made on which trade mark to use, the next important step is conducting a comprehensive search. A trade mark can only be approved if no similar symbol has been assigned to another brand. The European Union Intellectual Property Office (EUIPO) website provides access to all EU trade mark applications and registrations.
When using the EUIPO website, take into account the three main criteria for conducting a refined search to minimise the risk of overlooking an already registered trade mark. These include searching by dates and territory, sign, and goods and services.
The World Intellectual Property Organization (WIPO) offers the Global Brand Database, which allows you to search for trademarks registered in multiple jurisdictions. This page allows you to search by brand name, brand logo, or even conduct an advanced search with multiple criteria.
Step 3: Understanding fees and payments
Registration fees and payments vary from jurisdiction to jurisdiction, depending on the number of classes of goods and services covered. Therefore, you should learn about the filing costs and available payment options for your territory of registration.
Generally, trade mark applications can only be processed after payment has been confirmed. For example, the EU requires payment within one month of filing an application. There’s also a provision for small and medium-sized enterprises (SMEs) in the EU to apply for the EU’s SME fund support.
Step 4: Submitting an application
To register a trade mark, the interested party will need to send an official request through the EUIPO’s website. The application can also be processed on paper. However, the online option is often preferred as it’s cheaper and faster, especially for brand owners seeking legal protection outside EU states.
Both the WIPO and the EUIPO, offer fast-track options, which can significantly reduce the time it takes to get your trade mark approved. Using a harmonised database or classification system, such as the Nice Classification managed by WIPO, applicants can select from pre-approved terms for goods and services, helping to streamline the process and reduce discrepancies.
Step 5: Examination period
During the examination period, an examiner from the respective trade mark office reviews the application to ensure it meets all legal requirements. Applicants can typically track the progress of their registration through an online portal provided by the trade mark office, whether it’s WIPO or a national office.
The duration of the examination process can vary by jurisdiction, often taking a few weeks to several months. If there are minor issues with the application, the office may request corrections, and the applicant is usually given additional time to make the necessary adjustments.
Step 6: Publication and opposition period
After the examination period is completed, the trade mark office will publish the approved trade mark in its official gazette or bulletin. This stage allows third parties to oppose the registration if they believe it conflicts with their existing rights.
The opposition period typically lasts a few months, depending on the jurisdiction. If an opposition is filed, the registration process could be delayed significantly, as the opposition must be resolved before the trade mark can be officially registered. Conducting a thorough trade mark search beforehand, as discussed in Step 2, can help reduce the likelihood of opposition.
Step 7: Trade mark grant
Once the opposition’s outcome is in favour of the applicant, the Patent and Trade Mark Office will issue a certificate of registration within six months of publication.
Key considerations:
EU Trademarks vs. National and International Trademarks
- National Trade Marks: these refer to brands that only want to trade in the territory of the country where their registration is held.
- EU Trade Marks: to obtain legal protection across all EU member states (27 member states), an applicant needs to register through the EUIPO website.
- International Trademarks: the World Intellectual Property Organization (WIPO) is the legal entity that approves trademark registration for applicants who want to operate in EU and non-EU countries.
Trade mark renewal
Trade mark protection lasts ten years, starting from when the application is submitted. A renewal can be made for another ten years and repeated as long as the applicant wants. Under licensing agreement law, it is permissible to sell trade mark rights to another person or to grant them permission to use those rights.
Trade mark vs copyright
Trade marks and copyrights are both types of intellectual property (IP) but serve different purposes. While a trade mark protects a brand’s symbol or tag, a copyright protects a brand or a product’s unique creativity.
In conclusion
A registered trade mark is like the centrepiece that attracts customers to easily identify a business, its products or services. Doing it the right way guarantees protection from counterfeiting brands and potential fraud.
