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Trademark registration: national rights for brand and trade names

Companies that operate on a purely national basis will normally begin by registering brands and trade names as trademark (tm) rights in their country of residence (a national right). However, given that few businesses operate on a solely national basis these days, it is recommended to also consider registrations in certain other key jurisdictions, even in the early stages of company or brand development. It may be more advisable, for example, to start by obtaining protection across Europe via a European Union Trade Mark. Your Novagraaf trademark attorney will be able to advise you as to the most suitable route for protection, given your market presence and budget.

UPDATE: What will be the impact on EU TMs of the UK's vote to leave the EU?

Whichever route you take, you should aim to file a trademark application before the launch of any new brands or trade names, as the process will not only help you to protect your own tm rights, but it will also identify any pre-existing tm rights that may impact your ability to use your chosen brand name. Where possible, it is also recommended to involve your IP advisers at the early stages of brand development, as the more original and ‘distinctive’ the word or sign chosen, the easier it will be to obtain and enforce trademark registration.

If you have launched your products and brand names without registering for trademark protection, you may still be covered by ‘unregistered’ trademark rights, assuming certain conditions are met. You may also be able to obtain registered protection for these brand names even though they are already in use. Speak to your Novagraaf trademark attorney for advice on enforcing or registering your existing brand, company or trade names.

This is a basic introduction to the trademark registration process. For details on Novagraaf’s specific trademark services, including searching, watching, international filing, anti-counterfeiting and enforcement support, click here for our services overview page. To contact one of our trademark attorneys or to review their expertise in your sector, click here.

Step 1: Is your trademark capable of registration?

In order to obtain a trademark, your chosen brands, trade names, logos or slogans etc need to fulfil a number of conditions of registration. In other words:

  • The chosen mark must be available for registration in your chosen class, i.e. the same or a similar trademark must not have been already registered in your class or jurisdiction for the same or similar group of services;
  • The chosen mark must be ‘distinctive’: the more distinctive the brand name you select, the more likely it will be that your trademark will be awarded protection by the relevant register.
  • The chosen mark must not be too ‘descriptive’: if the trademark is too descriptive of the goods or services or any characteristics of them, then the trademark office will likely object to your mark. Often, the addition of an invented word, logo or picture could make your chosen trademark less descriptive and, therefore, increase its chance of registration.

As part of the trademark registration process, your Novagraaf trademark attorney will generally recommend undertaking a trademark search prior to any new application in order to identify the most similar published trademark registrations or applications to the trademark being filed. These results will identify not only whether an identical trademark already exists, but also whether a similar brand or trade name has been registered. This is important as third parties may also choose to object to your chosen trademark on the grounds that it is confusingly similar to their own.

Step 2: The trademark application process

A trademark is obtained by filing a written application at the relevant trademark office. This includes a description of the mark and the goods and services to which it applies (the class). Some countries have additional requirements, relating to how and what material needs to be provided and which classification system applies. After the application has been filed, it will be reviewed by examiners at the relevant trademark office and published to provide third parties with a two-month window in which to ‘oppose’ the application if they believe that it infringes their existing tm rights. These oppositions will need to be responded to before the trademark will be officially registered by the trademark office (the ‘opposition’ period).

Once registered, a trademark will be subject to maintenance fees (also known as renewal fees or annuities). In most countries, these fees must be paid every 10 years in order to keep the mark in force.

Step 3: Extending protection into foreign markets

Trademarks are territorial rights: their registration and enforcement is governed by national laws and the rights conveyed can vary country-by-country. It’s not possible to register a truly ‘global’ tm right for a brand; however, you can opt to register an International Right (IR) or a European Union Trade Mark (EU TM) depending on the overseas jurisdictions of most interest to you.

For more on obtaining international coverage, click here.

Trademark registration: further information

You can find out more about trademarks and the processes for obtaining, enforcing and exploiting trademark rights, here. For information on Novagraaf’s trademark services, including searching, watching, international filing, anti-counterfeiting and enforcement support, click here for our services overview page. Alternatively, contact our customer support team, using the contact form at the top right of this page.