A company's tasks are not confined to organisation and production, but also concern commercialisation of its products and services.
A company's goods and services, as well as its image, have to be visible on the market(s) where products and/or services are to be sold. The trademark is an indispensable instrument for communicating with the public. It also supports the development of the company. The trademark is therefore a key element of company policy; as a marketing tool it may even constitute the company's main asset.
A trademark does not just identify the manufacturer or the service provider: it establishes a trust-based relationship with the purchaser or consumer by inter alia offering a guarantee of quality and of origin, i.e. a Trademark guarantee that the goods and/or services will possess the same level of quality and will originate from the same company, authorising the customer to easily repeat his purchase.
A trademark must meet two conditions:
• a trademark must be a sign which can be represented in graphic form,
• and it must make it possible to distinguish goods and services from those of another company.
A Trademark accordingly usually protects a word, phrase, symbol, design, or combination of these things.
Here's the legal definition of a trademark:
“A trademark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
A trademark is not:
• A patent: this right protects the new physical characteristics of a product, or a new method.
• A copyright: this right protects an original expression (artistic or otherwise). For example, music, art, books, and website articles are subject to copyright.
2. Why do I need to protect my Trademark?
Marks are symbols of quality. Consumers are assured that each product or service symbolized by a particular trademark originates from and is the same quality as other goods and services of the mark owner. Trademark rights arise from filing an application to register a mark in a Trademark Office. If you do not apply for protection of your mark, others may benefit from your investments. The only way of obtaining the full right over a trademark is by registering it.
• Registration is the only way to establish rights in a mark. An application will determine the filing date as your date of priority of trademark rights when the registration issues.
• A trademark confers on its proprietor an exclusive right therein. The proprietor is entitled to prevent all third parties, who do not have his consent, from using the same or similar signs, in the course of trade, for identical or related goods and/or services as those protected by the trademark.
• Registration of your mark may also prevent others from using that mark as an Internet domain name.
3. What about my Internet Domain Name?
An Internet Domain Name, or address, is very often used not only as a means for locating a Web site, but also as a symbol of the goods or services sold, published, advertised or transmitted on the Web site. However, a domain name registration is not enough!
Domain Names are assigned on a first-come, first-served basis and no investigation is conducted regarding whether a proposed name is likely to be confused with a trademark. The registrar simply ascertains whether a requested address name is already registered in the domain name database.
A domain name registration does not create any rights other than the right to use a particular Domain Name. Even this right is tenuous. If another party provides proof of registration of a trademark that is identical to a Domain Name and the Domain Name owner does not own a trademark registration, the Domain Name may be placed "on hold" rendering it unavailable to the Domain Name owner.
If you use your Domain Name to represent your business, a Domain Name registration provides no protection of the good will and reputation that your Domain Name has come to represent. Trademark registration should be considered.
4. What are the benefits of registering?
• Your business name and logo and the goodwill associated with them are valuable assets. Registration of the trademark provides comprehensive protection and enables you to prevent others from using your name and/or logo.
• A registered trademark indicates that your business name is secure.
• A registered trademark can be a valuable asset if you decide to sell your business.
• The owner of a registered mark is entitled to a presumption of mark ownership and exclusive use from the filing date of the application.
• You can prevent others from using a confusingly similar name.
• You can transfer or licence your trademark rights against payment.
There are numerous other advantages to securing registration of a trademark. Perhaps the most important advantage is that registered trademarks are protected for the complete national territory, regardless of the actual geographic use made of the mark.
Word trademarks can be protected:
• A business name, phrase or logo may be registered as a trademark if it is fanciful, arbitrary or suggestive.
• Fanciful signs - Fanciful marks are generally marks without a dictionary meaning.
• Arbitrary signs - Arbitrary marks have nothing to do with the goods or services with which they are associated. Examples include, DieselTM for clothing and AppleTM for computers.
• Suggestive signs - Suggestive marks indirectly refer to the goods or services with which they are associated.
A logo can also be registered. Please note however that your protection will then be limited to this specific graphic representation, and the colours depicted in the graphic representation. You may have more difficulties in enforcing your rights than with a word trademark. We accordingly propose to file your logo in black and white, without colours description. Please provide jpg files only.
Logos may nonetheless be used if your word trademark has no distinctive character (see point 6 below).
6. Marks to avoid when choosing a Trademark or Service Mark
Whichever type of application you decide to complete, before you apply you should try to determine whether or not the application has any chances of being accepted. In addition to the requirement that nobody else is using the trademark you want to use (or something similar), your trademark must also be distinctive. That means it cannot be so generic that it just describes the product instead of the source of it.
Although fulfilling the definition of a trademark, a sign may not be registered as a trademark if an absolute ground for refusal applies, namely if :
• the sign is devoid of any distinctive character. This concerns mainly descriptive and generic trademarks:
o Descriptive marks: marks that describe the goods or services with which they are associated. You cannot protect “pen” for writing instruments or pens, for example.
o Generic marks: Generic words are common words that describe an entire class of goods or services. These words do not serve as an indication of the source of goods or services and should be avoided when choosing a potential mark. You cannot protect the name “seats” for chairs, for example.
o Combination of two or more terms without distinctive character will not create a trademark capable of protection, and will also be refused
• the sign exclusively serves 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. You cannot protect the mark “1 EUR” or “high quality”, for example.
• the sign has become customary in the current language or in the bona fide and established practices of the trade
• the sign is contrary to public order or to accepted principles of morality: scandalous or immoral marks offend the conscience.
• the sign is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
Furthermore, the trademark Offices will not register a trademark that contains:
• a national flag or emblem
• other governmental, foreign or international insignias, flags or emblems (including for exemple the European Emblem).
If you nonetheless decide to use a generic, descriptive or deceptive term, we will be able to obtain the registration of your trademark application if it has been filed as a logo only. We thank you to upload the corresponding logo when completing your application request.
7. Is it advisable to conduct a search before I apply to register a Trademark?
A search is not required prior to applying for trademark registration. However, a search can be extremely beneficial in determining the availability of your trademark. When you first conceive of a mark that you would like to use to market your goods or services, you should immediately check to see if anyone else is using it. There's no point wasting your time and money with the rest of the procedure if someone else has already registered it.
There are two sorts of risks associated with not performing a thorough trademark search.
First, if you send in an application and it is rejected after opposition because there is an existing trademark that is identical or substantially similar, the Office will keep your application fees.
Second, if you infringe someone else's trademark, you could suffer legal consequences: you will have to stop using your trademark and pay whatever it costs to change to a new trademark. You may also be sued for damages for trademark infringement if your use of the trademark actually harmed the original owner's business.
Accordingly we have automated this stage of the procedure to enable you to detect identical trademarks protected for identical products/services. This search provides you with information regarding registered marks and applications that are currently pending.
Performing an additional (similarity) trademark search may also be recommended. These trademark searches provide you with information about a mark's availability by providing information regarding already existing trademarks, and the status of those trademarks. Depending on where you want to use your mark, you may consider a number of our search options. As these searches cannot be automated, please contact us to obtain additional information and a detailed estimate regarding these comprehensive searches.
8. Do I need to be using my Trademark to register it?
No. However, if you have not yet used your mark, you will have to use your trademark within a five-year period as from the registration date.
9. How do I know which class my goods fall in?
Goods and services fall into one of 45 international classes with the Trademark Office. Each class is a category of goods or services into which the Office places the trademark.
In connection with a description of your goods/services, you must also select a category into which the goods/services offered in connection with the mark appropriately fall. This description is however “legal minded” and is not particulary easy to understand.
We have therefore developed a specific tool allowing you to determine the class and the acceptable description of goods/services we will use to file your trademark application. Please note that we will usually indicate general and/or generic terms for your activities. This will enable us to obtain a broader protection for your trademark: your business can evolve and your trademark will normally still be protecting your activities. Please feel free to contact us should you prefer obtaining an explanation or a specific description of goods and/or services for your activities.
See also "Is it advisable to conduct a search before I apply to register a trademark?"
10. Can I file in more than one international class & what are the implications?
An applicant is entitled to file goods and services in any of the international classes, as long as the goods and/or services offered in connection with the mark fall into those classes.
Additional charges are due for each class of goods/services in which the goods/services are filed exceeding a certain number of classes class, depending on the countries or trademark registers.
Our tariffs mention the costs associated with each trademark, including the number of classes comprised in the initial price.
11. Should I apply in my own name or in the name of my company or corporation?
The owner of a trademark is the legal person empowered to prevent third parties from using the same or a similar name for identical or similar products or services.
The Owner has to use the trademark in the three to five years following its registration (depending on the national legislation(s)).
You can file and register the trademark in your own name or you can register it under your corporate/ company name. The decision depends on the way in which you would like the ownership to be maintained. As mentioned above, the owner should be the real user of the trademark:
• if you intend to use the trademark by yourself, then apply in your own name;
• if your company will use the trademark, you may apply in your company name or in your name, depending on the circumstances.
You can also create a specific company for holding your IP rights and your trademark application(s): you can then licence (rent) your trademark right(s). We can help you in preparing and setting up such a holding company: please contact us for additional information.
In addition, should you decide to change ownership or assign the ownership, an assignment can be made. This assignment can be managed through your customer account.
When filing a trademark application under your company name, please complete the “incorporation form” field in the Owner’s data. Incorporation form or legal form, i.e. 'Incorporated', 'Sociedad Anónima', 'Aktiengesellschaft', for example, is required. The indication of the legal form may be abbreviated in a customary manner ('Inc.', 'S.A.' 'AG', etc.).
12. How long does it take for the Trademark Office to process my application?
We will generally prepare and file your application within two business days from receipt of your payment and receipt of all documents necessary to prepare the application.
Once filed, the trademark offices can take anywhere between 4 to 24 months, depending on the territory and the complexity of your case, to process your application for registration.
However, the most important date is the filing date: if registered, protection dates back to your filing date. During the application process, you will be provided with routine updates on the status of your trademark application and are encouraged to contact us.
13. The Trademark application process
Once your application is filed with the Trademark Office, the Trademark Office reviews it to determine if it meets the minimum requirements for receiving a filing date.
If the application meets the filing requirements, the Trademark Office issues a filing receipt. The examining division will then examine the application and may issue what's called an office action requesting changes to the application. If these changes are insignificant we will authorize them and inform you of them. If the changes are significant, we will consult you to determine an appropriate course of action.
Once the application has passed the examination phase, the mark will be published in an Official Gazette. Publication in the Official Gazette gives interested parties an opportunity to file a Notice of Opposition. If there is no opposition or the opposition is unsuccessful, the Trademark Office will issue a Certificate of Registration.
The application process is a lengthy, interactive process that typically takes between 4 to 24 months (or more) to complete. We will deal with all issues related to this process and inform you of the various stages of the process. You will find the status of your trademark application as well as the next deadline to be met in the detailed form in your customer account.
An Office Action is a written communication sent by an Examining Division of the Trademark Office, requesting a response from the trademark applicant regarding a matter related to the application for a trademark filed with the Trademark Office, and requesting modifications or amendments to be made to your application.
If these changes are insignificant we will authorize them and inform you of them.
If the changes are significant, we will consult you via email or any other appropriate means, to determine an appropriate course of action.
15. What happens when a mark is published?
After a trademark application completes the examination process, the application is then "published" for opposition in the Official Gazette of the Trademark Office.
During this publication period, which extends for one to three months, depending on the trademark register you are interested in, third parties are entitled to oppose use and registration of the mark by filing an opposition.
Any person who believes thatits rights would be damaged by the registration of a mark may file an opposition with the Trademark Office within a determined period (depending on the national legislation) after the mark is published for opposition.
The notice of opposition can be based on a trademark application or on an earlier registered trademark. The trademarks can be national (or Benelux) trademarks from the country in which you try to obtain a protection for your trademark.
Earlier trademarks constituting basis for an opposition against a Community Trademark Application can be national trademarks from one of the Member States of the European Union (national), international trademarks (registered under the Madrid Agreement and Protocol) or trademarks from the Benelux Trademark Office.
Before certain registers (in particular the Community Trademark Register) it is also possible to base opposition on well-known trademarks protected under Article 6 bis of the Paris Convention (an International Agreement relating to Industrial Property Protection). Finally, opposition can also be based on earlier rights within the EU that are not just applicable to particular localities, provided that the national law governing these rights allows the proprietor to prohibit the use of a subsequent trademark.
17. How long does a Trademark last?
A registered trademark generally lasts an initial period of 10 years. Trademark rights can last indefinitely if the owner files an application for renewal and continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the trademark Office at the appropriate times.
A renewal application can normally not be filed until at least six (6) months prior to the expiration of the marks registration. The renewal period generally lasts for another ten (10) years.
18. Use of the TM ® and SM Symbols
The elements TM, SM and ® mainly relate to US requirements and are therefore not required in the European Union: there is no legal basis which makes such use compulsory. However, the proprietor of the trademark may freely choose to use them.
According to US Law, anyone claiming rights in a mark may use the TM or SM symbols, even prior to registration. The ® symbol may only be used after the mark is registered.
We accordingly recommend using the TM or SM symbols as long as your trademark has not been registered, if you decide to use a symbol.
Registration is only the first step in maintaining your exclusive right to your mark. A trademark must be properly used as well.
Widespread misuse of your mark can result in it becoming generic or diluted. A generic name is a common name of the product or service the mark identifies. If a mark becomes generic it can be used by anyone.
For example, "escalator" is a generic term for moving stairs. However, at one time it was a trademark representing the products of one company. Widespread use of "escalator" as a name for moving stairs resulted in it becoming generic and making it available to anyone.
• Trademarks should be used as adjectives, not a nouns or verbs:
o "Kleenex tissues" NOT "a Kleenex"
o "Apple computers" NOT "an Apple"
• Use marks consistently. Do not change spellings or add dashes, slashes, etc.
• When using a trademark in text, use underlining, bold, capitalizing or italics to separate it from text.
• Use notices, such as:
o "EURIMARK is a service mark of Office Ernest T. Freylinger SA.”
o "VW is a registered trademark of Volkswagen AG."
20. Can I assign my trademark to a third party?
A trademark may be assigned from one party to another by filing a trademark assignment with the Trademark Office.
You will be able to manage such transfers through our monitoring interface and from your customer account.
Registering a trademark is the first step, but it is not enough: the rights obtained through the registration may need be defended against third parties and counterfeiters.
If you want to be kept informed of the publication of younger trademarks which are identical or confusingly similar to yours, we propose our watching service. A watch will enable you to protect the trademark and your investments in the trademark registration, but also the firm’s image as conveyed by the mark. We will send notices when a younger trademark may infringe or constitute a breach on your rights, and will propose the appropriate measures. You will then have the opportunity, for example, to file an opposition against this younger trademark (see point 16 above).
22. Why choosing two languages for Community Trademarks?
When filing a Community Trademark, the applicant must indicate the language in which he is applying (first language), which may be any of the 20 official languages of the European Community. This language will be the language of the Eurimark website.
The applicant must also select a second language, which must be one of the five languages of the Office (Spanish, German, English, French or Italian) and which must be different from the first language. You can select it in the menu.
These languages will be used for communication between the Community Trademark Office and Eurimark, during the examination process and the opposition proceedings, if any.
23. What is priority or priority deadline?
A right of priority or priority right is a period initiated by the first filing of an application for a trademark.
The priority right belongs to the applicant or his successor in title and allows him to file a subsequent application for the same sign and the same goods and/or services by benefiting, for this subsequent application, from the date of filing of the first application. Your rights will accordingly retroact to the filing date of your first application: if third parties have filed identical or similar trademarks during this period in the territory of your subsequent application, they will only have younger rights and not prior rights compared to your subsequent application, even though this subsequent application has in reality been filed after the applications of the third parties. When filing the subsequent application, you must "claim the priority" of the first application in order to make use of the right of priority.
The period of priority or priority delay, i.e. the period during which the priority right exists, is 6 months. After this period, you will no longer be able to claim the date of your first filing and your rights will begin at the filing date of your new application.
24. What is the “next deadline”?
Some actions have to be conducted at specific time limits:
1. Answer to Official Action: we have to answer to the Office before the deadline (see point 14 above) – Please provide us with your answer as soon as possible
2. Answer to Opposition: an opposition has been filed against your trademark application, and we have to prepare an answer (see point 16 above). We need your approval regarding the content and the type of answer – provide your instructions as soon as possible in order to be able to prepare an useful defense.
3. Payment of Registration Fees: registration fees have to be paid before this deadline; we need your payment before proceeding to registration. In absence of payment your trademark will not be registered and you will have secured NO rights on your trademark.
4. Renewal: your trademark right is protected for a specific time period, normally 10 years as from application (filing) date. We will normally send you a reminder, but note this deadline into your calendar: in absence of renewal you will loose your rights!
25. What are “designated countries”?
In an application for international trademark registration, you mention the States or organisations in which you wish the trademark to be protected. These States or organisations are member of the so-called “Madrid Union”, i.e. members of the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which was adopted in 1989.
After examination, the International trademark will be protected as a national trademark in these designated countries
During examination of an application for international trademark registration, States or organisations can issue “decisions”, i.e. Provisional Refusals: if grounds for objection are found during the ex officio examination, or if an opposition is filed, the Office has the right to declare that protection cannot be granted to the mark in that State or territory.
Procedures subsequent to the Provisional Refusal (reviews, appeals or responses to an opposition), are notified to the International Bureau once all the procedures before that national or regional Office have been completed, indicating that the provisional refusal is confirmed or is totally or partially withdrawn. This statement is also mentioned in the “decisions” list.