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What is a trademark?

Did you know that?

Your trade mark can be a valuable business asset. Trade marks have come to represent not only actual goods and services, but also the reputation of the business. Some companies spend millions nurturing their corporate identities.

Companies like Michelin, Levi Strauss and Intel consider their trade marks their most valuable assets? The President of Coca-Cola stated that the corporation's buildings, machinery, equipment, vehicles and physical property could all be destroyed, but that the business would have no trouble getting back on its feet, provided the trade mark survived.

What is a trademark?

TRADE MARKS are concerned with brand identity - they can be distinctive words, marks or other features, the purpose of which is to establish, in the mind of the customer, a link between the particular products or services and the company.

A trade mark is a sign by which a business identifies its products or services and distinguishes them from those supplied by competitors.

What can be registered?

Any sign capable of being represented graphically. Thus marks may be one or a combination of words (including slogans), letters, and numerals. They may consist of drawings, symbols, three dimensional signs such as shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colours. Generally, trade marks are protected for specific classes of products and services for periods of 10 years, renewable indefinitely. What are the requirements for registering a trade mark ?

  • Your trade mark must be distinctive meaning that a customer seeing the mark can immediately link the goods or services to a particular manufacturer/ supplier. Thus commonly used words are generally not acceptable except in a slogan.
  • Your trade mark must not be deceptive . It must not be such that it would deceive the public as to the geographical origin or to the nature, quality, or other characteristics of the product or service.
  • Your trade mark must not be descriptive. It cannot describe the product or service.
  • Your trade mark must not belong to the exclusions provided by the law e.g. photographs, drawings or names of people or places unless they can be shown to be particularly distinctive.
  • Your trade mark must be in conformity with public order and morality . Remember that registration of a company name, a business name or a domain name is not the same as registering a trade mark. The requirements are different.

Well-known trade marks

In common law countries it is possible to acquire some legal rights to a mark simply through usage. A trade mark, which is well known benefits from some kind of protection even if it is not registered. This protection does not only refer to similar products or services, but also dissimilar ones. To benefit from that kind of protection, you have to prove the reputation of your trade mark. Good practice, however, requires that a trade mark is registered which provides you with a better and stronger protection.

How to obtain a trademark?

How to register a trade mark nationally

You must file an application for registration with the appropriate national or regional trade mark office. The application must contain a clear reproduction of the mark filed for registration, including any colours, forms, or three-dimensional features. The application must also contain a list of goods or services to which the mark would apply. Upon receipt of the application in the national office a filing date will be assigned and the application will then be examined as to its registrability.

Claiming priority

It is possible to claim priority of an application made in the preceding six months in one of the States party to the Paris Convention. This prevents third parties applying to register your trade mark within these six months.

Using your trade mark

Registrations can be cancelled if the holder is not using a mark. It is important therefore to indicate on goods or services that the mark is a registered one. The symbols R or TM are normally used in association with the mark to show this. You should contact your national office which handles applications for trade mark registrations in order to obtain an application form and details of the precise requirements, procedures and fees applicable in your country.

In Europe : European Community trademark

If you do business in more than one EU country, a Community trade mark (CTM) offers you protection throughout the EU. The Community Trade Mark is administered by the Office for Harmonization in the Internal Market (OHIM). An online CTM application costs €900 and is filed in just one language.

Outside europe : WIPO

If you are the owner of a trade mark and wish to consider obtaining trade mark protection internationally, the Madrid system of international registration of trade marks gives you the possibility to have your trade mark protected in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency (Swiss francs). An international registration produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. To apply for a registration of an international trade mark it is necessary to be owner of a registered trade mark or to have filed a request for an identical national trade mark. For further information concerning the Madrid System, consult the WIPO website.

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Trade Marks Guide

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