Obtaining trademark rights for your products and services is the first step in protecting your brand.

How to secure and protect your trademarks

Obtaining trademark rights for your products and services is a key part of protecting your brand. When deciding upon trademark protection, you must consider: 

  • the commercial value of the goods and services: are or will they be in high demand? If so, it may be worth considering protecting your brand;
  • the uniqueness of the goods and services: as not all products and services are created equal, some will likely be more successful than others;
  • the uniqueness of the brand itself: is the brand you have chosen memorable? Does it “stick”? When people think of your business, will they be able to recall your products and services easily?
  • the longevity of the product or service: will the product or service be around for a long time? If so, it may be worth trademarking in order to prevent others from taking advantage of its reputation and goodwill.

By doing so, you can ensure that you are making the best decision for your business.

Protecting your brands from a legal point of view can be a complex affair, as there are many elements to be considered in various stages. 

5 Essential steps to consider before registering your trademark

1. Brand selection

The most obvious types of trademarks relate to words and logos; other possible trademarks relate to colours, colour combinations, the shape of a product or packaging. Under certain circumstances, it is even possible to apply for other non-traditional trademarks, such as sounds, flavours, scents, and smells.

So making the right choices from a commercial perspective is key, as this might lead to creating a competitive edge for your organization. But do be aware that the choices you make may have ramifications from an administrative / legal point of view.

For instance: when applying for a scent mark, it is important to have a clear and concise description of the scent itself. This is because the trademark office will need to be able to identify the trademark to register it. In addition, when enforcing a non-traditional trademark, it may be more difficult to prove trademark infringement, as it can be harder to show that someone has copied or imitated a scent or sound than it is to show that they have copied a word or design.

Overall, non-traditional trademarks can be extremely valuable assets for businesses. However, it is important to understand the unique issues associated with them in order to maximize their potential.

2. Choose the right products and services for which you want to obtain exclusive trademark rights

Another important component are the countries in which you would like to obtain exclusive trademark rights. If you intend to sell your products and services in various countries, it is essential to develop a good strategy for obtaining exclusive trademark rights in these jurisdictions.

International treaties allow you to extend the geographical scope of your trademark within a timeframe of six months following the initial trademark application or registration. The so-called “right of priority” entails that trademark registrations in these additional jurisdictions obtain the filing date of the initial trademark application.

Some elements to consider:

  • do you want to keep your trademark, your goods and/or services under the radar until a particular launch date? In such case, it may be important to start registering your trademark in jurisdictions that do not have an online trademark register yet;
  • should you use the international system of trademarks or not? Although the costs for geographically extending your trademark protection is significantly lower with the international system, an international registration may be defeated for all countries to which trademark protection has been extended by means of a single invalidation action against the original trademark registration;
  • review whether your trademark does not have a negative connotation or unfortunate meaning in the countries in which you want to register your trademark.

3. “Clear” your brand early on in the process

Clearing your brand means that you should verify in the trademark registers of the relevant countries whether earlier rights relating to the same or similar signs for the same or similar goods or services exist. This way, you can limit the risk of infringement early in the process, avoid unnecessary costs and even litigation.

In this step, we generally develop an overview of identical and similar:

  • trademarks, including their owner, the goods and services for which they have been registered, and whether these are being used;
  • existing online identifiers, their owner and the use that is made thereof.

If you are confident that you can proceed with the trademark of choice, it is important to take a coordinated action. This way, you avoid the risk that one or more third parties can lay their hands on these identifiers.

4. Choosing the right filing strategy for your trademark

As the cost for obtaining trademark protection can be quite steep, it is important to review all of the above different options, and determine the best way forward.

Using the international system can be very cost efficient at first glance, but also entails certain risks. Furthermore, if certain national trademark offices have questions with respect to the resulting trademark application in their country, you often need to have local representation for resolving the matter.

5. Acquire or register other relevant identifiers 

In addition to registering your trademarks in one or many countries, you also need to consider registering domain names:

  • 2 letters (.eu, .uk, .io, .tv, …): these are country-codes, which each have their own policies, procedures and requirements;
  • more than 2 letters (.com, .net, .org, .law, .tech, …): these are generic top-level domains, which are operated under the supervision of the Internet Corporation for Assigned Names and Numbers (ICANN).

Although the registration cost is rather low, the total cost for managing an extensive domain name portfolio may quickly escalate. For this reason, it is key to choose your domain(s) wisely, and look for effective and efficient ways for managing these digital identifiers.

Depending on the goods and services for which you would like to obtain exclusive trademark rights, it is recommended to also obtain or register online identifiers (marketplaces, social media, …) that will be key to promoting your business or even sell your products.

How to obtain exclusive trademark rights

1. Implement your filing strategy by applying for trademark registrations

International treaties assist brand owners in obtaining trademark registrations in most countries in the world in an effective and efficient manner.

In many cases, these types of geographic trademark extensions can be managed centrally, without the intervention of local counsel being required. However, if a local trademark office would have questions or remarks with respect to the local trademark application, a local representative needs to represent the trademark applicant in filing a response.

Over the years, we have built an extensive network of lawyers and IP professionals who assist us in the filing and registration processes in close to every country in the world.

2. Dealing with “office actions”

After having received your trademark application, the relevant trademark office will examine your trademark:

  • for distinctiveness: the trademark’s ability to be recognized as a sign that is able to distinguish your company’s products and services from the products and services of third parties;
  • for not being against morality or public order;
  • whether the goods and services you have indicated are sufficiently clear and detailed, and whether these are correctly categorized.

If the office(s) have concerns with respect to your trademark application, they will ask for clarification, or even provisionally refuse your trademark application. However, they will provide you with the opportunity to submit arguments and/or to amend your applications by limiting the list of goods or services or further specify them.

Generally, the trademark office will not examine at this stage whether your trademark may infringe the trademark(s) of third parties; some trademark offices may provide you with an overview of existing trademarks that are identical or could be considered confusingly similar to your applied-for trademark.

3. Dealing with oppositions

Certain countries allow third parties to challenge your trademark prior to your trademark becoming registered by filing an opposition with the (local) trademark office. If this opposition would be successful, this generally entails that you will not obtain exclusive trademark rights for some or all goods or services listed in your trademark application.

Moreover, if you would still be using the trademark for the goods and services for which the other trademark owner has an earlier right, you may even be facing infringement actions.

Generally, oppositions are filed by trademark owners who have an “earlier” trademark in that jurisdiction, for the same or a similar sign and for the same or similar goods and services. 

If you are facing these types of actions, it is important to consider all possible outcomes:

  • develop arguments on why your new trademark will not be infringing the exclusive rights of the holder of the “earlier” trademark;
  • seeking an amicable solution by entering into co-ownership or licensing agreements, for instance by limiting or specifying the goods or services you will be offering, commit to the addition of specific elements to your trademark, etc.

Protecting your trademark rights: key elements to consider post-registration

1. Use your trademark

Once you have obtained trademark registrations, it is essential that you use the trademark in the jurisdictions where you have obtained exclusive trademark rights.

According to trademark laws in many countries, there is a chance that you may ultimately lose your exclusive rights for some or all the goods and services for which the trademark is registered if you have not used it in a diligent way for a certain period.

Therefore, we recommend developing a portfolio of evidences over time that allow you to counter non-use arguments that could be raised by third parties. The systems we use allow us to make regular snapshots of websites, social media posts and online marketplace listings, evidencing that you are effectively using your trademark for the relevant goods and services in one or more jurisdictions.

2. Manage your trademark, domain, … portfolio

Managing a trademark, domain, patent, … portfolio is a process companies should not underestimate. Forgetting to renew your registrations or to audit your portfolio on a regular basis could result in increased costs in the long term, or even loss of exclusivity …

To avoid these risks, we operate online systems that allow us to easily track and manage our clients’ trademark applications and registrations.

Furthermore, we recommend conducting trademark audits on a regular basis to ensure that your portfolio is up to date and compliant with applicable laws, new technologies (such as NFTs) and trends (e.g., by monitoring the trademark, patent, design, … filings of your competitors). These audits will also allow us to see whether your trademark portfolio still covers all the goods and services you are offering; if needed, you may consider to extend the scope of trademark protection to your new products and services by making additional trademark filings.

Finally, these systems allow us to keep your trademark portfolio up-to-date, allowing for easy periodical renewal of your trademark registrations where needed.

3. Review on a regular basis relevant trademark registers for new trademark applications or registrations that potentially infringe your trademark rights

Being proactive in monitoring your trademark portfolio for potential issues is a key step in the process of managing your intellectual property rights. This means regularly searching for new third-party trademark applications that may conflict with your own trademarks, and taking action accordingly.

These actions may consist of:

  • filing an opposition against these “new” applications if local practices and procedures allow you to do so;
  • filing a cancellation action, requesting the trademark office or competent court to cancel the trademark registration;
  • initiating infringement proceedings before the competent courts.

Depending on the case, it may however be recommended to enter into negotiations with such third party, in particular if the more recent trademark could also entail an extension of the scope of your own trademarks. 

In any event, it is important to devise and implement the right strategy from the outset, as some of the above steps entail costs and official fees, investments in time, with – sometimes – undesired results.

4. Monitor for trademark infringements

Monitoring for trademark infringement is a critical part of any trademark protection strategy. Infringements can occur online and offline, so it is important to be vigilant in both arenas.

Various solutions exist that will allow you to review how your brands are being used online. However, most of them rather costly and not user-friendly. For this reason, we have developed together with IP Metro the Magnify+ platform, that will allow you to screen how your trademark is being used on the internet in generals, on social media platforms, marketplaces, news sites, domain names, and many more channels. Recently, we have added NFT marketplaces, as we have seen a lot of infringing activity on these platforms.

Monitoring for offline trademark infringement can be more challenging, but it's still important to be aware of. One way to do this is to keep an eye on businesses that are using similar logos or branding to your own. You can also ask your customers, resellers, agents and other business partners to let you know if they see anyone using your trademark without permission.

5. Enforce your trademark rights

If you do find trademark infringement, it is important to take action quickly. If the infringement is widespread – for instance if counterfeit goods are offered online –, a clear strategy needs to be developed that maximizes the chances of success at a low cost.

Actions can include sending a cease-and-desist letter, filing a complaint with the appropriate authorities, or taking legal action.

Such legal actions may consist of:

  • injunctions, whereby the court will allow you as a trademark owner to gather specific evidence with the party infringing your rights, or even seize the infringing goods, so they can no longer be shipped or sold;
  • initiating proceedings before the competent courts;
  • alternative dispute resolution, where the parties in the proceedings agree that a specialized third party (or third parties) will take a decision on the matter, rather than a judge. Although these proceedings generally result in a faster outcome, these are generally more expensive for the parties that have agreed thereto. Contracts relating to intellectual property, such as license agreements, often contain arbitration clauses.

Bart Lieben
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