A graphical sign. It is intended to help distinguishing the goods and services of one company from other identical or similar products or services of the competitors on the market. Therefore a trademark is always connected to certain goods and services. It is the most powerful instrument in business competition. It has role in advertisement and in indicating quality. The novelty of mark is not a condition for registration, but no similar trademark should be present on the same market and the sign should be distinctive. In case of successful registration the trademark provides exclusive right for the holder to use the mark in the territory of the European Union. There is no limitation on the number of times of CTM renewals.
A trademark is a symbol that is used to distinguish products or services of a company. If you register a mark you will have the exclusive right to use it. A domain name is an address, which identifies a site on the World Wide Web. Domain registration is completed by national (as is the case with an ”.de” or ”.fr” address, for example) and international (as in a “.com” or “.eu” address, for example) organizations. Domain is not necessarily connected to economic activities. There can be only one domain of the same kind under one top level domain (e.g: .eu). In contrary there may be several similar or identical trademarks, when each mark is connected to different goods or services.
The following advantages are provided by trademark:
> the trademark helps to identify the origin of products and services;
> the trademark creates an exclusive link between the products/services and a trademark owner;
> means a guarantee for consumers regarding the constant quality of products/services identified by the trademark;
> in this respect it is a powerful marketing instrument.
The legal protection arises from the fact of registration. However, in some countries, under certain restrictive conditions marks without registration are given a certain level of legal protection as well.
By registering a trademark, the owner the exclusive right to use and dispose over the trademark in connection with its products and services. On the other hand it means that the owner has the right to claim legal protection against any other entities using similar or identical marks on similar or identical goods/services without the authorization of the trademark owner.
Trademarks ensure protection in connection with economic activities particularly with certain goods and services. The scope of protection is rather wide. Not only identical but also similar marks may lead to an infringement if used in respect of similar or identical goods. In many countries well-known trademarks enjoy a special position. They are entitled to protection against similar or identical marks even if the goods and services in concern are different, supposing that the user of the mark would benefit from the reputation of the well-known trademark.
The list of goods contains all those products and services for which the trademark is intended to be used. This list cannot be amended after filing the trademark application. The actual use of the trademark after a grace period (generally 5 years) with each of the listed goods/services to uphold the legal protection. It is therefore recommended to prepare the list of goods/services circumspectly.
The different goods and services are classified into 45 classes based upon an international agreement applied in 78 countries. All European countries use this classification. The classification involves 34 classes of goods and 11 classes of services. It is strongly recommended to prepare the list of goods thoroughly since there is an obligation to use the trademark in connection with the list of goods after 5 years of registration and also because the more classes are indicated the more the registration costs.
It is suggested to choose a mark that best fits both the products and services and the profile of the company in concern. Once a mark is chosen it is advisable to complete a similarity search in the targeted country. It is intended to exclude possible conflicts with earlier trademarks, bearing in mind that the holders of mentioned trademarks may hinder the registration of the trademark.
In most countries foreign applicants are obliged to appoint a representative before the national authorities. It is strongly recommended to seek the assistance of a professional and to avoid unrecoverable mistakes.
In many countries there is an opportunity provided for earlier trademark holders to step up against a registration of a later conflicting trademark during the registration procedure. Usually a certain period is given to file an opposition after the publication of the trademark application. The assistance of a qualified trademark attorney is essential to overcome the possible difficulty.
These grounds are related to refusal of trademark registration. Absolute grounds refer to the incapability of marks to be distinctive, graphically presented, or being deceptive for consumers in connection with the goods and services or against the public order. Relative grounds are in connection with earlier trademark and other rights. Most national offices carry out search for earlier trademarks however it is not “examined” and not taken account at granting (see CTM opposition).
Trademark can be cancelled from the register in case
- the trademark did not comply with the legal requirements at granting or
- there is a conflict with an earlier trademark or
- the trademark was not used after the grace period of time. It has the effect of ceasing legal protection.
Any breach of the exclusive rights legally provided to the trademark holder constitutes an infringement. Accordingly the trademark holder is entitled to make a claim against anyone who uses similar or identical mark in connection with similar or identical goods and services without authorization. The legal steps that can be taken against such persons vary and determined by state laws. Generally
- declaration of infringement,
- an injunction to cease infringement,
- surrender of enrichment,
- compensation for damages can be requested. A petition for temporary measures may be filed in most countries, within a specified time period.
Trademark protection endures for 10 years. It can be renewed with 10-year terms. Trademarks are entitled to protection on the territory of the country or international organization (European Union – Community Trade Mark) the registration is applied for.