Frequently Asked Questions | iGERENT

Frequently Asked Questions

The content of these FAQs, just as the rest of the content found on this website, is NOT legal advice. Legal advice is when a lawyer applies specific law or general principles of law recognized in a determined jurisdiction, to a particular factual situation for a particular client. Our content simply seeks to help readers avoid common mistakes and hopefully help them have a general understanding of the subjects here stated.

Trademark rights are granted when registering the trademark through the corresponding government offices. Although in some jurisdictions using a trademark, without actually registering it, may grant the user, owner or trader certain rights, it is only by registration that these rights may be undisputed and properly secured.

 

A smell, scent or olfactory trademark is a trademark that consists of a fragrance capable of differentiating certain goods from other similar goods offered by other traders. However, the fragrance must not fulfill a utilitarian effect, be connected with the nature of the product, or with the goods used in its production.

In order to be able to register a smell, scent or olfactory trademark, the fragrance must be capable of being represented graphically. Graphic representation may be in the form of writing, drawing or diagrams representing the mathematical or chemical relationship of the compounds that create the fragrance. 

To date only a few countries actually accept fragrances as trademarks, but numbers should increase in the near future. 

 

Trademarks, patents and copyrights are all referred to as Intellectual Property rights, nonetheless, they differ in regards to what they are based on, their purpose, requirements, the period of protection they are granted and the geographical scope of their protection. 

Please bear in mind that trademark, patent or copyright rights may overlap in certain situations. 

 

Trademarks

A trademark is any sign capable of being represented graphically that may allow for determined products and/or services to be identified with an individual trader, provider or source, be this a person or legal entity.

 

Patents

A Patent is an exclusive right granted by the state in which it is registered, giving the owner or holder of an invention the exclusive right of use and exploitation of the invention, with the legal authority to prevent third parties from using the invention without the owner’s or holder’s consent.  

In order for a patent to be granted, it must comply with the following requirements:

i. The invention must be “novel”. This means it must be new, not only in regards to the country in which patent registration is being sought, but globally. Although there is a short grace period, generally, the publication of an invention in any journal or exposition to the public will cause an invention to lose novelty, and therefore not be patentable. 

ii. The invention must be “non-obvious”. Non-obviousness means that the invention is not simply the sum of already existing inventions, or a mere further step in an already existing invention. This analysis will be made by experts in the field in which the invention or patent may be useful and applied to.

iii. The invention must have “industrial application”. This means the invention must be capable of being used by a specific industry in some kind of way. The definition of industry should be interpreted broadly, to include such activities as agriculture or astronomy.

Click here for further information in regards to Patents.

 

Copyright

Copyright is the combination of legal rights that are exclusive to the creators of an original work; its aim is to protect the expression of ideas of the creator, not the idea itself.  

In the overwhelming majority of countries copyright protection is granted automatically upon creation. Therefore registration is not necessary for works to be protected by copyright, but may be useful in preventing future disputes.

Copyright gives the holder the exclusive right to decide whether they or others may reproduce their work, publish it, make copies, perform it in public, communicate it in public or make adaptations based on the protected works. 

Example of works that are protected by copyright include literature, artistic and scientific works such as, but not limited to: novels, guides, plays, manuals, thesis, translations, maps, songs, posters, drawings, sculptures, films, architectural designs, web designs, data bases and softwares. 

Click here for further on information in regards to Copyright.

 

Comparative Table

 

  TRADEMARKS PATENTS COPYRIGHTS
INCLUDES  Distinctive Signs  Inventions  Literary, Artistic and Scientific Works
EXCLUDES  Confusingly similar marks to previously  registered marks, descriptive,  deceptive  or generic marks, marks  contrary to  public order or morality,  marks that  consist of official state or  intergovernmental signs or Olympic  symbols.  Discoveries, unaltered species of  nature, abstract ideas, software  (some exceptions).  Abstract ideas, procedures, operating  methods, mathematical concepts.
 REQUIREMENT  Distinctive signs capable of being  represented graphically.  Novelty, Non-obviousness and  industrial application.  The original idea must be expressed.
GRANTED RIGHTS  Exclusive use of the registered mark to  promote the owners goods and/or  services, and the right to prevent third  parties from using identical or similar  signs to promote their goods and/or  services.  Exclusive use and commercial  exploitation be these fabricating,  licensing, offering, importing or  exporting products that include  patented inventions. (Under certain  circumstances, rights may be limited.)  The rights to reproduce, distribute,  publicly perform or display the work and  the right to prepare derivative works or  adaptations. (Under certain circumstances,  rights are limited.)
PERIOD PROTECTION  10 years, with the possibility of  renewal  for identical periods  perpetually.  Generally 20 years. It is not  renewable.  For the whole life span of the author, plus  50 years or more, depending on the  country of first publication or nationality.  It  is not renewable. In the U.S. period of  protection extends to 70 years after the  death of the author.

 

 

A certification trademark is a trademark registered by a particular party, usually a union of members or an organization, who certifies that any trader or provider that offers particular goods and/or services including such mark, complies with previously defined standards. Such standards may be in relation to the origin, quality, materials, methods or characteristics included or met by the goods and/or services. 

Certification trademarks are not intended to differentiate or distinguish goods and/or services that originate from a certain trader or provider; their sole purpose is to certify the quality or characteristics of the goods or services offered. 

The control or verification that such standards have been met relies solely on the owner of the certification mark, or an appointed third party.   

 

A collective trademark is a trademark that is held or registered by a collective group or organization, such as an association or cooperative, with the sole purpose of connecting their goods and/or services with a determined geographical origin or way in which they are manufactured or provided, while distinguishing them from non-member third parties.

The function of these trademarks is not to sell or provide goods and/or services under the trademark, but to demonstrate membership with an organization or association. Collective trademarks are usually used in combination with individual trademarks in order to identify the specific producer or provider, differentiating themselves from other members in the market place.  

 

A figurative mark is a trademark that consists of an image, design, emblem or any graphic representation that does not include any alphanumeric (letter or number) elements.

e.g.:   

 iGERENT logo

A mixed or combined mark is a trademark that includes both alphanumeric (letter or number) elements as well as an image or design. If a word or phrase is written in a stylized fashion or word, it would also be considered a mixed or combined mark.  

e.g.: 

 iGERENT combined logo

A movement or motion trademark is a trademark that consists in a particular movement that is capable of differentiating goods and/or services associated with it from other similar goods and/or services in the market place. 

Famous examples of registered movement or motion trademarks are Lamborghini's opening and closing of their sports car door. Another well-known example is the opening sequence of images (video) that appears in Microsoft Windows' startup animation.

Like other trademarks, in order to apply, the movement or motion must be represented graphically. In these cases representation is done through a flipbook or series of images that clearly depict an unequivocal unique sequence of motion for which registration is sought. Together with the sequence a written detailed description of the movement should be provided.

 

 

A service mark is essentially the same as a trademark. Some countries make the difference when calling trademarks “service marks” when these are associated with services and not products.

 What is the difference between goods and services?

 

A sound trademark is the combination of musical tones or tune, capable of distinguishing certain goods and/or services while connecting them with a specific trader or source. Registered sound trademarks usually are no longer than a few musical notes long, but can also have considerable lengths. 

Famous examples of these are Homer Simpsons famous ""D'OH!"" and MGM Entertainments “Roaring Lion”.

Some national offices require audio files to be provided with the application and/or will require actual graphic representation.

Graphic Representation of sound trademarks is accomplished by providing the musical score of the melody.

e.g.:

Example of soundmark

 

A three-dimensional or shape trademark consists of the shape or figure of a product or its packaging or container, with which a product may be differentiated from others and associated or connected with a specific trader or source. 

The most common example of these kinds of trademarks is the famous triangle shaped Toblerone chocolate bar. 

In order for these kinds of trademarks to be registered, the shape or figure must be unique, the shape must neither be a consequence of the nature of the goods, nor must it serve a function or purpose other than to differentiate itself from other similar products. Therefore, a simple bottle design made to hold a liquid product would not be capable of registering as a shape or three-dimensional trademark. 

When applying for a three-dimensional or shape trademark, graphic representation will have to be provided through detailed drawings.

Please bear in mind that certain three-dimensional shapes are or should be protected through Copyright or Industrial Design. 

 

A trademark is any sign capable of being represented graphically that may allow for determined products and/or services to be identified with an individual trader, provider or source, whether this be a person or legal entity.

 

A wordmark is a trademark that consists only of alphanumeric (letter or number) elements. A wordmark does not consider or include special fonts or stylized representation of the letters or numbers.

 

e.g.          iGERENT

 

Goods are tangible. They consist of products that one may purchase to use or consume. Depending on the nature of the good or product, it may be consumed upon its first use (e.g. chocolate bar, banana, soda water) or may be used on more than one occasion, where the product does not lose its original characteristics (e.g. pen, shoes, motorcycle).

Services are intangible. They are actions provided by a third party that may require a special skill or resource. When paying for a service, one does not own the service, only the result of the action provided by the service provider (e.g. haircut, painted wall) or the right to the provision of the service (legal advice from an attorney, a room in a hotel, telephone line provided by a telephone company). 

 

Before registering a trademark one must first define the goods and/or services the trademark is going to be used for. With every trademark application, a clear description of goods and/or services must be provided. 

For example.-

Trademark Description of goods/services
 APPLE  Computer hardware
 AMAZON  Electronic retailing services

 

Different goods or services are grouped into different classes, therefore, depending on what goods or services one is applying for, registration should be sought in one or more classes.  

The Nice classification (NCL) is the standard classification system that is used by the overwhelming majority of countries around the world. The classification, established by the Nice Agreement (1957), establishes 45 classes. Classes 1 through 34 are for goods and classes 35 through 45 are for services. 

For example.-

Trademark Description of goods/services Class
 APPLE  Computer hardware 09
 AMAZON  Electronic retailing services 35

 

Every single good or service imaginable can be classified into one of the 45 classes, whether because it is expressly included in the predefined list of goods/services of the class, or because the nature of the goods/services corresponds to the general description of the class. 

Click here to search the Nice Classification to determine in what class a specific good/service corresponds to.

 

A trademark can consist of virtually anything as long as it may be represented graphically. However, certain jurisdictions (countries) limit what graphic representations may be allowed for trademark registration.

The most common trademarks may be classified as:  

- Word marks;

- Figurative marks; and,

- Mixed or combined marks.

Non-conventional trademarks include, but are not limited to:

- Smell, scent or olfactory trademarks;

- Three-dimensional or shape trademarks; 

- Sound or aural trademarks; and

- Movement or motion trademarks.

 

One must be able to differentiate a trademark’s goods or services from those of other traders that may offer identical goods or services.

If a trademark consists solely of the name of a product or service, or a name with which a product or service is referred to in the market place, it is highly probable that the registration office of the country for which protection is being sought will refuse such a trademark.

However, depending on local laws or practice, trademarks may include the name of a product or service as long as it is accompanied by other predominant central elements. These should not contain a name by which the products or services are known, should not describe the products or services, and one should be able to differentiate the brand when compared with other previously filed or registered trademarks. 

In some jurisdictions the elements of a trademark that consist of the name of a product or service (or other common words) will have to be disclaimed.

 

Trademark registration is granted in respect to determined goods and/or services (classes). Therefore, although an identical trademark may be registered, if one were to apply for an identical trademark in a different class, registration could be granted. 

However, registration offices and examiners will analyze if such trademarks may confuse consumers into believing that they both come from the same trade source. Part of this analysis consists of checking if the goods and/or services of both trademarks are related or offered in the marketplace by similar ways or placement. If they were to consider that consumers would believe that both trademarks come from an identical source, the application would be initially refused. Furthermore, the owner of the previously registered trademark, although for different classes, may present an opposition to registration based on the possible confusion that may be caused to consumers or the possible association that consumers may believe to exist between the owners of both trademarks. 

In the case of well-known trademarks, protection usually transcends class protection. Although Coca-Cola does not have their trademark registered for women’s makeup, if someone other than The Coca-Cola Company were to file a trademark for makeup, the application would almost certainly be refused.  

 

Trademark registration is territorial. Therefore, if a trademark has been registered in one country, protection is only granted in regard to this country. Anybody may apply for an identical trademark in another jurisdiction. For this reason it is very important that brand owners register their trademarks in all the countries and territories in which they believe they may eventually be used.

Nevertheless, if you are an owner of a trademark and someone has hijacked your trademark by applying for it in another territory, depending on the country, there are actions you may take to either oppose the registration of the trademark if it has not yet been granted or present cancelation actions for the trademark to be cancelled.

Registering a trademark in over 200 countries is extremely expensive. It is recommended that a Watch Service be ordered to monitor whether third parties are registering your trademarks in other countries. This service will allow trademark owners to be notified if identical or significantly similar trademarks are being applied for in other countries or regions of interest. 

 

If you would like to order a trademark Watch Service, please click here.

 

When determining if a domain name can be registered as a trademark, the TOP LEVEL DOMAIN element (gTLDs or ccTLDs) such as .com, .net, .eu, .us, should not be taken into consideration. Therefore, it will depend entirely on the words that make up the domain name of interest. If the words that make up the domain name do not fall into grounds of non-registrability, then registration is possible. 

Although practice may vary in different countries, if a domain name is registered within a trademark, the TOP LEVEL DOMAIN element (e.g. .com) must usually be disclaimed, and protection over this particular element is renounced. 

Example of the disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ".COM"

 

If your name identifies your products or business then you can and should register it as a trademark. Nevertheless, if your name is identical to a famous name, or one that may lead consumers to believe that the products or services are associated with someone else, registration may be refused. Depending on the country of interest in which you wish to register, limitation or requirements may vary. 

 

With the exception of “Geographical Indications” and “Denomination of Origin”, trademarks that include known geographical names will likely be refused in most jurisdictions. This is due to the fact that:

1. Consumers may be led to believe that the goods and/or services sold under the trademark are of the geographical origin expressed in the trademark. This may therefore be misleading or indicative, depending on whether or not they in fact do come from the place expressed. 

2. The expression may be relevant in the consumers’ appraisal of quality of the products and/or services sold under the trademark, therefore being considered as a descriptive trademark. 

Nevertheless, if the geographical name is accompanied by other predominant elements, the trademark may be granted registration in determined situations. 

 

If a trademark merely describes goods or services, consumers will not be able to differentiate the trademark from those used by other traders for similar goods or services in the marketplace. Therefore, registration will probably be denied.  

 

For example.-

Trademark Description of goods/services
 EXTRA FAST  Computer hardware – Central processing unit (CPU)

 

Registration would most probably be refused, as this would only allow one trader to refer to his products as EXTRA FAST. Other traders should be able to use such descriptive terms when advertising or offering similar products.  

However, depending on local laws and practice, trademarks may include descriptive elements as long as they are accompanied by other predominant central elements that may grant it distinctiveness. 

Furthermore, if your trademark consists of a descriptive element and you have been using it for a considerable period of time, your brand may have acquired the necessary distinctiveness through real and effective use.

Before filing a trademark, it is recommended to seek an expert’s recommendation on whether or not a trademark may in fact be registered. 

 

If you would like to order a trademark assessment report, please click here.

 

 

Yes.

Music groups may apply to register their names as a trademark (service mark). As they provide live musical performances they would qualify for registration under class 41.  

If the music group is successful, registering their name as a trademark would be advisable for different products such as audio records or digital music under class 09, posters under class 16 and T-shirts under class 25.

 

When choosing a trademark keep in mind that the purpose of a trademark is to allow traders to differentiate themselves from other traders that sell or offer similar goods or services in the marketplace. 

Common mistakes when choosing a trademark are:

1. Choosing a trademark that consists of generic terms or elements in regards to the goods or services for which it seeks registration. (e.g. SCREENS for televisions or SMOOTH for skin care products).

A trademark will give its owner the exclusive right to use the words or elements of the trademark in relation to the products or services in the jurisdiction in which it has registered. Therefore, if a trademark consists of elements that are commonly used for such products or services, a trader should not be granted the exclusive right to use it. Although trademarks that consist of generic elements may be registered in determined situations, preventing other traders from using such elements often proves difficult due to the weakness of the mark. 

2. Choosing a trademark that is descriptive of the goods or services for which it seeks registration (e.g QUICK AND FAST for computer processors or GREEN MARKET for the selling of vegetables)

When creating a trademark is it very tempting to include elements in the name that may indicate the quality, characteristic, function or purpose of the products or services. A trademark that includes such elements may be refused for registration. 

3. Choosing a trademark that includes known geographical names is also a common mistake. The inclusion of these elements may give rise to objections or office actions from the trademark office.

Depending on the actual geographical name, the trademark may be refused due to the qualities or characteristics that consumers may associate with the product due to the geographical name included in the trademark.

For example: FRENCH PURITY for perfumes. Consumers may be led to believe that such perfume is fabricated in France, and being that this is a country known, among other things, for perfumes, the trademark refers to the quality of the products.  

4. Choosing a trademark that is identical or confusingly similar to another trademark for similar goods or services. In these cases, as expressed before, being that a trademark’s main goal is to allow consumers in the marketplace to clearly differentiate one from another, trademarks that are identical or confusingly similar to others will surely face objections or office actions from the registration office and may also face third party oppositions. 

 

No. 

A Business Name is the legal name under which a company operates. It does not grant any rights over a trademark. If you believe your company name is a principal factor with which consumers associate your goods or services in the marketplace, you should register it as a trademark. Only by registering a trademark will you be able to prevent third parties from using your company’s name in relation to similar goods or services. 

A Domain Name is the address with which internet users are able to arrive to a specific web page and its content. A domain name does not grant any proprietary rights over a trademark. Nevertheless, a registered trademark may give you rights to use or eventually recover similar or identical domain names for certain extensions (.com, .net, .info, etc.).

Contact us if you are interested in our Domain Name Dispute services

 

Well-known trademarks are those that are widely recognized by the public, not only locally or in a determined country or territory, but on a global or regional scale.

The trademark system (in first-to-file jurisdictions) is built on two general rules, which are:

1. First come, first serve. When applying for a trademark, he who applied first has rights over the trademark. Only owners of previously registered or filed trademarks can oppose registration of the new mark.

2. Protection is granted only in the countries or territories where the trademark is actually registered.

In the case of well-known trademarks, these principles vary. In practically all jurisdictions, the fact that a well-known trademark is not registered locally does not mean that protection and proprietary rights are not recognized. Such protection is recognized for these kinds of marks under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Therefore, trademarks that are well-known may be protected in some circumstances without registration. If an identical or similar trademark is being registered that may lead consumers into connecting the goods and services with a well-know trademark, therefore damaging or affecting the well-known trademark, the registration of the trademark may be opposed or canceled.

Nevertheless, well-known trademarks should be registered in all countries or territories of interest. Without registration, full protection is not ensured. 

 

What may be considered as a prohibited sign vary between jurisdictions.

There are a number of International Treaties that mention protected emblems and symbols that may not be included in a trademark, obligating the local trademark office in countries that are a party to such treaties to refuse trademark applications that include them. Furthermore, in certain cases where a trademark may have been registered including a protected symbol, the trademark may be invalidated. 

The Paris Convention for the Protection of Industrial Property first signed in March 20 1883, along with its numerous revisions, states the following elements as prohibited signs:

- Armorial Bearings

- Flags 

- State Emblems

- Official Signs

- Hallmarks

- Abbreviations and Names of International Intergovernmental Organizations

 

The Nairobi Treaty on the Protection of the Olympic Symbol adopted on September 26, 1981, states the following elements as prohibited signs:

- Olympic symbol. The treaty defines the Olympic symbol as that consisting of five interlaced rings: blue, yellow, black, green and red, arranged in that order from left to right. It consists of the Olympic rings alone, whether delineated in a single color or in different colors.

 

Protocol III of the Geneva Convention of August 12, 1949, relating to the Adoption of an Additional Distinctive Emblem, of December 8, 2005, states the following elements as prohibited signs:

- Red Cross

- Red Emblem

- Red Lion and Sun

- Red Crystal (for certain uses)

 

Please bear in mind that the above-mentioned prohibitions may vary in the severity of their interpretation between jurisdictions. Furthermore, local legislation may include other signs to be considered as prohibited. 

For these reasons before proceeding with the filing of your trademark registration application, we strongly recommend that a trademark registrability report be done. This will allow you to have an idea of the probabilities of registration, potentially saving you time and money. 

 

If you would like to order a trademark assessment report, please click here.

 

When a trademark is being reviewed to determine whether or not it is adequate for registration, two main factors are considered. 

1. Whether the proposed trademark causes conflict with a previously used or registered mark. This analysis is not done in relation to the trademark itself, but rather in comparison with previously registered trademarks. 

Therefore, when choosing a trademark you should first make sure that the sign you intend to use is unlikely to be confused with another trademark that has been previously registered for identical or similar goods or services to those of the proposed trademark.

2. Whether the trademark’s configuration or elements may be considered as prohibited signs or if the name of the trademark consists of words common to other traders that offer similar goods or services. This analysis is not done in comparison to other trademarks, but rather in regards to the words or signs that make up the proposed trademark and whether or not it is capable of differentiating the products or services for which it would be registered.

Before proceeding with the filing of your trademark registration application, we strongly recommend that a trademark assessment report be done. This will allow you to have an idea of the probabilities of registration, potentially saving you time and money. 

If you would like to order a trademark assessment report, please click here.

 

Trademarks are not required by law and registration is not obligatory, the exception being for pharmaceutical products in certain countries. Nevertheless, in the great majority of jurisdictions, if you do not register your trademark, third parties may eventually effectively register it and prevent you from continuing to use it. 

It is highly recommended that you register your trademark in order to have the right to use all legal remedies to prevent and stop third parties from using your trademark. Down the road, it is always cheaper to register your trademark from the start. In many cases, companies have had to invest in rebranding (new packaging, lost advertising, loss of market placing) when they finally become aware of the existence of similar trademarks, or of third parties that have applied or registered for an identical trademark to theirs for similar goods or services.  

 

Timeframes vary country by country. A straightforward registration process, this is if a trademark application does not receive any objections/offices actions/examiners report or third party oppositions, can take as little as two weeks in Lebanon or as long as 3 years in Brazil.

For information regarding expected timeframes in specific countries please visit our country pages here.

 

Trademarks have territorial validity only in respect to the country or territory in which they are registered. If you register a trademark in Japan, the trademark is only protected and recognized in Japan. If a trademark is registered in South Africa, the registration is only effective in South Africa. 

You must register a trademark in every country in which you wish the trademark to be protected. Registration should be done not only in the countries that are your current market of interest, but also in the countries that you believe may be potentially important for your business.

Nevertheless, through certain regional trademark offices a single registration will grant protection in multiple countries or territories. These offices are:

BENELUX – Registration through this office grants protection in Belgium, The Netherlands and Luxembourg. 

EUIPO/European Union Trademark – Registration through the European Union Intellectual Property Office (EUIPO) grants trademark protection in all 28 member states of the European Union. Therefore, a single registration would grant protection in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. 

OAPI – Registration through the Organisation Africaine de la Propiete Intellectuelle grants trademark protection in 11 French-speaking African countries, including: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire (Ivory Coast), Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo.

ARIPO – Registration through the African Regional Intellectual Property Organization grants trademark protection in member states that are party to the Banjul protocol. These are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, Tanzania and Zimbabwe.

A trademark is the right choice if you wish to protect and have the exclusive right to use a certain word, phrase, symbol, design, sound or combination of these in order to identify certain goods or services that come from a specific trader or source. This allows for consumers and possible clients to be able to differentiate your goods or services from other similar ones offered in the marketplace.

 

No. The ® symbol serves to notify competitors that a trademark is effectively registered and cannot be used if such circumstance is untrue. This means that even an applied for trademark may not use the sign, only those that have the status of “registered”.   

 

The general rule is no. Nevertheless, some countries (e.g. USA) allow the use of the symbol if the trademark has been registered in another country. However, the use of the symbol under these circumstances does not grant the holder the protection and recognition they would be entitled to if the trademark was effectively registered locally.

 

(We mention but a few) 

A registered trademark grants exclusive nationwide use: Registering a trademark offers you protection and the exclusive right to use the trademark for your chosen products and services in the country or territories in which you have registered. You can take legal action against anyone who uses your brand without your permission, including counterfeiters

A registered trademark serves as a deterrent against third parties that would otherwise use identical or confusingly similar trademarks for identical or similar goods or services. In most countries the existence of an identical or similar trademark is grounds for the registration office to refuse registration. Furthermore, trademark owners have the right to oppose similar trademarks from being registered.  

A registered trademark grants one the right to use of the ® Symbol: Upon registration you will be able to use this symbol in order to demonstrate that your trademark has been registered and is enforceable by law, it also serves as notice to competitors that one is serious about protecting ones trademark rights.

It is illegal and punishable by law to use this symbol if your trademark has not been registered; fines and penalties vary depending on the country. The use of the ® symbol is some countries is also obligatory if a trademark has been registered in order to be able to present legal actions or remedies against a third party for using a trademark without the owner’s consent. 

A registered trademark is necessary to enlist help from countries’ Customs Service (Customs and Border Patrol): If a trademark has been registered, actions can be taken in order to request local customs services to prevent the entering or exportation of goods that use an identical or confusingly similar trademark.

Priority for subsequent applications: The first application for a trademark will grant the holder the right to subsequently claim priority when applying for an identical trademark in the vast majority of countries in the world for a period of 6 months. If priority is claimed inside the period of 6 months from the first application, the subsequent applications will be considered as having been presented on the same date as the application in the first country.

 

For more information regarding Priority please read the answer to the following question:

What is a Priority Claim in a trademark application?

 

In most countries a trademark can be registered for goods and services that have not and may not actually be used in the future. However, if a trademark is not actually used for all or some of the products or services for which it was registered, in most countries after a couple of years (time span varies by country) third parties may be entitled to present a motion to revoke such trademarks for all or some of the goods or services for which it is not effectively being used.

On the other hand, some countries’ trademark registration offices require that declarations or evidence of real and effective use be presented after some years of registration in order for this status to continue. The countries that require the filing of either declaration or evidence of use are: Haiti, India (suggested), Mozambique, the Philippines, Puerto Rico and the United States of America. Requirements and time frames for this vary by country. 

 

Many trademarks include elements or words that by themselves could not be registered due to being generic, commonly-used words, descriptive, or indicative in relation to the goods or services for which the trademark is being applied. 

For example, the trademark APPLE COMPUTER registered for computer products. This trademark is made up of two words or elements, APPLE and COMPUTER. The trademark may be eligible for registration when analyzed as a whole; however it would not be logical for the owner of this trademark to be given the exclusive right to use COMPUTER when referring to these products. Therefore, although the owner of the trademark will have the exclusive use of APPLE COMPUTER, he would have to state that No claim is made to the exclusive right to use "computer" apart from the mark as shown. This means that he has the exclusive right to using COMPUTER when accompanied by the word APPLE, but recognizes that no exclusive right is granted in the use of COMPUTER per se. 

Not all countries allow for a trademark to be filed with a disclaimer. Some offices automatically disclaim certain elements, while others will only allow for a word or elements to be disclaimed once the trademark is initially objected or refused (office action).

The following countries are but a few that require a disclaimer to be presented when a trademark includes generic commonly-used words: Australia, Belize, Canada, Costa Rica, Kazakhstan, Kuwait, Malaysia, Philippines, South Africa, Tanzania, Thailand, Trinidad and Tobago and the USA.

 

Whether or not a trademark should be submitted in color will depend on the jurisdiction where you apply for the trademark, and if you wish to claim color. In some countries, by submitting a trademark in color you will be automatically claiming the colors included in the logo, while in others an express declaration of claim over the colors will have to be filed in order do to so. 

We generally recommended that color not be claimed in a trademark, thus allowing the owner to use the trademark in the future in any combination of colors they see fit. However, if the color or colors included in the trademark are the central, predominant and recognizable feature (more so than the design itself), claiming color may be recommended.

 

Example of jurisdictions with color claim:

OAPI (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast (Côte d'Ivoire), Mali, Mauritania, Niger, Senegal and Togo). - In OAPI, when a trademark is filed in color, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Canada - When a trademark is filed in color before the Canadian Intellectual Property Office (CIPO), the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

China - When a trademark is presented in color before the Chinese Intellectual Property Office, the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

Ecuador - In Ecuador, when a trademark is presented in color, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

European Union Trademark - When a trademark is filed in color in the European Union through the European Union Intellectual Property Office (EUIPO), the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

Philippines - When a trademark is filed in color before the Intellectual Property Office of the Philippines, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Switzerland - When a trademark is filed in color before the Swiss Federal Institute of Intellectual Property, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Taiwan - When a trademark is filed in color before the Intellectual Property Office of Taiwan, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Thailand - When a trademark is filed in color before the Intellectual Property Office of Thailand, the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

Ukraine - When a trademark is filed in color before the Trademark Office of Ukraine, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

United States - When filing a trademark in color in the United States through the United States Patent and Trademark Office (USPTO), the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

 

Whether or not a Power of Attorney is necessary will depend on the country. With iGERENT, when a POA document is needed you will receive a template with clear instructions on how it must be filled out along with instructions regarding notarization or legalization requirements, if relevant.

Please consider the following as examples of some of the different requirements that Powers of Attorney must comply with in different countries in order for a trademark to be filed:

Australia – No documented Power of Attorney is required for filing a trademark.

South Korea – A simple scanned copy of a signed Power of Attorney is enough to apply for a trademark. 

China – A simple scanned copy of a signed Power of Attorney and a scanned copy of the owner’s passport or certificate of incorporation, depending on if the owner is a natural person or a legal entity, is enough to apply for a trademark.

Russia – An original signed Power of Attorney must be sent by mail to our local agents.

Costa Rica – An original signed and notarized Power of Attorney must be sent to our local agents.

United Arab Emirates – An original signed, notarized and legalized Power of Attorney must be sent to our local agents.

In some cases, if both the country where the trademark is going to be registered and the country of origin of the applicant are members of the Apostille Convention, requirements in regards to notarization or legalization may be reduced.

 

When choosing a trademark, and certainly before registering it, one should make sure that the trademark is capable of distinguishing one's goods or services from those offered by other traders in the marketplace. Trademarks should not consist uniquely or predominantly of elements that are commonly used in commerce to promote or refer to such goods or services, indicate the quality of the goods and services, or be identical or confusingly similar to other previously applied for trademarks. The best trademarks are usually those that are coined words (made-up words) or those that by themselves have no connection with one’s business, goods or services (e.g. Apple – for computers).

For more information regarding what you should consider when choosing or creating your trademark, please read the answers to the following questions:

What kind of trademarks cannot be protected (prohibited signs)?

What are some of the common mistakes made when choosing a trademark?

 

Before applying for a trademark we recommend you request one of our trademark assessment reports in order to determine if your trademark complies with local requirements in order to be registered. 

If you would like to order a trademark assessment report, please click here.

 

When applying for a trademark you will have to determine in what class or classes you wish to register and for which specific goods and/or services. To do so, just answer these questions: what goods will you sell or services will you provide? What are you going to promote with your trademark? Answering these questions will determine your goods and services, and with this you will be able to define the classes your trademark will have to be registered for. Use our Nice Classification Tool to determine your class.

The vast majority of countries use the Nice Classification System, nevertheless, many country offices have their own predefined list of goods and services that usually follows identical or similar criteria to that of the Nice Classification System. Our Trademark Consultants and local attorneys will assist you in defining what description of goods and/or services is most adequate for you. This will allow you to reduce the probabilities of receiving objections/office actions/examiner’s reports due to initial refusals caused by inadequacy of the provided description.

For more information regarding the Class system and description of goods please read the answer to the following question:

What is the trademark class or classification system? 

 

  1. Priority must be claimed using the first-ever filed trademark.
  2. Priority can only be claimed by the owner of the first filed trademark.
  3. Priority must be claimed at the moment of filing the subsequent applications before the term of 6 months ends, starting from the date that the first trademark was filed.
  4. Priority can be claimed only in regards to the class and goods or services that the first application was filed for.
  5. Priority can be claimed only to file an identical trademark.

*Depending on the country costs and required documentation may vary. 

 

In order to file a trademark the following information is required:

- The denomination that is to be registered or an image of the trademark if it is to have figurative elements. Some countries require that colored paper copies of the trademark be submitted in the moment of filing.

- The class number under which the trademark is to be filed.

- A description of goods or services that correspond to the class or classes under which the trademark is to be filed.

- The full details of the owner of the trademark: full name, what type of a company it is if the owner is a company and full address. Some countries require a copy of the passport or identification of the owner.

- The full details of the local agent or attorney who is to represent the owner in trademark-related matters.

* Power of Attorney (POA) will depend on the country. Some countries do not require documents for Powers of Attorney, but most do. In case a Power of Attorney is needed, it must comply with different requisites depending on the nature of the owner and might need legalization and/or notarization depending on the country. 

 

Priority is a right given and recognized by the great majority of countries around the world to the applicant of a trademark that has been filed for the very first time. When filing a specific trademark for the first time, that is, not having applied for the same trademark in any other country or territory before, the owner is granted a 6-month period from the date of first filing in order to be able to file in any other country as if the trademark would have been filed on the date of the first application (if priority is claimed).

For example:

If you were to file a trademark for the first time in the United Kingdom on the 1st of January of X year, and then applied for a trademark 4 ½ months later in Germany you would have two options:

Option 1 - NOT claiming priority: The application for the German trademark would then be considered as having been done on the actual date of filing (15th of May of X year).

Option 2 - (YES) Claiming Priority: The application of the German trademark would be considered as having been done on the same date as that of the trademark filed in the United Kingdom. Therefore, although the trademark was actually filed on the 15th of May of X year, it would actually be considered as if it would have been filed 4 ½ months before on the same date as the trademark in the United Kingdom, that is, the 1st of January of X year.

 

 

Most countries have a first-come, first-serve system of registration. That means that the person or company who applies first has rights to a trademark. Even in countries that have a first-to-use principle, the existence of a previously filed trademark would require the late applicant to demonstrate his rights over the trademark, having to incur heavy legal cost to do so.

Therefore, if you believe a third party or trademark squatter is trying to register a trademark that you are interested in and which you have already filed in another country, even though you may be late to apply or register in one or more countries, by claiming priority your trademark may be considered as having been presented first. Remember, similar or identical trademarks that have been filed before will be grounds for rejection by the trademark office.

 

A registered trademark may be transferred or assigned to another owner at any time. Requirements to do so may vary in each jurisdiction; usually, a deed of assignment (transfer contract) which identifies the trademark (application number, registration number, class and description of products and/or services) and is signed by both parties (assignor and assignee) is sufficient. Nevertheless, depending on the jurisdiction, a new Power of Attorney may be required, as well as notarization or legalization of the assignment documents.

When a trademark has been filed, and not yet registered, transfer of ownership may also be done. However, there are some jurisdictions where the trademark will have to be effectively registered before ownership may be transferred. 

Examples of countries where filed trademarks that are yet to be registered cannot be assigned are: Aruba, Bahamas, Bahrein, Curacao, Cyprus, Fiji, Indonesia, Jordan, Kenya, Kuwait, Lebanon, Monaco, Morocco, Saudi Arabia and Uganda.

 

No. Filing a trademark just means that a request for registration has been presented to the local trademark office. The trademark office will now examine your application in order to determine if it complies with all necessary requirements in order to be granted registration. Furthermore, the trademark will have to be published, after which there will be a period of time established so that third parties may present oppositions to the registration of the trademark (the length of this period varies in each country). Only once the trademark has been examined and accepted by the local trademark office and no third party opposition has been received, will the trademark be granted the legal status of registered. In certain jurisdictions a final payment of fees will have to be done when the trademark is accepted in order for registration to be granted.

 

Trademarks are published in order to give public notice that a trademark is seeking registration. This is done in order to allow third parties that may consider that the registration of a trademark affects their rights to present opposition actions. Therefore, once the trademark is published there will be a period of time in order for third parties to present actions aiming to prevent the registration of your trademark.

 

The period of time for oppositions to be presented varies in each jurisdiction.

 

Example of different opposition periods

 

Country Opposition period from date of publication
 U.S.A.  30 days
 Fiji  2 months
 Brazil  60 days
 China  3 months
 Saudi Arabia   90 days

 

Some countries use days and others use months to indicate the length of the opposition period.

 

A trademark license agreement is a contract in which the owner of a trademark grants another the right, which may or may not be exclusive, to use the trademark in commerce in a determined territory and for a determined period of time for all or some of the goods and/or services for which the mark has been registered. Therefore, the trademark owner does not lose ownership over the trademark and the authorized third parties will be able to legally use a trademark, usually by paying a fee or royalty. 

It is highly recommended that before entering into such an agreement, an expert attorney be consulted in order to ensure that the terms and conditions of the licensing agreement do not affect the rights of the trademark owner, for example, ensuring that it allows the owner to exercise quality control of the goods and/or services that the licensee is offering under the trademark in order to prevent the reputation and value of a trademark from deteriorating in the marketplace.

In many jurisdictions it is recommended, or even necessary, that a licensing agreement be registered in the trademark office of the country where the licensing agreement is to have effect.

In most countries licensing agreements can be signed before or after a trademark has been granted registration; nevertheless, in the following jurisdictions a license agreement will not be effective if the trademark has only been filed and not yet granted registration: Algeria, Aruba, Bahamas, Bahrain, Barbados, Belarus, Bolivia, Botswana, Costa Rica, Cuba, Curacao, Cyprus, the Czech Republic, El Salvador, Estonia, Guatemala, Indonesia, Israel, Jamaica, Japan, Jordan, Kazakhstan, Kenya, Kuwait, Latvia, Lebanon, Lithuania, Monaco, Morocco, Oman, Poland, Qatar, Romania, Russia, Saudi Arabia, Slovakia, South Korea, Taiwan, Uganda, Ukraine, U.A.E., Venezuela, and Vietnam.

 

Once the refusal is received, depending on the basis on which it has been refused, the applicant may be able to overturn the examiner’s initial findings by submitting arguments of why the trademark should be accepted, or amend and/or clarify any points of the application that have caused the examiner’s initial findings.

Time periods to respond vary between jurisdictions and if no response in presented, the trademark will be declared abandoned, lapsed or refused.

 

Whether or not an opposition may be overcome will depend on the merits of each case. Opposition proceedings in most cases end up being more expensive than the price of an application. Knowing this, many times the opposing party presents such actions in order to deter holders from defending their trademarks. In some jurisdictions not defending a trademark from an opposition will automatically cause it to be refused. Nevertheless, if a trademark is a pivotal element of a business, defending a filed trademark from an opposition may be worth the time and money.

Although the arguments that may be used to defend one's trademark application will depend on each individual circumstance, they are usually related to why the filed trademark does not cause confusion in the market place with that of the opposing parties, or why the applicant has legitimate rights over the trademark (e.g. the trademark has been effectively used for a considerable period of time and has gained recognition in the market place.).

 

A declaration of use of a trademark is a statement from the trademark owner indicating on what date the trademark was first used, or if the trademark is still being used in connection with the goods and/or services for which it was registered, all within the jurisdiction where the declaration is being required. The declaration must be presented in the form of an affidavit or signed with the understanding that willful false statements are punishable by local law.

 

A specimen of use of a trademark is any supporting evidence such as documents, photographs, brochures, newspaper articles, product packaging, etc. that serves as proof that a trademark is being used in commerce for determined products and/or services in the jurisdiction where proof of use is required.

 

A trademark opposition is an action brought on by any third party who looks to prevent a filed trademark from being registered. Third parties may wish to file for an opposition when a trademark has been published that they feel may harm their business or legitimate interest. The great majority of jurisdictions have a determined time-frame or window of opportunity during a trademark’s registration process for oppositions to be brought forth. 

Reasons that may compel a third party to oppose a trademark could be due to any of the following factors:

- The third party is the owner of identical or similar trademarks.

- The third party believes the published trademark may be confused in the marketplace with theirs.

- The third party thinks the trademark is being registered in bad faith.

- The third party believes the trademark does not comply with the necessary requirements to be granted protection.

The period of time for oppositions to be presented varies in each jurisdiction. 

 

Examples of different opposition periods

Country

Opposition period from date of publication

 U.S.A.  30 days
 Fiji  2 months
 Brazil  60 days
 China  3 months
 Saudi Arabia  90 days

 

In a few jurisdictions trademarks may only be opposed after registration is granted (cancellation actions) - such is the case in Switzerland, Benelux (Belgium, The Netherlands and Luxembourg), Lebanon and Mexico.

 

When a trademark is filed, the registration office will review the application to make sure that the trademark complies with all necessary requirements. If one or more requirements are not met, the trademark will be refused. This initial refusal is given different names, depending on the jurisdiction. Common names given are objection, office action, examiner’s report or initial refusal of a trademark.

Reason for refusals may sometimes be based on formal matters, such as an unclear description of goods and/or services, and can be easily overturned. However, trademarks may also be initially refused if the examiner finds previously filed or registered trademarks to be identical or confusingly similar, or if the trademark does not comply with the requirements of distinctiveness (generic, descriptive, indicative, etc.).

 

The office will examine if the trademark and application complies with all formal and substantive requirements. 

Example of such requirements

Formal Requirements check:

- That an actual trademark is filed with the application and that its representation is adequate.

- That in the application the class and description of goods and/or services are stated and correct. 

- Full owner details are filed with the application.

- When applicable, that the corresponding Power of Attorney with its corresponding notarization and legalization or apostille is filed.

- In case the applicant wishes to claim priority, supporting documents must be presented at the moment of filing if this is required by the local trademark office.

Substantive requirements:

- In the vast majority of jurisdictions examiners will check if identical or similar trademarks have previously been filed. 

- Trademark distinctiveness. This means that the trademark is capable of differentiating one owner’s or trader’s goods and/or services from those of others. Therefore, generic terms, descriptive terms, indicative terms, deceptive marks, geographical marks, etc. should be refused. Analysis of trademarks will usually be done over the totality of the mark and not in regard to a single element. 

Please keep in mind that each local office has different criteria regarding what constitutes an unregistrable trademark. Trademark examination is subjective.    

 

Yes. Legal proceedings and actions in order to have a trademark’s registered status overturned (cancelled) are possible in the vast majority of jurisdictions. The grounds on which such actions may be based may vary from jurisdiction to jurisdiction. However, whatever the basis for cancellation, the existence of the trademark must in some way affect the legitimate rights of the party who is presenting the cancellation action.

Different grounds for which a cancellation action may be evoked are:

- If a registered trademark may cause confusion with another previously registered trademark.

- If the trademark is or has become generic since its registration. This is the case with trademarks that no longer serve to differentiate a trader’s or provider’s goods or services from others, and it is now the widely used expression in the market place to refer to a determined product or service, regardless of its source.

- If the trademark was registered in bad faith.

- If the registered trademark is a well-known or famous trademark, and he who has registered it is not the real owner or does not have the real owner’s authorization.

- If the trademark has not been used in a real and effective way for a determined number or years. 

* What grounds are acceptable, if any, will depend on the jurisdiction of interest. 

 

Depending on the jurisdictions, a license agreement either can, cannot or must be registered with the local trademark authorities.

If a license agreement is to be registered, a copy of the license agreement will have to be presented in the trademark office, together with the agent or attorney’s Power of Attorney. Depending on the jurisdiction, the contract may have to be notarized and legalized; translation of the document to the local language may also have to be provided.

 

Trademarks are registered for periods of 10 years in the large majority of jurisdictions and may be renewed consecutively for unlimited periods of ten years (as a general rule). However, a few jurisdictions have different initial registration periods, meaning the first or consecutive registration periods do not follow the general 10-year rule.

 

Examples of different initial registration periods:

 

Country Initial Registration Period
 Cyprus  7 years
 Macau  7 years
 Malawi  7 years
 Nigeria  7 years
 Uganda  7 years
 The Bahamas  14 years
 Fiji  14 years
 Canada  15 years
 Lebanon  15 years

 

 

Trademarks are granted protection once they have been effectively registered. However, the date of registration may in some cases retroactively be considered as that of the day of filing or application.

This is important due to the fact that depending on the jurisdiction, the deadline to renew a trademark may be calculated based on the day of registration or the day of application, dates that sometimes have years of difference.

 

In countries where physical copies of Power of Attorney documents do not have to be presented, changing a trademark’s representative is fairly easy and will probably not require documentation. However, in jurisdictions where a Power of Attorney document had to be presented in order for a trademark to be filed, a new Power of Attorney that complies with the same formalities as the one given to the previous representative or agent will have to be presented. Furthermore, in some jurisdictions, when changing representatives, not only will a new POA be required, but also a signed letter revoking the previous agent’s authority.

 

If you require an original copy of your certificate of registration, you may acquire an original or legalized copy directly through a country’s registration office. The costs of copies of certificates vary significantly from country to country. In countries where the certificates are digital, free copies may be downloaded. Such is the case in the United States and in Switzerland. However, many times, digital copies will not be sufficient in order to be presented in legal procedures in other countries. In these cases, the copy of the certificate will have to undergo legalization procedures.

 

By entering into a license agreement with the registered owner of a trademark, one may acquire the legal right to use another person’s registered trademark in a determined territory in connection to some or all of the goods and/or services associated with the trademark.

 

Ordering a trademark watch service is the only way to monitor and be alerted if similar or identical trademarks that may conflict with yours are being filed. Trademark watch services will allow you to be notified when possible conflicting trademarks are being published under your classes of interest during the opposition period. This will allow you to know of these trademarks and determine if opposition actions should be presented. 

Trademark watch services are subscribed on a yearly basis and may be for a determined jurisdiction, country, region, or worldwide.

 

 

If the legislation of a country or jurisdiction allows trademarks to be the object of a security interest, then in order to ensure the effectiveness of the contract or document which establishes the security interest, it may need to be registered with the trademark registration office and/or other public institutions.

Examples of different ways of perfecting security interests in different countries:

Canada - Registration of the security interest should be done through two institutions. First, and necessarily, under the Personal Property Security Legislation (PPSL) of the province where the debtor resides or its business offices are located. It is also advisable that the security interest be registered through the Canadian Intellectual Property Office (CIPO) to serve as notice to other creditors. 

United Kingdom - Recordal for establishing a security interest for a trademark is done directly through the Intellectual Property Office of the United Kingdom.

U.S.A. - A “UCC-1” financing statement will have to be filed stating interest in the personal property (trademark) of the debtor; this is done through the corresponding State office. It is also advised that the security interest be filed through the United States Patent and Trademark Office (USPTO) in order to serve as notice to interested third parties in the trademark.  

 

If you believe that there is a similar trademark which may conflict with yours and that its existence may constitute an obstacle to the registration of your trademark, a coexistence agreement may be negotiated between both parties. 

A coexistence agreement can be beneficial for the following reasons:

- It can prevent an examiner’s initial refusal based on the existence of the trademark with whose owner a coexistence agreement has been reached.

- It can prevent the success of opposition actions between the parties as long as both comply with the negotiated agreement.

- It can prevent possible law suits from being presented based on trademark infringement. 

 

Please bear in mind that not all coexistence agreements will be valid or considered by trademark offices or authorities. If it is believed that the existence of both trademarks is to confuse consumers, or be contrary to public interest, the coexistence agreements may be ignored by trademark offices. Coexistence agreements may not be used to control certain sectors of markets, promote actions of unfair competition or create monopolies.

 

In many countries the registered agent or attorney who has Power of Attorney in regard to the trademark will be able to change details of the owner (not change the owner) such as name or address. However, supporting documents may be required by local authorities in certain jurisdictions.

 

In order for a change of ownership to be recorded through a local registration office, a copy of the transfer document will have to be presented, together with a Power of Attorney when necessary. Depending on the jurisdiction, the transfer document may have to be notarized and/or legalized. A translation of the transfer document may also have to be provided.

 

Ideally, one should have their trademark registered in every country or market that may be of interest in order to keep others from registering the same trademark. However, this of course may be very expensive and in most cases impractical. The steps that may be taken to prevent third parties from effectively registering a trademark that is identical, or deceptively similar, will depend on the grounds of opposition or cancellation that are recognized by local law or practice. Whatever the case, in order to prevent or react against a third party’s registration, one has to know of the existence of the conflicting trademark. For this reason it is recommended that every trademark owner order a watch service. A trademark watch service will allow trademark owners to be duly notified when an identical or similar trademark to theirs is being applied for and published for identical or similar goods and/or services, therefore allowing owners to take the necessary steps in order to prevent these trademarks from being registered.  Watch services may be ordered either for a determined country, jurisdiction, region, or even worldwide. 

Usually, trademark applications can be opposed before they are granted registration based on either the likelihood of confusion that it may cause with one's trademark (if it has been registered or used in said country), or argue that the trademark is being registered in bad faith and that he who is applying for it is not the real owner, or that he who feels affected by the registration has greater rights over the trademark.

Real ownership or prior uses of a trademark are considerable arguments in jurisdictions considered to be “First to Use”. These are jurisdictions which recognize that trademark rights are not conferred only by registering, but by actual use in the local market.  Example of “First to Use” jurisdictions are: Aruba, Australia, Brunei, Canada, Costa Rica, Cyprus, Denmark, Fiji, Hong Kong, Iceland, India, Ireland, Israel, Italy, Jamaica, Kenya, Latvia, Lebanon, Malawi, Malta, New Zealand, Panama, Papua New Guinea, Puerto Rico, Samoa, Saudi Arabia, Singapore, South Africa, Swaziland, Trinidad and Tobago, Turkey, U.A.E., United States, Uruguay, Yemen and Zimbabwe.

On the other hand, in “First to File” jurisdictions, trademark rights are only conferred by registration. Opposition actions in most cases can still be presented even though the interested party does not have a registered trademark in said country, but will probably have to be based on other grounds other than similarity or identity, such as bad faith or fraud. Example of “First to File” jurisdictions are:   Algeria, Anguilla, Argentina, Austria, Bahamas, Bahrain, Barbados, Belarus, Belize, Benelux, Bolivia, Botswana, Brazil, Chile, China, Colombia, Croatia, Cuba, Curacao, Czech Republic, Dominican Republic, Ecuador, El Salvador, Estonia, European Union, Finland, France, Germany, Greece, Guatemala, Hungary, Indonesia, Iran, Japan, Jordan, Kazakhstan, Kosovo, Kuwait, Kyrgyzstan, Lithuania, Mexico, Moldova, Monaco, Montenegro, Morocco, Nicaragua, Nigeria, Norway, Oman, Pakistan, Peru, Philippines, Poland, Qatar, Romania, Russia, Serbia, Slovakia, Slovenia, South Korea, Spain, Sudan, Syria, Taiwan, Thailand, Uganda, Ukraine, United Kingdom, Venezuela, Vietnam and Zambia.

Even when a trademark has been registered in both “first to use” and “first to file” jurisdictions, cancellation actions may be presented after a trademark has been registered. The basis on which oppositions will have to be presented vary country by country, but possible deception that may be caused to consumers or bad faith in registration are for the most part accepted.  

 

A registered trademark may be transferred or assigned to another at any time. Requirements to do so may vary in each jurisdiction and may include the following: a deed of assignment (transfer contract) signed by both parties (assignor and assignee) and the identification of the trademark (application number, registration number, class and description of products and/or services). Depending on the jurisdiction, new Powers of Attorney may also be required, as well as the notarization or legalization of the assignment documents.

 

You can use your trademark in connection with the goods and/or services for which it has been registered. The trademark may be included on the actual product, on packaging, flyers, posters, webpages, or on any other material that may serve to advertise or offer the goods and/or services for which the trademark has been registered. 

It is recommended that when using a trademark in text, the representation of said trademark be in capital letters, bold font or in between quotation marks in order to allow clear identification. If the trademark has been registered in a country where the trademark will be used, the registration sign ® should accompany its representation.

Although there may be some leniency in the use of the trademark for goods and/or services that are closely connected with those for which it has been registered, be aware that identical or similar trademarks may be registered for different classes, and therefore, if one uses a trademark in connection with goods or services that are not registered, it may eventually conflict with other trademark holders´ rights and therefore constitute an act of trademark infringement.

If you have registered your trademark for determined goods and/or services, and have since then expanded your business to include other goods and/or services, it is HIGHLY RECOMMENDED that you register a new (identical) trademark that includes those goods and/or services. This will not only allow you to safely make use of it, but also to prevent others from doing so.

 

One may renew a trademark be paying renewal fees and, in countries where a Power of Attorney is necessary, new documents will have to be provided. In most countries, if a different agent than the one who originally registered the trademark is assigned by the owner to renew it, then a new Power of Attorney will be required. 

In the majority of countries, the fees for renewal may be paid a few months prior to the date of renewal. If the renewal fees are not paid by the expiry date, the trademark will lapse. However, many jurisdictions allow for a trademark to be renewed after the expiration date by paying additional late fees; these grace periods for the most part are of no more than a couple of months. 

If the trademark definitely expires, the only way to ensure trademark protection will be to register it again. However, this will be considered as a new independent registration, giving third parties the right to file for an identical trademark (once the trademark expires) or to oppose any new registration.

 

Assuming you are the holder of a trademark (in some jurisdictions only holders with registered trademarks have recognized rights), it should first be determined if the use of the other party’s trademark may produce confusion among consumers in the marketplace. To do so, two criteria must be met:

  1. The trademarks have to be either identical or confusingly similar. This is determined by comparing the trademarks' sight, sound and meaning. If in one of these categories there is considerable similarity the first criteria would be met.
  2. It must then be determined if the conflicting trademarks are being used in connection with either identical or related products or services, or travel in similar channels of trade, and therefore lead consumers to believe that the products or services offered by both parties come from the same trader, origin, or source.

If both criteria are met, the other party will be committing what could be considered as trademark infringement. In these cases it is recommended that a Cease-and-Desist Letter be sent by an attorney to the person/entity that is using the conflicting trademark. If use of the conflicting trademark does not stop by the date expressed in the letter, a lawsuit should then be presented.

The purpose of trademark infringement lawsuits is to force the infringer to cease all use of the conflicting trademark and may give the affected party the right to seek compensation for the damages that the use of the trademark has caused. Depending on the country, trademark infringement may not only be basis for civil actions, but penal actions as well.

 

® is the universally recognized symbol that serves to identify that a trademark is registered. This symbol should only be included with a trademark when used in jurisdictions or territories in which the trademark is effectively registered.

The ® symbol also serves the purpose of providing notice and alerting others that the trademark is registered, as well as allowing clear identification of a trademark when it is included or displayed in places where other signs or trademarks are present.

Although it is not obligatory to use the ® symbol, in some jurisdictions if the symbol is not included in the use of the trademark, the trademark will not be enforceable by the owner, disallowing them from using legal remedies for restitution or giving them the eventual right of compensation.

Examples of the consequences of not using the registered sign ® in different countries:

Australia – Not using the trademark “registered” symbol for an already registered trademark in Australia does not limit the rights of the owner to act upon trademark infringers and does not limit compensatory rights. 

Chile – Not using the trademark “registered” symbol for an already registered trademark in Chile will limit the owner to persecuting trademark infringers only through civil actions. Criminal actions and procedures are limited to trademark owners who use the “registered” symbol together with their trademark. 

USA – Not using the trademark registered symbol for an already registered trademark in the United States may limit the trademarks owner’s rights. If the trademark owner is not able to clearly demonstrate that the infringer was aware that he was making use of a registered trademark then the owner’s right to recover damages and lost profits from the infringing party will be limited.

 

In most jurisdictions the non-use of a trademark by an owner for a prolonged period of time may cause for a trademark to be cancelled. Cancellation may be declared automatically by the trademark office in jurisdictions where periodic demonstrations of use must be filed during a trademarks life spam. Such is the case in Canada, Haiti, Philippines, Puerto Rico and the United States.

In many jurisdictions non-use of a trademark for a prolonged period of time, usually between 3 and 5 years, allows for third parties to present cancellation actions of a trademark based on the lack of use. Depending on the country, cancellation of the trademark may be for to the trademark as a whole, or only regarding certain goods and/or service for which it was registered and has not been used. Examples of countries with cancellation actions based on non-use of a trademark:  Algeria, Belize, Bolivia, Canada, China, Colombia, Costa Rica, the Dominican Republic, European Union (European Union Trademarks or EUTMs), Fiji, Guatemala, Hong Kong, Ireland, Japan, OAPI, Peru, Slovakia, South Korea, Norway, Russia, Sudan, Thailand, Turkey, Uganda, U.A.E., United Kingdom. 

Therefore, in countries where cancellations for non-use may be presented, a trademark owner may file a cancellation action if their trademark is being blocked due to the prior existence of an identical or similar trademark, thus clearing the path to registration. It is important to signal that excusable non-use (having an excuse for not yet using the mark even though it is registered) exists in the majority of jurisdictions that allow for these kinds of actions. Nevertheless, what constitutes excusable non-use and what kind of evidence must be provided varies from jurisdiction to jurisdiction.

Use it or lose it, is a principle that in favor of which more jurisdictions are legislating every year. In very few countries cancellation actions based on lack of use are not still accepted (e.g. Chile).

 

A Cease-and-Desist letter is a document sent by the owner of a trademark or their representative (usually an attorney) informing the receiving party that the trademark owner is aware that the other party is using their trademark, that it is infringing on their trademark rights, and that such use must halt or legal actions may be presented.

Every Cease and Desist letter should at the very least contain the following:

-  Individualization of the trademark over which rights are being claimed, accompanied by official documentation with any pertinent details (e.g. trademark certificate).

- Examples of how in practice the conflicting trademark is being used and how this may be interpreted as trademark infringement.

- An exact date on which it is expected that use of the conflicting trademark will have ceased.

- A reservation of rights to seek any or all legal remedies admitted by law in order to stop the usage of the conflicting trademark and to seek legal and compensatory damages.

- The sending party’s representative's contact information.

The Cease-and-Desist letter should be sent by certified mail in order to be able to determine the day on which such letter was received by the other party.

 

A coexistence agreement is a contract between two trademarks holders in which they formally declare that neither of the trademarks affect each other’s interests when used or registered in certain territories and for certain goods and/or services, as long as certain standards of behavior or commitments are fulfilled. Such contracts shall also declare that neither will oppose the registration or use of the counterpart’s trademarks as long as the undertaken commitments are held. 

At the very least a coexistence agreement should include:

- Clear identification of both parties.

- Clear identification of both trademarks that both owners wish to allow to coexist.

- Clear identification of classes, products and services each trademark is limited to and is to be registered and used in commerce for.

- Clear identification of the countries or territories in which the coexistence agreement is to have effect between both parties.

 

Please bear in mind that not all coexistence agreements will be valid or considered by trademark offices or authorities. If it is believed that the existence of both trademarks is to confuse consumers, or be contrary to public interest, the coexistence agreements may be ignored by trademark offices. Coexistence agreements may not be used to control certain sectors of markets, promote actions of unfair competition or create monopolies.

 

A security interest is an agreement or contract that creates an enforceable claim between a lender and a debtor, through which the debtor provides a determined right or property as a guarantee or collateral in order to secure a loan from the lender. The lender is therefore provided assurance that if the debt is not fully paid, he will have claim over the rights or property determined as the security interest.

In many jurisdictions trademarks can serve as collateral or guarantee for a loan. In these cases the security interest (contract) signed by both parties may or may not have to be registered through public offices, trademark offices or others, in order to have full effect against the debtor or owner of the trademark and third parties. 

Example of countries that recognize security interest in trademarks are: Australia, Algeria,  Austria, Bosnia & Herzegovina, Brazil, Bulgaria, Burkina Faso, Canada, Chile, China, Czech Republic, Denmark, Estonia, France, Germany, Greece, Ireland, Israel, Japan, Kazakhstan, Kenya, (South) Korea, Lichtenstein, Lithuania, Luxembourg, Malaysia, Mexico, Moldova, Monaco, Montenegro, New Zealand, Peru, Philippines, Romania, Russia, Slovak Republic, Slovenia, Senegal, Seychelles, South Africa, Spain, Sweden, Switzerland, the Netherlands, Tunisia, Uganda, Ukraine, the United Kingdom and the U.S.A.

 

A trademark license agreement is a contract in which the owner of a trademark grants another the right, which may or may not be exclusive, to use the trademark in commerce in a determined territory and for a determined period of time for all or some of the goods and/or services for which the mark has been registered. Therefore, the trademark owner does not lose ownership over the trademark and the authorized third parties will be able to legally use a trademark, usually by paying a fee or royalty. 

It is highly recommended that before entering into such an agreement, an expert attorney be consulted in order to ensure that the terms and conditions of the licensing agreement do not affect the rights of the trademark owner, for example, ensuring that it allows the owner to exercise quality control of the goods and/or services that the licensee is offering under the trademark in order to prevent the reputation and value of a trademark from deteriorating in the marketplace.

In many jurisdictions it is recommended, or even necessary, that a licensing agreement be registered in the trademark office of the country where the licensing agreement is to have effect.

 

The ® should only be placed in a trademark if it is effectively granted the status of registered in the country where the trademark is going to be used together with the “registered” sign, and only in connection with the goods and/or services for which it was granted. Having a trademark that is filed or in process does not grant the right to use such a sign. Use of the “registered” sign together with a trademark that is not registered is punishable by law. Nevertheless, in certain jurisdictions (e.g. U.S.A. and the European Union) if a foreign trader has a registered trademark in another country outside of the United States, the use of ® is tolerated, as long the trademark has not been registered by another in these jurisdictions. However, in this case, the owner will not have any of the rights or legal remedies that would be bestowed if the trademark was effectively registered.

TM and SM may be used if a trademark is not registered in order for the owner to give public notice and awareness that he claims initial rights over the use of the trademark, as long as the trademark has not been registered by a third party. TM is an actonym of Trade Mark and is usually used in connection with products. SM, the acronyme of Service Mark, should only be used in connection with services. 

 

The ® may be placed anywhere on a trademark. Nevertheless, it is recommended that the sign be placed in a way that clearly allows viewers to differentiate the registered sign from the actual trademark, allowing them to clearly note that the trademark is registered. In this sense, although the sign can be put anywhere, it is strongly recommended that the ® be put on either the top right corner of a trademark or the bottom right corner.

If a wordmark is to be placed in a document where it will be repeated over and over, it is not necessary to include the “registered” sign every time the trademark is included in the document. It is sufficient for the first representation of the wordmark to include this symbol. In this case it is recommended that the wordmark also be highlighted in either upper case letters or in bold font.

 

A registered trademark grants exclusive nationwide use: Registering your trademark grants you protection and the exclusive right to use your trademark in connection to the products and services for which you have registered in a determined country or territory. As a registered trademark owner you can take legal action against anyone who uses your brand without your permission, including counterfeiters.

A registered trademark serves as a deterrent against third parties that would otherwise use identical or confusingly similar trademarks for identical or similar goods or services. In most countries the prior existence of a considerably similar registered trademark is grounds for government offices to refuse a subsequent registration. Furthermore, trademark owners have the right to oppose similar trademarks from being registered. 

A registered trademark grants one the right to use the ® Symbol: Upon registration you will be able to use this symbol in order to demonstrate that your trademark has been registered and is enforceable by law. It also serves as notice to competitors that you are serious about protecting your trademark rights. Such right is limited to the countries in which the trademark is registered.

It is illegal and punishable by law to use this symbol if your trademark has not been registered; fines and penalties vary depending on the jurisdiction. The use of the ® symbol in some countries is also obligatory if a trademark has been registered in order to be able to present legal actions or remedies against a third party that uses a trademark without the owner’s consent.

A registered trademark is necessary to enlist help from countries’ Customs Service (Customs and Border Patrol): if a trademark has been registered, actions can be taken in order to request local customs services to prevent the entering or exportation of goods that use an identical or confusingly similar trademark.

Priority for subsequent applications: The first application for a trademark will grant the holder the right to subsequently claim priority when applying for an identical trademark in the vast majority of countries in the world, for a period of 6 months. If priority is claimed inside the period of 6 months from the first application, the subsequent applications will be considered as having been presented on the same date as the application in the first country. This is important in case there are conflicting trademarks that were filed after the first application.

 

For more information regarding Priority please visit our General FAQs

General Information

  1. How do I obtain trademark rights?

    Trademark rights are granted when registering the trademark through the corresponding government offices. Although in some jurisdictions using a trademark, without actually registering it, may grant the user, owner or trader certain rights, it is only by registration that these rights may be undisputed and properly secured.

     

  2. What are smell, scent or olfactory trademarks?

    A smell, scent or olfactory trademark is a trademark that consists of a fragrance capable of differentiating certain goods from other similar goods offered by other traders. However, the fragrance must not fulfill a utilitarian effect, be connected with the nature of the product, or with the goods used in its production.

    In order to be able to register a smell, scent or olfactory trademark, the fragrance must be capable of being represented graphically. Graphic representation may be in the form of writing, drawing or diagrams representing the mathematical or chemical relationship of the compounds that create the fragrance. 

    To date only a few countries actually accept fragrances as trademarks, but numbers should increase in the near future. 

     

  3. What are the differences between trademarks, patents and copyrights?

    Trademarks, patents and copyrights are all referred to as Intellectual Property rights, nonetheless, they differ in regards to what they are based on, their purpose, requirements, the period of protection they are granted and the geographical scope of their protection. 

    Please bear in mind that trademark, patent or copyright rights may overlap in certain situations. 

     

    Trademarks

    A trademark is any sign capable of being represented graphically that may allow for determined products and/or services to be identified with an individual trader, provider or source, be this a person or legal entity.

     

    Patents

    A Patent is an exclusive right granted by the state in which it is registered, giving the owner or holder of an invention the exclusive right of use and exploitation of the invention, with the legal authority to prevent third parties from using the invention without the owner’s or holder’s consent.  

    In order for a patent to be granted, it must comply with the following requirements:

    i. The invention must be “novel”. This means it must be new, not only in regards to the country in which patent registration is being sought, but globally. Although there is a short grace period, generally, the publication of an invention in any journal or exposition to the public will cause an invention to lose novelty, and therefore not be patentable. 

    ii. The invention must be “non-obvious”. Non-obviousness means that the invention is not simply the sum of already existing inventions, or a mere further step in an already existing invention. This analysis will be made by experts in the field in which the invention or patent may be useful and applied to.

    iii. The invention must have “industrial application”. This means the invention must be capable of being used by a specific industry in some kind of way. The definition of industry should be interpreted broadly, to include such activities as agriculture or astronomy.

    Click here for further information in regards to Patents.

     

    Copyright

    Copyright is the combination of legal rights that are exclusive to the creators of an original work; its aim is to protect the expression of ideas of the creator, not the idea itself.  

    In the overwhelming majority of countries copyright protection is granted automatically upon creation. Therefore registration is not necessary for works to be protected by copyright, but may be useful in preventing future disputes.

    Copyright gives the holder the exclusive right to decide whether they or others may reproduce their work, publish it, make copies, perform it in public, communicate it in public or make adaptations based on the protected works. 

    Example of works that are protected by copyright include literature, artistic and scientific works such as, but not limited to: novels, guides, plays, manuals, thesis, translations, maps, songs, posters, drawings, sculptures, films, architectural designs, web designs, data bases and softwares. 

    Click here for further on information in regards to Copyright.

     

    Comparative Table

     

      TRADEMARKS PATENTS COPYRIGHTS
    INCLUDES  Distinctive Signs  Inventions  Literary, Artistic and Scientific Works
    EXCLUDES  Confusingly similar marks to previously  registered marks, descriptive,  deceptive  or generic marks, marks  contrary to  public order or morality,  marks that  consist of official state or  intergovernmental signs or Olympic  symbols.  Discoveries, unaltered species of  nature, abstract ideas, software  (some exceptions).  Abstract ideas, procedures, operating  methods, mathematical concepts.
     REQUIREMENT  Distinctive signs capable of being  represented graphically.  Novelty, Non-obviousness and  industrial application.  The original idea must be expressed.
    GRANTED RIGHTS  Exclusive use of the registered mark to  promote the owners goods and/or  services, and the right to prevent third  parties from using identical or similar  signs to promote their goods and/or  services.  Exclusive use and commercial  exploitation be these fabricating,  licensing, offering, importing or  exporting products that include  patented inventions. (Under certain  circumstances, rights may be limited.)  The rights to reproduce, distribute,  publicly perform or display the work and  the right to prepare derivative works or  adaptations. (Under certain circumstances,  rights are limited.)
    PERIOD PROTECTION  10 years, with the possibility of  renewal  for identical periods  perpetually.  Generally 20 years. It is not  renewable.  For the whole life span of the author, plus  50 years or more, depending on the  country of first publication or nationality.  It  is not renewable. In the U.S. period of  protection extends to 70 years after the  death of the author.

     

     

  4. What is a certification trademark (CTM)?

    A certification trademark is a trademark registered by a particular party, usually a union of members or an organization, who certifies that any trader or provider that offers particular goods and/or services including such mark, complies with previously defined standards. Such standards may be in relation to the origin, quality, materials, methods or characteristics included or met by the goods and/or services. 

    Certification trademarks are not intended to differentiate or distinguish goods and/or services that originate from a certain trader or provider; their sole purpose is to certify the quality or characteristics of the goods or services offered. 

    The control or verification that such standards have been met relies solely on the owner of the certification mark, or an appointed third party.   

     

  5. What is a collective mark?

    A collective trademark is a trademark that is held or registered by a collective group or organization, such as an association or cooperative, with the sole purpose of connecting their goods and/or services with a determined geographical origin or way in which they are manufactured or provided, while distinguishing them from non-member third parties.

    The function of these trademarks is not to sell or provide goods and/or services under the trademark, but to demonstrate membership with an organization or association. Collective trademarks are usually used in combination with individual trademarks in order to identify the specific producer or provider, differentiating themselves from other members in the market place.  

     

  6. What is a figurative mark?

    A figurative mark is a trademark that consists of an image, design, emblem or any graphic representation that does not include any alphanumeric (letter or number) elements.

    e.g.:   

     iGERENT logo

  7. What is a mixed or combined mark?

    A mixed or combined mark is a trademark that includes both alphanumeric (letter or number) elements as well as an image or design. If a word or phrase is written in a stylized fashion or word, it would also be considered a mixed or combined mark.  

    e.g.: 

     iGERENT combined logo

  8. What is a movement or motion trademark?

    A movement or motion trademark is a trademark that consists in a particular movement that is capable of differentiating goods and/or services associated with it from other similar goods and/or services in the market place. 

    Famous examples of registered movement or motion trademarks are Lamborghini's opening and closing of their sports car door. Another well-known example is the opening sequence of images (video) that appears in Microsoft Windows' startup animation.

    Like other trademarks, in order to apply, the movement or motion must be represented graphically. In these cases representation is done through a flipbook or series of images that clearly depict an unequivocal unique sequence of motion for which registration is sought. Together with the sequence a written detailed description of the movement should be provided.

     

     

  9. What is a service mark?

    A service mark is essentially the same as a trademark. Some countries make the difference when calling trademarks “service marks” when these are associated with services and not products.

     What is the difference between goods and services?

     

  10. What is a sound or aural trademark?

    A sound trademark is the combination of musical tones or tune, capable of distinguishing certain goods and/or services while connecting them with a specific trader or source. Registered sound trademarks usually are no longer than a few musical notes long, but can also have considerable lengths. 

    Famous examples of these are Homer Simpsons famous ""D'OH!"" and MGM Entertainments “Roaring Lion”.

    Some national offices require audio files to be provided with the application and/or will require actual graphic representation.

    Graphic Representation of sound trademarks is accomplished by providing the musical score of the melody.

    e.g.:

    Example of soundmark

     

  11. What is a three-dimensional or shape trademark?

    A three-dimensional or shape trademark consists of the shape or figure of a product or its packaging or container, with which a product may be differentiated from others and associated or connected with a specific trader or source. 

    The most common example of these kinds of trademarks is the famous triangle shaped Toblerone chocolate bar. 

    In order for these kinds of trademarks to be registered, the shape or figure must be unique, the shape must neither be a consequence of the nature of the goods, nor must it serve a function or purpose other than to differentiate itself from other similar products. Therefore, a simple bottle design made to hold a liquid product would not be capable of registering as a shape or three-dimensional trademark. 

    When applying for a three-dimensional or shape trademark, graphic representation will have to be provided through detailed drawings.

    Please bear in mind that certain three-dimensional shapes are or should be protected through Copyright or Industrial Design. 

     

  12. What is a trademark?

    A trademark is any sign capable of being represented graphically that may allow for determined products and/or services to be identified with an individual trader, provider or source, whether this be a person or legal entity.

     

  13. What is a wordmark?

    A wordmark is a trademark that consists only of alphanumeric (letter or number) elements. A wordmark does not consider or include special fonts or stylized representation of the letters or numbers.

     

    e.g.          iGERENT

     

  14. What is the difference between goods and services?

    Goods are tangible. They consist of products that one may purchase to use or consume. Depending on the nature of the good or product, it may be consumed upon its first use (e.g. chocolate bar, banana, soda water) or may be used on more than one occasion, where the product does not lose its original characteristics (e.g. pen, shoes, motorcycle).

    Services are intangible. They are actions provided by a third party that may require a special skill or resource. When paying for a service, one does not own the service, only the result of the action provided by the service provider (e.g. haircut, painted wall) or the right to the provision of the service (legal advice from an attorney, a room in a hotel, telephone line provided by a telephone company). 

     

  15. What is the trademark class or classification system?

    Before registering a trademark one must first define the goods and/or services the trademark is going to be used for. With every trademark application, a clear description of goods and/or services must be provided. 

    For example.-

    Trademark Description of goods/services
     APPLE  Computer hardware
     AMAZON  Electronic retailing services

     

    Different goods or services are grouped into different classes, therefore, depending on what goods or services one is applying for, registration should be sought in one or more classes.  

    The Nice classification (NCL) is the standard classification system that is used by the overwhelming majority of countries around the world. The classification, established by the Nice Agreement (1957), establishes 45 classes. Classes 1 through 34 are for goods and classes 35 through 45 are for services. 

    For example.-

    Trademark Description of goods/services Class
     APPLE  Computer hardware 09
     AMAZON  Electronic retailing services 35

     

    Every single good or service imaginable can be classified into one of the 45 classes, whether because it is expressly included in the predefined list of goods/services of the class, or because the nature of the goods/services corresponds to the general description of the class. 

    Click here to search the Nice Classification to determine in what class a specific good/service corresponds to.

     

  16. What kinds of trademarks can be registered?

    A trademark can consist of virtually anything as long as it may be represented graphically. However, certain jurisdictions (countries) limit what graphic representations may be allowed for trademark registration.

    The most common trademarks may be classified as:  

    - Word marks;

    - Figurative marks; and,

    - Mixed or combined marks.

    Non-conventional trademarks include, but are not limited to:

    - Smell, scent or olfactory trademarks;

    - Three-dimensional or shape trademarks; 

    - Sound or aural trademarks; and

    - Movement or motion trademarks.

     

Choosing a Trademark

  1. Can I apply for a trademark that consists of the name of the goods or services for which I am applying?

    One must be able to differentiate a trademark’s goods or services from those of other traders that may offer identical goods or services.

    If a trademark consists solely of the name of a product or service, or a name with which a product or service is referred to in the market place, it is highly probable that the registration office of the country for which protection is being sought will refuse such a trademark.

    However, depending on local laws or practice, trademarks may include the name of a product or service as long as it is accompanied by other predominant central elements. These should not contain a name by which the products or services are known, should not describe the products or services, and one should be able to differentiate the brand when compared with other previously filed or registered trademarks. 

    In some jurisdictions the elements of a trademark that consist of the name of a product or service (or other common words) will have to be disclaimed.

     

  2. Can I apply for a trademark that has already been registered in the same country by a third party, but is for different products or services (classes) from those that I am interested in registering for?

    Trademark registration is granted in respect to determined goods and/or services (classes). Therefore, although an identical trademark may be registered, if one were to apply for an identical trademark in a different class, registration could be granted. 

    However, registration offices and examiners will analyze if such trademarks may confuse consumers into believing that they both come from the same trade source. Part of this analysis consists of checking if the goods and/or services of both trademarks are related or offered in the marketplace by similar ways or placement. If they were to consider that consumers would believe that both trademarks come from an identical source, the application would be initially refused. Furthermore, the owner of the previously registered trademark, although for different classes, may present an opposition to registration based on the possible confusion that may be caused to consumers or the possible association that consumers may believe to exist between the owners of both trademarks. 

    In the case of well-known trademarks, protection usually transcends class protection. Although Coca-Cola does not have their trademark registered for women’s makeup, if someone other than The Coca-Cola Company were to file a trademark for makeup, the application would almost certainly be refused.  

     

  3. Can I register a trademark that has already been registered in another country by someone else?

    Trademark registration is territorial. Therefore, if a trademark has been registered in one country, protection is only granted in regard to this country. Anybody may apply for an identical trademark in another jurisdiction. For this reason it is very important that brand owners register their trademarks in all the countries and territories in which they believe they may eventually be used.

    Nevertheless, if you are an owner of a trademark and someone has hijacked your trademark by applying for it in another territory, depending on the country, there are actions you may take to either oppose the registration of the trademark if it has not yet been granted or present cancelation actions for the trademark to be cancelled.

    Registering a trademark in over 200 countries is extremely expensive. It is recommended that a Watch Service be ordered to monitor whether third parties are registering your trademarks in other countries. This service will allow trademark owners to be notified if identical or significantly similar trademarks are being applied for in other countries or regions of interest. 

     

    If you would like to order a trademark Watch Service, please click here.

     

  4. Can I register my domain name as a trademark?

    When determining if a domain name can be registered as a trademark, the TOP LEVEL DOMAIN element (gTLDs or ccTLDs) such as .com, .net, .eu, .us, should not be taken into consideration. Therefore, it will depend entirely on the words that make up the domain name of interest. If the words that make up the domain name do not fall into grounds of non-registrability, then registration is possible. 

    Although practice may vary in different countries, if a domain name is registered within a trademark, the TOP LEVEL DOMAIN element (e.g. .com) must usually be disclaimed, and protection over this particular element is renounced. 

    Example of the disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ".COM"

     

  5. Can I register my name as a trademark?

    If your name identifies your products or business then you can and should register it as a trademark. Nevertheless, if your name is identical to a famous name, or one that may lead consumers to believe that the products or services are associated with someone else, registration may be refused. Depending on the country of interest in which you wish to register, limitation or requirements may vary. 

     

  6. Can I register the name of a town, city, state, region or country as a trademark?

    With the exception of “Geographical Indications” and “Denomination of Origin”, trademarks that include known geographical names will likely be refused in most jurisdictions. This is due to the fact that:

    1. Consumers may be led to believe that the goods and/or services sold under the trademark are of the geographical origin expressed in the trademark. This may therefore be misleading or indicative, depending on whether or not they in fact do come from the place expressed. 

    2. The expression may be relevant in the consumers’ appraisal of quality of the products and/or services sold under the trademark, therefore being considered as a descriptive trademark. 

    Nevertheless, if the geographical name is accompanied by other predominant elements, the trademark may be granted registration in determined situations. 

     

  7. Can my trademark contain words that describe in some way the goods or services for which I am applying?

    If a trademark merely describes goods or services, consumers will not be able to differentiate the trademark from those used by other traders for similar goods or services in the marketplace. Therefore, registration will probably be denied.  

     

    For example.-

    Trademark Description of goods/services
     EXTRA FAST  Computer hardware – Central processing unit (CPU)

     

    Registration would most probably be refused, as this would only allow one trader to refer to his products as EXTRA FAST. Other traders should be able to use such descriptive terms when advertising or offering similar products.  

    However, depending on local laws and practice, trademarks may include descriptive elements as long as they are accompanied by other predominant central elements that may grant it distinctiveness. 

    Furthermore, if your trademark consists of a descriptive element and you have been using it for a considerable period of time, your brand may have acquired the necessary distinctiveness through real and effective use.

    Before filing a trademark, it is recommended to seek an expert’s recommendation on whether or not a trademark may in fact be registered. 

     

    If you would like to order a trademark assessment report, please click here.

     

     

  8. Can the name of a musical group or band be registered as a trademark?

    Yes.

    Music groups may apply to register their names as a trademark (service mark). As they provide live musical performances they would qualify for registration under class 41.  

    If the music group is successful, registering their name as a trademark would be advisable for different products such as audio records or digital music under class 09, posters under class 16 and T-shirts under class 25.

     

  9. Common mistakes made when choosing a trademark

    When choosing a trademark keep in mind that the purpose of a trademark is to allow traders to differentiate themselves from other traders that sell or offer similar goods or services in the marketplace. 

    Common mistakes when choosing a trademark are:

    1. Choosing a trademark that consists of generic terms or elements in regards to the goods or services for which it seeks registration. (e.g. SCREENS for televisions or SMOOTH for skin care products).

    A trademark will give its owner the exclusive right to use the words or elements of the trademark in relation to the products or services in the jurisdiction in which it has registered. Therefore, if a trademark consists of elements that are commonly used for such products or services, a trader should not be granted the exclusive right to use it. Although trademarks that consist of generic elements may be registered in determined situations, preventing other traders from using such elements often proves difficult due to the weakness of the mark. 

    2. Choosing a trademark that is descriptive of the goods or services for which it seeks registration (e.g QUICK AND FAST for computer processors or GREEN MARKET for the selling of vegetables)

    When creating a trademark is it very tempting to include elements in the name that may indicate the quality, characteristic, function or purpose of the products or services. A trademark that includes such elements may be refused for registration. 

    3. Choosing a trademark that includes known geographical names is also a common mistake. The inclusion of these elements may give rise to objections or office actions from the trademark office.

    Depending on the actual geographical name, the trademark may be refused due to the qualities or characteristics that consumers may associate with the product due to the geographical name included in the trademark.

    For example: FRENCH PURITY for perfumes. Consumers may be led to believe that such perfume is fabricated in France, and being that this is a country known, among other things, for perfumes, the trademark refers to the quality of the products.  

    4. Choosing a trademark that is identical or confusingly similar to another trademark for similar goods or services. In these cases, as expressed before, being that a trademark’s main goal is to allow consumers in the marketplace to clearly differentiate one from another, trademarks that are identical or confusingly similar to others will surely face objections or office actions from the registration office and may also face third party oppositions. 

     

  10. Does registering a business, company or domain name give me proprietary rights over an identical or similar trademark?

    No. 

    A Business Name is the legal name under which a company operates. It does not grant any rights over a trademark. If you believe your company name is a principal factor with which consumers associate your goods or services in the marketplace, you should register it as a trademark. Only by registering a trademark will you be able to prevent third parties from using your company’s name in relation to similar goods or services. 

    A Domain Name is the address with which internet users are able to arrive to a specific web page and its content. A domain name does not grant any proprietary rights over a trademark. Nevertheless, a registered trademark may give you rights to use or eventually recover similar or identical domain names for certain extensions (.com, .net, .info, etc.).

    Contact us if you are interested in our Domain Name Dispute services

     

  11. Well-known trademarks

    Well-known trademarks are those that are widely recognized by the public, not only locally or in a determined country or territory, but on a global or regional scale.

    The trademark system (in first-to-file jurisdictions) is built on two general rules, which are:

    1. First come, first serve. When applying for a trademark, he who applied first has rights over the trademark. Only owners of previously registered or filed trademarks can oppose registration of the new mark.

    2. Protection is granted only in the countries or territories where the trademark is actually registered.

    In the case of well-known trademarks, these principles vary. In practically all jurisdictions, the fact that a well-known trademark is not registered locally does not mean that protection and proprietary rights are not recognized. Such protection is recognized for these kinds of marks under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

    Therefore, trademarks that are well-known may be protected in some circumstances without registration. If an identical or similar trademark is being registered that may lead consumers into connecting the goods and services with a well-know trademark, therefore damaging or affecting the well-known trademark, the registration of the trademark may be opposed or canceled.

    Nevertheless, well-known trademarks should be registered in all countries or territories of interest. Without registration, full protection is not ensured. 

     

  12. What kind of trademarks cannot be protected (prohibited signs)?

    What may be considered as a prohibited sign vary between jurisdictions.

    There are a number of International Treaties that mention protected emblems and symbols that may not be included in a trademark, obligating the local trademark office in countries that are a party to such treaties to refuse trademark applications that include them. Furthermore, in certain cases where a trademark may have been registered including a protected symbol, the trademark may be invalidated. 

    The Paris Convention for the Protection of Industrial Property first signed in March 20 1883, along with its numerous revisions, states the following elements as prohibited signs:

    - Armorial Bearings

    - Flags 

    - State Emblems

    - Official Signs

    - Hallmarks

    - Abbreviations and Names of International Intergovernmental Organizations

     

    The Nairobi Treaty on the Protection of the Olympic Symbol adopted on September 26, 1981, states the following elements as prohibited signs:

    - Olympic symbol. The treaty defines the Olympic symbol as that consisting of five interlaced rings: blue, yellow, black, green and red, arranged in that order from left to right. It consists of the Olympic rings alone, whether delineated in a single color or in different colors.

     

    Protocol III of the Geneva Convention of August 12, 1949, relating to the Adoption of an Additional Distinctive Emblem, of December 8, 2005, states the following elements as prohibited signs:

    - Red Cross

    - Red Emblem

    - Red Lion and Sun

    - Red Crystal (for certain uses)

     

    Please bear in mind that the above-mentioned prohibitions may vary in the severity of their interpretation between jurisdictions. Furthermore, local legislation may include other signs to be considered as prohibited. 

    For these reasons before proceeding with the filing of your trademark registration application, we strongly recommend that a trademark registrability report be done. This will allow you to have an idea of the probabilities of registration, potentially saving you time and money. 

     

    If you would like to order a trademark assessment report, please click here.

     

  13. What should I consider when choosing my trademark?

    When a trademark is being reviewed to determine whether or not it is adequate for registration, two main factors are considered. 

    1. Whether the proposed trademark causes conflict with a previously used or registered mark. This analysis is not done in relation to the trademark itself, but rather in comparison with previously registered trademarks. 

    Therefore, when choosing a trademark you should first make sure that the sign you intend to use is unlikely to be confused with another trademark that has been previously registered for identical or similar goods or services to those of the proposed trademark.

    2. Whether the trademark’s configuration or elements may be considered as prohibited signs or if the name of the trademark consists of words common to other traders that offer similar goods or services. This analysis is not done in comparison to other trademarks, but rather in regards to the words or signs that make up the proposed trademark and whether or not it is capable of differentiating the products or services for which it would be registered.

    Before proceeding with the filing of your trademark registration application, we strongly recommend that a trademark assessment report be done. This will allow you to have an idea of the probabilities of registration, potentially saving you time and money. 

    If you would like to order a trademark assessment report, please click here.

     

Deciding Whether to Register a Trademark

  1. Do I have to register my trademark?

    Trademarks are not required by law and registration is not obligatory, the exception being for pharmaceutical products in certain countries. Nevertheless, in the great majority of jurisdictions, if you do not register your trademark, third parties may eventually effectively register it and prevent you from continuing to use it. 

    It is highly recommended that you register your trademark in order to have the right to use all legal remedies to prevent and stop third parties from using your trademark. Down the road, it is always cheaper to register your trademark from the start. In many cases, companies have had to invest in rebranding (new packaging, lost advertising, loss of market placing) when they finally become aware of the existence of similar trademarks, or of third parties that have applied or registered for an identical trademark to theirs for similar goods or services.  

     

  2. How long will it take for my trademark to be registered?

    Timeframes vary country by country. A straightforward registration process, this is if a trademark application does not receive any objections/offices actions/examiners report or third party oppositions, can take as little as two weeks in Lebanon or as long as 3 years in Brazil.

    For information regarding expected timeframes in specific countries please visit our country pages here.

     

  3. I already have my trademark registered in one country; do I have to register it in others?

    Trademarks have territorial validity only in respect to the country or territory in which they are registered. If you register a trademark in Japan, the trademark is only protected and recognized in Japan. If a trademark is registered in South Africa, the registration is only effective in South Africa. 

    You must register a trademark in every country in which you wish the trademark to be protected. Registration should be done not only in the countries that are your current market of interest, but also in the countries that you believe may be potentially important for your business.

    Nevertheless, through certain regional trademark offices a single registration will grant protection in multiple countries or territories. These offices are:

    BENELUX – Registration through this office grants protection in Belgium, The Netherlands and Luxembourg. 

    EUIPO/European Union Trademark – Registration through the European Union Intellectual Property Office (EUIPO) grants trademark protection in all 28 member states of the European Union. Therefore, a single registration would grant protection in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. 

    OAPI – Registration through the Organisation Africaine de la Propiete Intellectuelle grants trademark protection in 11 French-speaking African countries, including: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire (Ivory Coast), Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo.

    ARIPO – Registration through the African Regional Intellectual Property Organization grants trademark protection in member states that are party to the Banjul protocol. These are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, Tanzania and Zimbabwe.

  4. Is a trademark the right choice?

    A trademark is the right choice if you wish to protect and have the exclusive right to use a certain word, phrase, symbol, design, sound or combination of these in order to identify certain goods or services that come from a specific trader or source. This allows for consumers and possible clients to be able to differentiate your goods or services from other similar ones offered in the marketplace.

     

  5. May I legally use the ® symbol, if my trademark is not registered?

    No. The ® symbol serves to notify competitors that a trademark is effectively registered and cannot be used if such circumstance is untrue. This means that even an applied for trademark may not use the sign, only those that have the status of “registered”.   

     

  6. May I use the ® symbol, if my trademark is registered in another country?

    The general rule is no. Nevertheless, some countries (e.g. USA) allow the use of the symbol if the trademark has been registered in another country. However, the use of the symbol under these circumstances does not grant the holder the protection and recognition they would be entitled to if the trademark was effectively registered locally.

     

  7. What are the benefits of trademark registration?

    (We mention but a few) 

    A registered trademark grants exclusive nationwide use: Registering a trademark offers you protection and the exclusive right to use the trademark for your chosen products and services in the country or territories in which you have registered. You can take legal action against anyone who uses your brand without your permission, including counterfeiters

    A registered trademark serves as a deterrent against third parties that would otherwise use identical or confusingly similar trademarks for identical or similar goods or services. In most countries the existence of an identical or similar trademark is grounds for the registration office to refuse registration. Furthermore, trademark owners have the right to oppose similar trademarks from being registered.  

    A registered trademark grants one the right to use of the ® Symbol: Upon registration you will be able to use this symbol in order to demonstrate that your trademark has been registered and is enforceable by law, it also serves as notice to competitors that one is serious about protecting ones trademark rights.

    It is illegal and punishable by law to use this symbol if your trademark has not been registered; fines and penalties vary depending on the country. The use of the ® symbol is some countries is also obligatory if a trademark has been registered in order to be able to present legal actions or remedies against a third party for using a trademark without the owner’s consent. 

    A registered trademark is necessary to enlist help from countries’ Customs Service (Customs and Border Patrol): If a trademark has been registered, actions can be taken in order to request local customs services to prevent the entering or exportation of goods that use an identical or confusingly similar trademark.

    Priority for subsequent applications: The first application for a trademark will grant the holder the right to subsequently claim priority when applying for an identical trademark in the vast majority of countries in the world for a period of 6 months. If priority is claimed inside the period of 6 months from the first application, the subsequent applications will be considered as having been presented on the same date as the application in the first country.

     

    For more information regarding Priority please read the answer to the following question:

    What is a Priority Claim in a trademark application?

     

Before Applying For a Trademark

  1. Can I register a trademark for goods or services I do not actually plan to offer?

    In most countries a trademark can be registered for goods and services that have not and may not actually be used in the future. However, if a trademark is not actually used for all or some of the products or services for which it was registered, in most countries after a couple of years (time span varies by country) third parties may be entitled to present a motion to revoke such trademarks for all or some of the goods or services for which it is not effectively being used.

    On the other hand, some countries’ trademark registration offices require that declarations or evidence of real and effective use be presented after some years of registration in order for this status to continue. The countries that require the filing of either declaration or evidence of use are: Haiti, India (suggested), Mozambique, the Philippines, Puerto Rico and the United States of America. Requirements and time frames for this vary by country. 

     

  2. Disclaiming part of a trademark.

    Many trademarks include elements or words that by themselves could not be registered due to being generic, commonly-used words, descriptive, or indicative in relation to the goods or services for which the trademark is being applied. 

    For example, the trademark APPLE COMPUTER registered for computer products. This trademark is made up of two words or elements, APPLE and COMPUTER. The trademark may be eligible for registration when analyzed as a whole; however it would not be logical for the owner of this trademark to be given the exclusive right to use COMPUTER when referring to these products. Therefore, although the owner of the trademark will have the exclusive use of APPLE COMPUTER, he would have to state that No claim is made to the exclusive right to use "computer" apart from the mark as shown. This means that he has the exclusive right to using COMPUTER when accompanied by the word APPLE, but recognizes that no exclusive right is granted in the use of COMPUTER per se. 

    Not all countries allow for a trademark to be filed with a disclaimer. Some offices automatically disclaim certain elements, while others will only allow for a word or elements to be disclaimed once the trademark is initially objected or refused (office action).

    The following countries are but a few that require a disclaimer to be presented when a trademark includes generic commonly-used words: Australia, Belize, Canada, Costa Rica, Kazakhstan, Kuwait, Malaysia, Philippines, South Africa, Tanzania, Thailand, Trinidad and Tobago and the USA.

     

  3. If my trademark includes a logo, should I submit it in color or in black-and-white?

    Whether or not a trademark should be submitted in color will depend on the jurisdiction where you apply for the trademark, and if you wish to claim color. In some countries, by submitting a trademark in color you will be automatically claiming the colors included in the logo, while in others an express declaration of claim over the colors will have to be filed in order do to so. 

    We generally recommended that color not be claimed in a trademark, thus allowing the owner to use the trademark in the future in any combination of colors they see fit. However, if the color or colors included in the trademark are the central, predominant and recognizable feature (more so than the design itself), claiming color may be recommended.

     

    Example of jurisdictions with color claim:

    OAPI (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast (Côte d'Ivoire), Mali, Mauritania, Niger, Senegal and Togo). - In OAPI, when a trademark is filed in color, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

    Canada - When a trademark is filed in color before the Canadian Intellectual Property Office (CIPO), the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

    China - When a trademark is presented in color before the Chinese Intellectual Property Office, the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

    Ecuador - In Ecuador, when a trademark is presented in color, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

    European Union Trademark - When a trademark is filed in color in the European Union through the European Union Intellectual Property Office (EUIPO), the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

    Philippines - When a trademark is filed in color before the Intellectual Property Office of the Philippines, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

    Switzerland - When a trademark is filed in color before the Swiss Federal Institute of Intellectual Property, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

    Taiwan - When a trademark is filed in color before the Intellectual Property Office of Taiwan, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

    Thailand - When a trademark is filed in color before the Intellectual Property Office of Thailand, the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

    Ukraine - When a trademark is filed in color before the Trademark Office of Ukraine, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

    United States - When filing a trademark in color in the United States through the United States Patent and Trademark Office (USPTO), the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

     

  4. Is a Power of Attorney necessary?

    Whether or not a Power of Attorney is necessary will depend on the country. With iGERENT, when a POA document is needed you will receive a template with clear instructions on how it must be filled out along with instructions regarding notarization or legalization requirements, if relevant.

    Please consider the following as examples of some of the different requirements that Powers of Attorney must comply with in different countries in order for a trademark to be filed:

    Australia – No documented Power of Attorney is required for filing a trademark.

    South Korea – A simple scanned copy of a signed Power of Attorney is enough to apply for a trademark. 

    China – A simple scanned copy of a signed Power of Attorney and a scanned copy of the owner’s passport or certificate of incorporation, depending on if the owner is a natural person or a legal entity, is enough to apply for a trademark.

    Russia – An original signed Power of Attorney must be sent by mail to our local agents.

    Costa Rica – An original signed and notarized Power of Attorney must be sent to our local agents.

    United Arab Emirates – An original signed, notarized and legalized Power of Attorney must be sent to our local agents.

    In some cases, if both the country where the trademark is going to be registered and the country of origin of the applicant are members of the Apostille Convention, requirements in regards to notarization or legalization may be reduced.

     

  5. Is your trade mark suitable for registration?

    When choosing a trademark, and certainly before registering it, one should make sure that the trademark is capable of distinguishing one's goods or services from those offered by other traders in the marketplace. Trademarks should not consist uniquely or predominantly of elements that are commonly used in commerce to promote or refer to such goods or services, indicate the quality of the goods and services, or be identical or confusingly similar to other previously applied for trademarks. The best trademarks are usually those that are coined words (made-up words) or those that by themselves have no connection with one’s business, goods or services (e.g. Apple – for computers).

    For more information regarding what you should consider when choosing or creating your trademark, please read the answers to the following questions:

    What kind of trademarks cannot be protected (prohibited signs)?

    What are some of the common mistakes made when choosing a trademark?

     

    Before applying for a trademark we recommend you request one of our trademark assessment reports in order to determine if your trademark complies with local requirements in order to be registered. 

    If you would like to order a trademark assessment report, please click here.

     

  6. Select your goods and services description and classes carefully.

    When applying for a trademark you will have to determine in what class or classes you wish to register and for which specific goods and/or services. To do so, just answer these questions: what goods will you sell or services will you provide? What are you going to promote with your trademark? Answering these questions will determine your goods and services, and with this you will be able to define the classes your trademark will have to be registered for. Use our Nice Classification Tool to determine your class.

    The vast majority of countries use the Nice Classification System, nevertheless, many country offices have their own predefined list of goods and services that usually follows identical or similar criteria to that of the Nice Classification System. Our Trademark Consultants and local attorneys will assist you in defining what description of goods and/or services is most adequate for you. This will allow you to reduce the probabilities of receiving objections/office actions/examiner’s reports due to initial refusals caused by inadequacy of the provided description.

    For more information regarding the Class system and description of goods please read the answer to the following question:

    What is the trademark class or classification system? 

     

  7. What are the requirements for claiming priority?
    1. Priority must be claimed using the first-ever filed trademark.
    2. Priority can only be claimed by the owner of the first filed trademark.
    3. Priority must be claimed at the moment of filing the subsequent applications before the term of 6 months ends, starting from the date that the first trademark was filed.
    4. Priority can be claimed only in regards to the class and goods or services that the first application was filed for.
    5. Priority can be claimed only to file an identical trademark.

    *Depending on the country costs and required documentation may vary. 

     

  8. What information is required to file a trademark application?

    In order to file a trademark the following information is required:

    - The denomination that is to be registered or an image of the trademark if it is to have figurative elements. Some countries require that colored paper copies of the trademark be submitted in the moment of filing.

    - The class number under which the trademark is to be filed.

    - A description of goods or services that correspond to the class or classes under which the trademark is to be filed.

    - The full details of the owner of the trademark: full name, what type of a company it is if the owner is a company and full address. Some countries require a copy of the passport or identification of the owner.

    - The full details of the local agent or attorney who is to represent the owner in trademark-related matters.

    * Power of Attorney (POA) will depend on the country. Some countries do not require documents for Powers of Attorney, but most do. In case a Power of Attorney is needed, it must comply with different requisites depending on the nature of the owner and might need legalization and/or notarization depending on the country. 

     

  9. What is a Priority Claim in a trademark application?

    Priority is a right given and recognized by the great majority of countries around the world to the applicant of a trademark that has been filed for the very first time. When filing a specific trademark for the first time, that is, not having applied for the same trademark in any other country or territory before, the owner is granted a 6-month period from the date of first filing in order to be able to file in any other country as if the trademark would have been filed on the date of the first application (if priority is claimed).

    For example:

    If you were to file a trademark for the first time in the United Kingdom on the 1st of January of X year, and then applied for a trademark 4 ½ months later in Germany you would have two options:

    Option 1 - NOT claiming priority: The application for the German trademark would then be considered as having been done on the actual date of filing (15th of May of X year).

    Option 2 - (YES) Claiming Priority: The application of the German trademark would be considered as having been done on the same date as that of the trademark filed in the United Kingdom. Therefore, although the trademark was actually filed on the 15th of May of X year, it would actually be considered as if it would have been filed 4 ½ months before on the same date as the trademark in the United Kingdom, that is, the 1st of January of X year.

     

     

  10. Why should I consider claiming priority when applying for a trademark in multiple countries?

    Most countries have a first-come, first-serve system of registration. That means that the person or company who applies first has rights to a trademark. Even in countries that have a first-to-use principle, the existence of a previously filed trademark would require the late applicant to demonstrate his rights over the trademark, having to incur heavy legal cost to do so.

    Therefore, if you believe a third party or trademark squatter is trying to register a trademark that you are interested in and which you have already filed in another country, even though you may be late to apply or register in one or more countries, by claiming priority your trademark may be considered as having been presented first. Remember, similar or identical trademarks that have been filed before will be grounds for rejection by the trademark office.

     

After a Trademark Application Has Been Filed

  1. Can I transfer or assign the ownership of my trademark application to someone else?

    A registered trademark may be transferred or assigned to another owner at any time. Requirements to do so may vary in each jurisdiction; usually, a deed of assignment (transfer contract) which identifies the trademark (application number, registration number, class and description of products and/or services) and is signed by both parties (assignor and assignee) is sufficient. Nevertheless, depending on the jurisdiction, a new Power of Attorney may be required, as well as notarization or legalization of the assignment documents.

    When a trademark has been filed, and not yet registered, transfer of ownership may also be done. However, there are some jurisdictions where the trademark will have to be effectively registered before ownership may be transferred. 

    Examples of countries where filed trademarks that are yet to be registered cannot be assigned are: Aruba, Bahamas, Bahrein, Curacao, Cyprus, Fiji, Indonesia, Jordan, Kenya, Kuwait, Lebanon, Monaco, Morocco, Saudi Arabia and Uganda.

     

  2. My trademark application is filed; does this mean my trademark is registered?

    No. Filing a trademark just means that a request for registration has been presented to the local trademark office. The trademark office will now examine your application in order to determine if it complies with all necessary requirements in order to be granted registration. Furthermore, the trademark will have to be published, after which there will be a period of time established so that third parties may present oppositions to the registration of the trademark (the length of this period varies in each country). Only once the trademark has been examined and accepted by the local trademark office and no third party opposition has been received, will the trademark be granted the legal status of registered. In certain jurisdictions a final payment of fees will have to be done when the trademark is accepted in order for registration to be granted.

     

  3. My trademark application was published, what does this mean?

    Trademarks are published in order to give public notice that a trademark is seeking registration. This is done in order to allow third parties that may consider that the registration of a trademark affects their rights to present opposition actions. Therefore, once the trademark is published there will be a period of time in order for third parties to present actions aiming to prevent the registration of your trademark.

     

    The period of time for oppositions to be presented varies in each jurisdiction.

     

    Example of different opposition periods

     

    Country Opposition period from date of publication
     U.S.A.  30 days
     Fiji  2 months
     Brazil  60 days
     China  3 months
     Saudi Arabia   90 days

     

    Some countries use days and others use months to indicate the length of the opposition period.

     

  4. Trademark license agreement – Licensing a trademark

    A trademark license agreement is a contract in which the owner of a trademark grants another the right, which may or may not be exclusive, to use the trademark in commerce in a determined territory and for a determined period of time for all or some of the goods and/or services for which the mark has been registered. Therefore, the trademark owner does not lose ownership over the trademark and the authorized third parties will be able to legally use a trademark, usually by paying a fee or royalty. 

    It is highly recommended that before entering into such an agreement, an expert attorney be consulted in order to ensure that the terms and conditions of the licensing agreement do not affect the rights of the trademark owner, for example, ensuring that it allows the owner to exercise quality control of the goods and/or services that the licensee is offering under the trademark in order to prevent the reputation and value of a trademark from deteriorating in the marketplace.

    In many jurisdictions it is recommended, or even necessary, that a licensing agreement be registered in the trademark office of the country where the licensing agreement is to have effect.

    In most countries licensing agreements can be signed before or after a trademark has been granted registration; nevertheless, in the following jurisdictions a license agreement will not be effective if the trademark has only been filed and not yet granted registration: Algeria, Aruba, Bahamas, Bahrain, Barbados, Belarus, Bolivia, Botswana, Costa Rica, Cuba, Curacao, Cyprus, the Czech Republic, El Salvador, Estonia, Guatemala, Indonesia, Israel, Jamaica, Japan, Jordan, Kazakhstan, Kenya, Kuwait, Latvia, Lebanon, Lithuania, Monaco, Morocco, Oman, Poland, Qatar, Romania, Russia, Saudi Arabia, Slovakia, South Korea, Taiwan, Uganda, Ukraine, U.A.E., Venezuela, and Vietnam.

     

  5. What can I do if my trademark application has received an objection, office action, examiner’s report or initial refusal?

    Once the refusal is received, depending on the basis on which it has been refused, the applicant may be able to overturn the examiner’s initial findings by submitting arguments of why the trademark should be accepted, or amend and/or clarify any points of the application that have caused the examiner’s initial findings.

    Time periods to respond vary between jurisdictions and if no response in presented, the trademark will be declared abandoned, lapsed or refused.

     

  6. What can I do if my trademark application has received an opposition from a third party?

    Whether or not an opposition may be overcome will depend on the merits of each case. Opposition proceedings in most cases end up being more expensive than the price of an application. Knowing this, many times the opposing party presents such actions in order to deter holders from defending their trademarks. In some jurisdictions not defending a trademark from an opposition will automatically cause it to be refused. Nevertheless, if a trademark is a pivotal element of a business, defending a filed trademark from an opposition may be worth the time and money.

    Although the arguments that may be used to defend one's trademark application will depend on each individual circumstance, they are usually related to why the filed trademark does not cause confusion in the market place with that of the opposing parties, or why the applicant has legitimate rights over the trademark (e.g. the trademark has been effectively used for a considerable period of time and has gained recognition in the market place.).

     

  7. What is a Declaration of Use?

    A declaration of use of a trademark is a statement from the trademark owner indicating on what date the trademark was first used, or if the trademark is still being used in connection with the goods and/or services for which it was registered, all within the jurisdiction where the declaration is being required. The declaration must be presented in the form of an affidavit or signed with the understanding that willful false statements are punishable by local law.

     

  8. What is a Specimen of Use?

    A specimen of use of a trademark is any supporting evidence such as documents, photographs, brochures, newspaper articles, product packaging, etc. that serves as proof that a trademark is being used in commerce for determined products and/or services in the jurisdiction where proof of use is required.

     

  9. What is a third party opposition to a trademark?

    A trademark opposition is an action brought on by any third party who looks to prevent a filed trademark from being registered. Third parties may wish to file for an opposition when a trademark has been published that they feel may harm their business or legitimate interest. The great majority of jurisdictions have a determined time-frame or window of opportunity during a trademark’s registration process for oppositions to be brought forth. 

    Reasons that may compel a third party to oppose a trademark could be due to any of the following factors:

    - The third party is the owner of identical or similar trademarks.

    - The third party believes the published trademark may be confused in the marketplace with theirs.

    - The third party thinks the trademark is being registered in bad faith.

    - The third party believes the trademark does not comply with the necessary requirements to be granted protection.

    The period of time for oppositions to be presented varies in each jurisdiction. 

     

    Examples of different opposition periods

    Country

    Opposition period from date of publication

     U.S.A.  30 days
     Fiji  2 months
     Brazil  60 days
     China  3 months
     Saudi Arabia  90 days

     

    In a few jurisdictions trademarks may only be opposed after registration is granted (cancellation actions) - such is the case in Switzerland, Benelux (Belgium, The Netherlands and Luxembourg), Lebanon and Mexico.

     

  10. What is an objection, office action, examiner’s report or initial refusal of a trademark?

    When a trademark is filed, the registration office will review the application to make sure that the trademark complies with all necessary requirements. If one or more requirements are not met, the trademark will be refused. This initial refusal is given different names, depending on the jurisdiction. Common names given are objection, office action, examiner’s report or initial refusal of a trademark.

    Reason for refusals may sometimes be based on formal matters, such as an unclear description of goods and/or services, and can be easily overturned. However, trademarks may also be initially refused if the examiner finds previously filed or registered trademarks to be identical or confusingly similar, or if the trademark does not comply with the requirements of distinctiveness (generic, descriptive, indicative, etc.).

     

  11. When I apply for a trademark, what does the registration office examine?

    The office will examine if the trademark and application complies with all formal and substantive requirements. 

    Example of such requirements

    Formal Requirements check:

    - That an actual trademark is filed with the application and that its representation is adequate.

    - That in the application the class and description of goods and/or services are stated and correct. 

    - Full owner details are filed with the application.

    - When applicable, that the corresponding Power of Attorney with its corresponding notarization and legalization or apostille is filed.

    - In case the applicant wishes to claim priority, supporting documents must be presented at the moment of filing if this is required by the local trademark office.

    Substantive requirements:

    - In the vast majority of jurisdictions examiners will check if identical or similar trademarks have previously been filed. 

    - Trademark distinctiveness. This means that the trademark is capable of differentiating one owner’s or trader’s goods and/or services from those of others. Therefore, generic terms, descriptive terms, indicative terms, deceptive marks, geographical marks, etc. should be refused. Analysis of trademarks will usually be done over the totality of the mark and not in regard to a single element. 

    Please keep in mind that each local office has different criteria regarding what constitutes an unregistrable trademark. Trademark examination is subjective.    

     

Registered Trademarks - Managing and Protecting

  1. Can a registered trademark be canceled, invalidated, annulled, or revoked?

    Yes. Legal proceedings and actions in order to have a trademark’s registered status overturned (cancelled) are possible in the vast majority of jurisdictions. The grounds on which such actions may be based may vary from jurisdiction to jurisdiction. However, whatever the basis for cancellation, the existence of the trademark must in some way affect the legitimate rights of the party who is presenting the cancellation action.

    Different grounds for which a cancellation action may be evoked are:

    - If a registered trademark may cause confusion with another previously registered trademark.

    - If the trademark is or has become generic since its registration. This is the case with trademarks that no longer serve to differentiate a trader’s or provider’s goods or services from others, and it is now the widely used expression in the market place to refer to a determined product or service, regardless of its source.

    - If the trademark was registered in bad faith.

    - If the registered trademark is a well-known or famous trademark, and he who has registered it is not the real owner or does not have the real owner’s authorization.

    - If the trademark has not been used in a real and effective way for a determined number or years. 

    * What grounds are acceptable, if any, will depend on the jurisdiction of interest. 

     

  2. Do I have to register a trademark license agreement?

    Depending on the jurisdictions, a license agreement either can, cannot or must be registered with the local trademark authorities.

    If a license agreement is to be registered, a copy of the license agreement will have to be presented in the trademark office, together with the agent or attorney’s Power of Attorney. Depending on the jurisdiction, the contract may have to be notarized and legalized; translation of the document to the local language may also have to be provided.

     

  3. For how long is a trademark registered or valid?

    Trademarks are registered for periods of 10 years in the large majority of jurisdictions and may be renewed consecutively for unlimited periods of ten years (as a general rule). However, a few jurisdictions have different initial registration periods, meaning the first or consecutive registration periods do not follow the general 10-year rule.

     

    Examples of different initial registration periods:

     

    Country Initial Registration Period
     Cyprus  7 years
     Macau  7 years
     Malawi  7 years
     Nigeria  7 years
     Uganda  7 years
     The Bahamas  14 years
     Fiji  14 years
     Canada  15 years
     Lebanon  15 years

     

     

  4. From what date is my trademark protected when registered?

    Trademarks are granted protection once they have been effectively registered. However, the date of registration may in some cases retroactively be considered as that of the day of filing or application.

    This is important due to the fact that depending on the jurisdiction, the deadline to renew a trademark may be calculated based on the day of registration or the day of application, dates that sometimes have years of difference.

     

  5. How can I change my representative, agent or attorney in a trademark matter?

    In countries where physical copies of Power of Attorney documents do not have to be presented, changing a trademark’s representative is fairly easy and will probably not require documentation. However, in jurisdictions where a Power of Attorney document had to be presented in order for a trademark to be filed, a new Power of Attorney that complies with the same formalities as the one given to the previous representative or agent will have to be presented. Furthermore, in some jurisdictions, when changing representatives, not only will a new POA be required, but also a signed letter revoking the previous agent’s authority.

     

  6. How can I get another copy of my certificate of registration?

    If you require an original copy of your certificate of registration, you may acquire an original or legalized copy directly through a country’s registration office. The costs of copies of certificates vary significantly from country to country. In countries where the certificates are digital, free copies may be downloaded. Such is the case in the United States and in Switzerland. However, many times, digital copies will not be sufficient in order to be presented in legal procedures in other countries. In these cases, the copy of the certificate will have to undergo legalization procedures.

     

  7. How can I legally use another person's trademark?

    By entering into a license agreement with the registered owner of a trademark, one may acquire the legal right to use another person’s registered trademark in a determined territory in connection to some or all of the goods and/or services associated with the trademark.

     

  8. How can I monitor if others are applying for similar or identical trademarks that may affect my rights or interests?

    Ordering a trademark watch service is the only way to monitor and be alerted if similar or identical trademarks that may conflict with yours are being filed. Trademark watch services will allow you to be notified when possible conflicting trademarks are being published under your classes of interest during the opposition period. This will allow you to know of these trademarks and determine if opposition actions should be presented. 

    Trademark watch services are subscribed on a yearly basis and may be for a determined jurisdiction, country, region, or worldwide.

     

     

  9. How can I obtain or register a security interest in a trademark?

    If the legislation of a country or jurisdiction allows trademarks to be the object of a security interest, then in order to ensure the effectiveness of the contract or document which establishes the security interest, it may need to be registered with the trademark registration office and/or other public institutions.

    Examples of different ways of perfecting security interests in different countries:

    Canada - Registration of the security interest should be done through two institutions. First, and necessarily, under the Personal Property Security Legislation (PPSL) of the province where the debtor resides or its business offices are located. It is also advisable that the security interest be registered through the Canadian Intellectual Property Office (CIPO) to serve as notice to other creditors. 

    United Kingdom - Recordal for establishing a security interest for a trademark is done directly through the Intellectual Property Office of the United Kingdom.

    U.S.A. - A “UCC-1” financing statement will have to be filed stating interest in the personal property (trademark) of the debtor; this is done through the corresponding State office. It is also advised that the security interest be filed through the United States Patent and Trademark Office (USPTO) in order to serve as notice to interested third parties in the trademark.  

     

  10. How can I prevent future conflicts with a similar trademark?

    If you believe that there is a similar trademark which may conflict with yours and that its existence may constitute an obstacle to the registration of your trademark, a coexistence agreement may be negotiated between both parties. 

    A coexistence agreement can be beneficial for the following reasons:

    - It can prevent an examiner’s initial refusal based on the existence of the trademark with whose owner a coexistence agreement has been reached.

    - It can prevent the success of opposition actions between the parties as long as both comply with the negotiated agreement.

    - It can prevent possible law suits from being presented based on trademark infringement. 

     

    Please bear in mind that not all coexistence agreements will be valid or considered by trademark offices or authorities. If it is believed that the existence of both trademarks is to confuse consumers, or be contrary to public interest, the coexistence agreements may be ignored by trademark offices. Coexistence agreements may not be used to control certain sectors of markets, promote actions of unfair competition or create monopolies.

     

  11. How can I record a change of name or address of a trademark owner?

    In many countries the registered agent or attorney who has Power of Attorney in regard to the trademark will be able to change details of the owner (not change the owner) such as name or address. However, supporting documents may be required by local authorities in certain jurisdictions.

     

  12. How can I record an assignment or change of ownership of a trademark?

    In order for a change of ownership to be recorded through a local registration office, a copy of the transfer document will have to be presented, together with a Power of Attorney when necessary. Depending on the jurisdiction, the transfer document may have to be notarized and/or legalized. A translation of the transfer document may also have to be provided.

     

  13. How can I stop someone else from registering my trademark?

    Ideally, one should have their trademark registered in every country or market that may be of interest in order to keep others from registering the same trademark. However, this of course may be very expensive and in most cases impractical. The steps that may be taken to prevent third parties from effectively registering a trademark that is identical, or deceptively similar, will depend on the grounds of opposition or cancellation that are recognized by local law or practice. Whatever the case, in order to prevent or react against a third party’s registration, one has to know of the existence of the conflicting trademark. For this reason it is recommended that every trademark owner order a watch service. A trademark watch service will allow trademark owners to be duly notified when an identical or similar trademark to theirs is being applied for and published for identical or similar goods and/or services, therefore allowing owners to take the necessary steps in order to prevent these trademarks from being registered.  Watch services may be ordered either for a determined country, jurisdiction, region, or even worldwide. 

    Usually, trademark applications can be opposed before they are granted registration based on either the likelihood of confusion that it may cause with one's trademark (if it has been registered or used in said country), or argue that the trademark is being registered in bad faith and that he who is applying for it is not the real owner, or that he who feels affected by the registration has greater rights over the trademark.

    Real ownership or prior uses of a trademark are considerable arguments in jurisdictions considered to be “First to Use”. These are jurisdictions which recognize that trademark rights are not conferred only by registering, but by actual use in the local market.  Example of “First to Use” jurisdictions are: Aruba, Australia, Brunei, Canada, Costa Rica, Cyprus, Denmark, Fiji, Hong Kong, Iceland, India, Ireland, Israel, Italy, Jamaica, Kenya, Latvia, Lebanon, Malawi, Malta, New Zealand, Panama, Papua New Guinea, Puerto Rico, Samoa, Saudi Arabia, Singapore, South Africa, Swaziland, Trinidad and Tobago, Turkey, U.A.E., United States, Uruguay, Yemen and Zimbabwe.

    On the other hand, in “First to File” jurisdictions, trademark rights are only conferred by registration. Opposition actions in most cases can still be presented even though the interested party does not have a registered trademark in said country, but will probably have to be based on other grounds other than similarity or identity, such as bad faith or fraud. Example of “First to File” jurisdictions are:   Algeria, Anguilla, Argentina, Austria, Bahamas, Bahrain, Barbados, Belarus, Belize, Benelux, Bolivia, Botswana, Brazil, Chile, China, Colombia, Croatia, Cuba, Curacao, Czech Republic, Dominican Republic, Ecuador, El Salvador, Estonia, European Union, Finland, France, Germany, Greece, Guatemala, Hungary, Indonesia, Iran, Japan, Jordan, Kazakhstan, Kosovo, Kuwait, Kyrgyzstan, Lithuania, Mexico, Moldova, Monaco, Montenegro, Morocco, Nicaragua, Nigeria, Norway, Oman, Pakistan, Peru, Philippines, Poland, Qatar, Romania, Russia, Serbia, Slovakia, Slovenia, South Korea, Spain, Sudan, Syria, Taiwan, Thailand, Uganda, Ukraine, United Kingdom, Venezuela, Vietnam and Zambia.

    Even when a trademark has been registered in both “first to use” and “first to file” jurisdictions, cancellation actions may be presented after a trademark has been registered. The basis on which oppositions will have to be presented vary country by country, but possible deception that may be caused to consumers or bad faith in registration are for the most part accepted.  

     

  14. How can I transfer or assign the ownership of my trademark to someone else?

    A registered trademark may be transferred or assigned to another at any time. Requirements to do so may vary in each jurisdiction and may include the following: a deed of assignment (transfer contract) signed by both parties (assignor and assignee) and the identification of the trademark (application number, registration number, class and description of products and/or services). Depending on the jurisdiction, new Powers of Attorney may also be required, as well as the notarization or legalization of the assignment documents.

     

  15. How can I use my trademark?

    You can use your trademark in connection with the goods and/or services for which it has been registered. The trademark may be included on the actual product, on packaging, flyers, posters, webpages, or on any other material that may serve to advertise or offer the goods and/or services for which the trademark has been registered. 

    It is recommended that when using a trademark in text, the representation of said trademark be in capital letters, bold font or in between quotation marks in order to allow clear identification. If the trademark has been registered in a country where the trademark will be used, the registration sign ® should accompany its representation.

    Although there may be some leniency in the use of the trademark for goods and/or services that are closely connected with those for which it has been registered, be aware that identical or similar trademarks may be registered for different classes, and therefore, if one uses a trademark in connection with goods or services that are not registered, it may eventually conflict with other trademark holders´ rights and therefore constitute an act of trademark infringement.

    If you have registered your trademark for determined goods and/or services, and have since then expanded your business to include other goods and/or services, it is HIGHLY RECOMMENDED that you register a new (identical) trademark that includes those goods and/or services. This will not only allow you to safely make use of it, but also to prevent others from doing so.

     

  16. How do I renew my trademark?

    One may renew a trademark be paying renewal fees and, in countries where a Power of Attorney is necessary, new documents will have to be provided. In most countries, if a different agent than the one who originally registered the trademark is assigned by the owner to renew it, then a new Power of Attorney will be required. 

    In the majority of countries, the fees for renewal may be paid a few months prior to the date of renewal. If the renewal fees are not paid by the expiry date, the trademark will lapse. However, many jurisdictions allow for a trademark to be renewed after the expiration date by paying additional late fees; these grace periods for the most part are of no more than a couple of months. 

    If the trademark definitely expires, the only way to ensure trademark protection will be to register it again. However, this will be considered as a new independent registration, giving third parties the right to file for an identical trademark (once the trademark expires) or to oppose any new registration.

     

  17. Someone is using my trademark, what can I do?

    Assuming you are the holder of a trademark (in some jurisdictions only holders with registered trademarks have recognized rights), it should first be determined if the use of the other party’s trademark may produce confusion among consumers in the marketplace. To do so, two criteria must be met:

    1. The trademarks have to be either identical or confusingly similar. This is determined by comparing the trademarks' sight, sound and meaning. If in one of these categories there is considerable similarity the first criteria would be met.
    2. It must then be determined if the conflicting trademarks are being used in connection with either identical or related products or services, or travel in similar channels of trade, and therefore lead consumers to believe that the products or services offered by both parties come from the same trader, origin, or source.

    If both criteria are met, the other party will be committing what could be considered as trademark infringement. In these cases it is recommended that a Cease-and-Desist Letter be sent by an attorney to the person/entity that is using the conflicting trademark. If use of the conflicting trademark does not stop by the date expressed in the letter, a lawsuit should then be presented.

    The purpose of trademark infringement lawsuits is to force the infringer to cease all use of the conflicting trademark and may give the affected party the right to seek compensation for the damages that the use of the trademark has caused. Depending on the country, trademark infringement may not only be basis for civil actions, but penal actions as well.

     

  18. Use the ® symbol with your registered trademark.

    ® is the universally recognized symbol that serves to identify that a trademark is registered. This symbol should only be included with a trademark when used in jurisdictions or territories in which the trademark is effectively registered.

    The ® symbol also serves the purpose of providing notice and alerting others that the trademark is registered, as well as allowing clear identification of a trademark when it is included or displayed in places where other signs or trademarks are present.

    Although it is not obligatory to use the ® symbol, in some jurisdictions if the symbol is not included in the use of the trademark, the trademark will not be enforceable by the owner, disallowing them from using legal remedies for restitution or giving them the eventual right of compensation.

    Examples of the consequences of not using the registered sign ® in different countries:

    Australia – Not using the trademark “registered” symbol for an already registered trademark in Australia does not limit the rights of the owner to act upon trademark infringers and does not limit compensatory rights. 

    Chile – Not using the trademark “registered” symbol for an already registered trademark in Chile will limit the owner to persecuting trademark infringers only through civil actions. Criminal actions and procedures are limited to trademark owners who use the “registered” symbol together with their trademark. 

    USA – Not using the trademark registered symbol for an already registered trademark in the United States may limit the trademarks owner’s rights. If the trademark owner is not able to clearly demonstrate that the infringer was aware that he was making use of a registered trademark then the owner’s right to recover damages and lost profits from the infringing party will be limited.

     

  19. What happens if a registered trademark is not being used?

    In most jurisdictions the non-use of a trademark by an owner for a prolonged period of time may cause for a trademark to be cancelled. Cancellation may be declared automatically by the trademark office in jurisdictions where periodic demonstrations of use must be filed during a trademarks life spam. Such is the case in Canada, Haiti, Philippines, Puerto Rico and the United States.

    In many jurisdictions non-use of a trademark for a prolonged period of time, usually between 3 and 5 years, allows for third parties to present cancellation actions of a trademark based on the lack of use. Depending on the country, cancellation of the trademark may be for to the trademark as a whole, or only regarding certain goods and/or service for which it was registered and has not been used. Examples of countries with cancellation actions based on non-use of a trademark:  Algeria, Belize, Bolivia, Canada, China, Colombia, Costa Rica, the Dominican Republic, European Union (European Union Trademarks or EUTMs), Fiji, Guatemala, Hong Kong, Ireland, Japan, OAPI, Peru, Slovakia, South Korea, Norway, Russia, Sudan, Thailand, Turkey, Uganda, U.A.E., United Kingdom. 

    Therefore, in countries where cancellations for non-use may be presented, a trademark owner may file a cancellation action if their trademark is being blocked due to the prior existence of an identical or similar trademark, thus clearing the path to registration. It is important to signal that excusable non-use (having an excuse for not yet using the mark even though it is registered) exists in the majority of jurisdictions that allow for these kinds of actions. Nevertheless, what constitutes excusable non-use and what kind of evidence must be provided varies from jurisdiction to jurisdiction.

    Use it or lose it, is a principle that in favor of which more jurisdictions are legislating every year. In very few countries cancellation actions based on lack of use are not still accepted (e.g. Chile).

     

  20. What is a Cease-and-Desist letter?

    A Cease-and-Desist letter is a document sent by the owner of a trademark or their representative (usually an attorney) informing the receiving party that the trademark owner is aware that the other party is using their trademark, that it is infringing on their trademark rights, and that such use must halt or legal actions may be presented.

    Every Cease and Desist letter should at the very least contain the following:

    -  Individualization of the trademark over which rights are being claimed, accompanied by official documentation with any pertinent details (e.g. trademark certificate).

    - Examples of how in practice the conflicting trademark is being used and how this may be interpreted as trademark infringement.

    - An exact date on which it is expected that use of the conflicting trademark will have ceased.

    - A reservation of rights to seek any or all legal remedies admitted by law in order to stop the usage of the conflicting trademark and to seek legal and compensatory damages.

    - The sending party’s representative's contact information.

    The Cease-and-Desist letter should be sent by certified mail in order to be able to determine the day on which such letter was received by the other party.

     

  21. What is a coexistence agreement?

    A coexistence agreement is a contract between two trademarks holders in which they formally declare that neither of the trademarks affect each other’s interests when used or registered in certain territories and for certain goods and/or services, as long as certain standards of behavior or commitments are fulfilled. Such contracts shall also declare that neither will oppose the registration or use of the counterpart’s trademarks as long as the undertaken commitments are held. 

    At the very least a coexistence agreement should include:

    - Clear identification of both parties.

    - Clear identification of both trademarks that both owners wish to allow to coexist.

    - Clear identification of classes, products and services each trademark is limited to and is to be registered and used in commerce for.

    - Clear identification of the countries or territories in which the coexistence agreement is to have effect between both parties.

     

    Please bear in mind that not all coexistence agreements will be valid or considered by trademark offices or authorities. If it is believed that the existence of both trademarks is to confuse consumers, or be contrary to public interest, the coexistence agreements may be ignored by trademark offices. Coexistence agreements may not be used to control certain sectors of markets, promote actions of unfair competition or create monopolies.

     

  22. What is a security interest or property interest in a trademark?

    A security interest is an agreement or contract that creates an enforceable claim between a lender and a debtor, through which the debtor provides a determined right or property as a guarantee or collateral in order to secure a loan from the lender. The lender is therefore provided assurance that if the debt is not fully paid, he will have claim over the rights or property determined as the security interest.

    In many jurisdictions trademarks can serve as collateral or guarantee for a loan. In these cases the security interest (contract) signed by both parties may or may not have to be registered through public offices, trademark offices or others, in order to have full effect against the debtor or owner of the trademark and third parties. 

    Example of countries that recognize security interest in trademarks are: Australia, Algeria,  Austria, Bosnia & Herzegovina, Brazil, Bulgaria, Burkina Faso, Canada, Chile, China, Czech Republic, Denmark, Estonia, France, Germany, Greece, Ireland, Israel, Japan, Kazakhstan, Kenya, (South) Korea, Lichtenstein, Lithuania, Luxembourg, Malaysia, Mexico, Moldova, Monaco, Montenegro, New Zealand, Peru, Philippines, Romania, Russia, Slovak Republic, Slovenia, Senegal, Seychelles, South Africa, Spain, Sweden, Switzerland, the Netherlands, Tunisia, Uganda, Ukraine, the United Kingdom and the U.S.A.

     

  23. What is a trademark license agreement?

    A trademark license agreement is a contract in which the owner of a trademark grants another the right, which may or may not be exclusive, to use the trademark in commerce in a determined territory and for a determined period of time for all or some of the goods and/or services for which the mark has been registered. Therefore, the trademark owner does not lose ownership over the trademark and the authorized third parties will be able to legally use a trademark, usually by paying a fee or royalty. 

    It is highly recommended that before entering into such an agreement, an expert attorney be consulted in order to ensure that the terms and conditions of the licensing agreement do not affect the rights of the trademark owner, for example, ensuring that it allows the owner to exercise quality control of the goods and/or services that the licensee is offering under the trademark in order to prevent the reputation and value of a trademark from deteriorating in the marketplace.

    In many jurisdictions it is recommended, or even necessary, that a licensing agreement be registered in the trademark office of the country where the licensing agreement is to have effect.

     

  24. What is the difference between TM, SM, ® and other symbols?

    The ® should only be placed in a trademark if it is effectively granted the status of registered in the country where the trademark is going to be used together with the “registered” sign, and only in connection with the goods and/or services for which it was granted. Having a trademark that is filed or in process does not grant the right to use such a sign. Use of the “registered” sign together with a trademark that is not registered is punishable by law. Nevertheless, in certain jurisdictions (e.g. U.S.A. and the European Union) if a foreign trader has a registered trademark in another country outside of the United States, the use of ® is tolerated, as long the trademark has not been registered by another in these jurisdictions. However, in this case, the owner will not have any of the rights or legal remedies that would be bestowed if the trademark was effectively registered.

    TM and SM may be used if a trademark is not registered in order for the owner to give public notice and awareness that he claims initial rights over the use of the trademark, as long as the trademark has not been registered by a third party. TM is an actonym of Trade Mark and is usually used in connection with products. SM, the acronyme of Service Mark, should only be used in connection with services. 

     

  25. Where should I place the ® symbol in my trademark?

    The ® may be placed anywhere on a trademark. Nevertheless, it is recommended that the sign be placed in a way that clearly allows viewers to differentiate the registered sign from the actual trademark, allowing them to clearly note that the trademark is registered. In this sense, although the sign can be put anywhere, it is strongly recommended that the ® be put on either the top right corner of a trademark or the bottom right corner.

    If a wordmark is to be placed in a document where it will be repeated over and over, it is not necessary to include the “registered” sign every time the trademark is included in the document. It is sufficient for the first representation of the wordmark to include this symbol. In this case it is recommended that the wordmark also be highlighted in either upper case letters or in bold font.

     

Trademarks

  1. The benefits of registering your trademark

    A registered trademark grants exclusive nationwide use: Registering your trademark grants you protection and the exclusive right to use your trademark in connection to the products and services for which you have registered in a determined country or territory. As a registered trademark owner you can take legal action against anyone who uses your brand without your permission, including counterfeiters.

    A registered trademark serves as a deterrent against third parties that would otherwise use identical or confusingly similar trademarks for identical or similar goods or services. In most countries the prior existence of a considerably similar registered trademark is grounds for government offices to refuse a subsequent registration. Furthermore, trademark owners have the right to oppose similar trademarks from being registered. 

    A registered trademark grants one the right to use the ® Symbol: Upon registration you will be able to use this symbol in order to demonstrate that your trademark has been registered and is enforceable by law. It also serves as notice to competitors that you are serious about protecting your trademark rights. Such right is limited to the countries in which the trademark is registered.

    It is illegal and punishable by law to use this symbol if your trademark has not been registered; fines and penalties vary depending on the jurisdiction. The use of the ® symbol in some countries is also obligatory if a trademark has been registered in order to be able to present legal actions or remedies against a third party that uses a trademark without the owner’s consent.

    A registered trademark is necessary to enlist help from countries’ Customs Service (Customs and Border Patrol): if a trademark has been registered, actions can be taken in order to request local customs services to prevent the entering or exportation of goods that use an identical or confusingly similar trademark.

    Priority for subsequent applications: The first application for a trademark will grant the holder the right to subsequently claim priority when applying for an identical trademark in the vast majority of countries in the world, for a period of 6 months. If priority is claimed inside the period of 6 months from the first application, the subsequent applications will be considered as having been presented on the same date as the application in the first country. This is important in case there are conflicting trademarks that were filed after the first application.

     

    For more information regarding Priority please visit our General FAQs