Trademarks have existed since ancient times. From engraving signatures on artistic creations to drawing symbols and words on pottery, people have always come up with a way to demonstrate ownership.
However, trademarks started to play an important role when industrialization began. Since then, they have become an important factor in the modern world of market-oriented economies and international trade.
With all this in mind, why have trademarks become so important?
The Importance of Trademarks
First, it is necessary to understand what a trademark is. The definition of a trademark would be the following:
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.
Many years ago, industrialization and growing economies allowed competing companies to offer consumers products and services that belonged to the same category.
Of course, we know that many products and services differ from each other when it comes to prices, quality, and other characteristics. This is why consumers need guidance in terms of considering their alternatives so that they can choose between the competing products and services. Therefore, these goods and services require names, which is precisely what a trademark is for.
How to Apply for a Trademark
To apply for a trademark, you must take into account the types of goods and services you are looking to protect as well as the trademark name. Keep in mind that the use of trademarks is to help consumers identify products and services and to avoid any confusion whatsoever. So, if there is a slight chance that the name you are looking to register is similar to another that is already registered, you might be rejected.
Since trademarks are territorial, trademark protection can be obtained through registration, by filing an application for registration with the trademark office in the country you would like to register the trademark in, and by paying the required fees. However, if you would like to extend your trademark internationally, you have two options:
- You can file a trademark application with the trademark office of each country in which you are seeking protection. There are also some regional offices like EUIPO, BENELUX, ARIPO, OAPI.
- You can use the Madrid System Protocol
Now that my trademark is registered, what comes next? We will talk about this in the following paragraph.
What are my Trademark Rights once my Trademark is Registered?
First of all, with the exception of very few countries, trademarks (once fully registered) last 10 years before they should be renewed. There is no limit to the number of times that a trademark can be renewed so it is possible for this to go on indefinitely. An example of this would be the worldwide known trademark Coca-Cola. This trademark was registered on January 31, 1893, and has been successfully renewed up until this day.
Once your mark is registered, you will immediately obtain trademark rights and the following are the three most important ones:
Right of Use
This means that you will have the right to introduce your products and/or services to the market under the trademark.
To be able to use this trademark on goods, packaging, labels, etc., or to use it in any other way in relation to the goods for which it is registered.
Right to exclude others from using your trademark
This means that you will have the right to file an opposition in case of infringement by a third party who is trying to register the same trademark for the same goods or services that you have protected.
This also goes for anyone who tries to register any similar trademarks since the objective of trademark protection is to avoid any confusion for consumers.
Right to mark your trademark with the ® symbol
This is used to indicate that the trademark is registered. This symbol is only to be used once the trademark is registered. Using this symbol without having a registered trademark is an offense and can be legally punishable.
These are the top three and most common rights worldwide. However, it is important to keep in mind that every country has its own rules and regulations, as trademarks are territorial.
What is Trademark Infringement?
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
Despite being a frequent occurrence in the majority of markets, trademark infringement can significantly endanger the success, value, and survival of any business. This is because it confuses the consumer about the origin of the product or service, leading to a loss of trademark profitability.
This is why it is very important to make sure that the trademark you are looking to protect is not already registered by someone else. Also, making sure that you are not applying for a similar mark or a trademark that might cause any confusion for consumers is also key to not getting sued by other businesses. A trademark search can help you verify all of this.
Even big and famous companies are not safe from trademark infringement issues. Some examples of this would be the following:
Apple Corps versus Apple Inc.
These two major institutions have battled over the trademark "apple" for decades. The Beatles founded the Apple Corps music company eight years before Apple Inc. was founded by Steve Jobs. When Steve Jobs was first sued by the Beatles, he agreed not to enter the music business and paid a cash settlement.
However, we know of the existence of iTunes, for which Apple Inc. was sued again after it was introduced. That lawsuit was resolved when Jobs agreed to purchase the trademark rights from Apple Corps and then sublet them back.
Adidas versus Forever21
A few years ago, Adidas filed a lawsuit against clothing retailer Forever21 alleging that the retailer's products, which contain a "three stripe" design, constitute "counterfeit products." Adidas reports they have "invested millions" to build and protect the three-stripe design as a trademark component of their brand and own "numerous" patents.
A settlement has not been reached until this day.
When creating and developing a new trademark, it is essential that you register it. This will guarantee the maximum protection of your rights and will mean that you have the option of taking legal measures in response to any kind of trademark infringement.
Also, it is important to make sure that you are always monitoring your trademark, keeping up to date with fees, requirements, and renewing it in time. Doing so will help prevent any issues with third parties or also help prepare in case there are other parties infringing your trademark rights.
iGERENT has expert teams, trained in trademark registration services and trademark infringement protection. We will provide you with 24/7 access to an online portfolio so you can monitor your trademarks’ statuses at all times. With services in more than 200 jurisdictions, a team of expert Consultants, and an extensive network of trustworthy local agents, we are your one-stop solution for all your trademark registration needs!
If you have any questions or need assistance, feel free to contact us anytime.
Author: Solange Ramirez, Trademark Consultant @ iGERENT.com