Trademarks in general
- What is a trademark?
- What elements can I use as a mark to distinguish my goods or services from others?
- Can sounds and smells be considered as marks too?
- Can I register my name as a trademark?
- How can I protect my mark?
- What is the advantage of a trademark registration?
- Is it always necessary to register a mark in order to protect it?
- Is trademark registration necessary even when the mark has been in use for many years?
- Does trademark protection apply to any and all types of goods and services?
- If I am exporting, do I have to register my mark in other countries as well?
- What kind of marks cannot be registered?
- What is a certification mark?
- What is a collective mark?
- What do the symbols ® and TMmean?
- Can I register a mark that sounds the same as an existing mark but looks different?
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
Any distinctive element, such as words, letters, numerals, drawings, pictures, shapes, colors, labels, or any combination of these, can be used as a mark.
As long as the sound or the smell serves to distinguish the goods or services of one enterprise from those of others, some countries may permit the sound or smell to be registered as a mark.
Yes, you can register your name as a trademark, provided the trademark office of your country or the country in which you are seeking protection considers it “distinctive” for the goods or services concerned.
At the national/regional level, trademark protection can be obtained through registration, by filing the appropriate application form with the national or regional trademark office and paying the required fees.
At the international level (for protection abroad), you have two options: either you may file a trademark application with the trademark office of each country in which you are seeking protection, or you can use the Madrid system.
In principle, only a trademark registration will provide exclusive rights over the mark.
Registration will provide legal certainty and will reinforce the position of the right holder, for example, in case of litigation.
In certain jurisdictions, it is. In others, you may acquire rights over a mark that you have used, but not registered.
In countries which have a legal system based on common law, “prior use” is generally sufficient for claiming rights over a given trademark in case of dispute. In civil law countries, however, this is usually not the case. Only trademark registration will provide legal certainty on exclusive rights to the use of the trademark regardless of how many years an enterprise has been using the name. Even in the first case, it is highly advisable to register a trademark, as registration will reinforce the position of the right holder in case of litigation.
No. You must indicate in the trademark application form the list of goods and/or services for which you are seeking protection.
Trademark protection is territorial, that is, your rights are confined to the country in which your mark was applied for and registered. Consequently, if you are in the export business, you should register your mark in the countries to which you are exporting.
The following marks cannot be registered:
- marks that describe value, quantity, quality, or intended purpose of the goods or services;
- marks that are deceptive;
- marks that are contrary to public order or morality;
- marks that consist of armorial bearings, flags and other emblems or official signs of States or international intergovernmental organizations;
- marks of such a nature as to infringe rights acquired by third parties in the country where protection is claimed (for example: marks that are identical or similar to earlier marks for identical or similar goods or services; or marks that are identical or similar to well-known marks).
A certification mark is a sign used to distinguish goods or services that comply with a set of standards defined by the owner of the certification mark (such as material, mode of manufacture and quality). They may be used by anyone whose goods or services meet these established standards.
A collective mark is a sign used to distinguish goods or services produced or provided by members of an association or group of traders. The association or group generally establishes a set of criteria for using the collective mark and permits others who are members of the association or the group to use the mark if they comply with those standards.
® and TM are common symbols associated with trademarks, although their use is not a requirement and generally provides no special legal protection. The ® symbol is used once the trademark has been registered. The TM symbol denotes that a given sign is used by the holder as a trademark (whether this sign is the subject of a trademark application or not).
If you are trying to register a mark that sounds the same as a mark already registered for identical or similar goods or services for which the earlier mark is registered, it is likely that your mark will be considered as confusingly similar and be refused.