Obtaining IP Rights: Trademarks

Trademarks are generally obtained through an application made at the national or regional intellectual property (IP) office. In some countries trademark rights are also available through use.

(Image: Getty Images/300_librarians)

Distinctiveness

Trademark law gives legal protection to trademarks that are distinctive, i.e., how easily customers identify a trademark with the associated product.

Trademarks fall into five categories – most distinctive (strong) to least distinctive (weak). The more distinctive the trademark is, the stronger it is and the more likely it is to obtain protection.

Coined or fanciful trademarks are invented words or signs that have no real meaning (eg. Google). These are legally the strongest trademarks and have the greatest chance of being registered.

Arbitrary trademarks are words or signs that have a meaning that has no logical relation to the product (eg. SUNNY or the image of a sun to market mobile phones). They generally receive registration.

Suggestive trademarks hint at the nature, quality or attributes of the product, without describing those attributes (eg. SUNNY for marketing lamps which would hint that the product will bring light to homes). In some countries, a suggestive trademark may be considered too descriptive and as such may be rejected.

Descriptive trademarks describe some feature of the product such as quality, type, efficacy, use, shape, etc. (eg. SWEET for marketing chocolates as it would be considered unfair to give a single chocolate manufacturer the exclusivity over the word sweet for marketing its products). They have little distinctiveness and are only eligible for protection if it can be shown that a secondary meaning has been acquired and a distinctive character has been established through extensive use in the marketplace.

Generic signs are words or signs that name the species or object to which they apply (eg. CHAIR for marketing chairs). They are not distinctive and are not eligible for protection as trademarks.

Costs of protecting a trademark

The costs of trademark protection vary significantly from country to country and may include:

  • Application/registration fee (to be paid to the IP office) – Fees vary depending on where you want to protect your mark and how many classes of goods and services are covered. 
  • Costs associated with the services of a trademark agent. Using a professional trademark agent adds to costs but can save you significant time and energy.
  • Payment of renewal fees to maintain the exclusive right over a trademark, usually paid on a five-year basis.
  • Costs associated with translation of relevant documentation if the industrial design is to be protected abroad.

The relevant national or regional IP office will be able to give you details on their fee structure. Consult our list of national and regional IP offices.

 Expert tip – Distinctive trademarks may lose their status and become generic through improper usage. You must take practical action to stop your trademark from becoming generic.

  • use a special script rather than standard letters
  • identify and use specific colors
  • add a logo or graphical elements to the letters
  • Send, and keep copies of, emails or notes to authors who wrongfully use your trademark;
  • use the ® symbol to denote a registered trademark;
  • distinguish the trademark from surrounding text by using capitals, bold or italic fonts, or by placing it within quotation marks;
  • use your trademark consistently. If your trademark is registered with a specific spelling, design, color or font, make sure that the trademark is used exactly as it is registered. Don’t modify the trademark, for example, through hyphenation, combination or abbreviation (e.g., “MONTBLANC® fountain pen” should not appear as “Mont Blanc”);
  • don’t use the trademark as a noun. Use the trademark only as an adjective (e.g., say “LEGO® toy blocks”, not “Legos”);
  • don’t use the trademark as a verb (e.g., say “modified by ADOBE® PHOTOSHOP® software”, not “photoshopped”);
  • don’t use the trademark as a plural (e.g., say “TIC TAC® candies”, not “tic tacs”);
  • establish clear and cogent trademark best practices and guidelines. Guide employees, suppliers, distributors and consumers on how they should use your trademark and ensure your policies and guidelines are consistently followed.

What is the "Right of Priority"?

Once you file a trademark application in one country or region, you have six months to file for the same trademark in other countries in order to enjoy the benefit of the filing date of the first application. In other words, your subsequent application will enjoy priority over applications filed after your first application.

The Paris Convention for the Protection of Industrial Property provides for the right of priority. This right means that, on the basis of a regular first trademark application filed in one of the Contracting States to the Convention, an applicant may, within six months apply for protection in any of the other Contracting States. These subsequent applications will be regarded as if they had been filed on the same day as the first application. In other words, they will have priority (hence the expression "right of priority") over applications filed by others during the six months for the same trademark. Moreover, these subsequent applications, being based on the first application, will not be affected by any event that takes place in the interval.

 

The trademark registration process

A trademark application has to be filed (and paid for) in a national or regional trademark office. Following filing, the office will then examine the application. 

The steps taken by the office to register a trademark vary from country to country but, broadly speaking, follow a similar pattern.

 Expert tip – Before applying for a trademark registration check to ensure that no one else has registered the same trademark or a confusingly similar one for the same or similar products. Start with a simple search on Internet, followed by a thorough search by a professional firm or trademark agent. Search in your home country and all relevant export markets.

1. Application

2. Formal examination

3. Substantive examination

4. Publication

5. Registration

6. Opposition

7. Renewal

 
 

Rejection of a trademark application

There are two main grounds for rejection of a trademark application:

Absolute grounds

Trademarks may be refused for reasons inherent to the trademark itself when they are:

  • generic – for example, the word PHONE filed as a trademark for mobile phones.
  • devoid of any distinctive character – in the sense that the sign is not capable of distinguishing the products of one enterprise from those of others. Descriptive words, signs and advertising slogans are generally devoid of distinctive character.
  • deceptive – signs likely to deceive or mislead consumers as to the nature, quality or geographical origin of the product.
  • functional features of a product’s shape or packaging – as opposed to purely decorative elements. When the shape of a product has significant functional features, it cannot be registered as a trademark.
  • considered to be contrary to public order or morality. Words and illustrations that are considered to violate commonly accepted norms of morality and religion are generally not allowed to be registered as trademarks.
  • among the list of prohibited names or symbols. Some countries have a list of specific signs that are excluded from registration, including: business names, names of famous people, well-known marks, protected geographical indications, signs of indigenous peoples, and foreign words or expressions.

Relative grounds

Trademarks may be refused due to the existence of prior rights when they are:

  • in conflict with prior trademark rights. Having two identical (or very similar) trademarks for the same type of product could cause confusion among consumers. Some trademark offices check for conflict with existing trademarks, including unregistered trademarks and well-known marks, as a regular part of the registration process, while many others do so only when the trademark is challenged by another business after publication of the trademark. In either case, if your trademark is considered to be identical or confusingly similar to an existing trademark for identical or similar products, it will be rejected or cancelled. 
  • in conflict with other prior rights, for example: industrial design, copyright, personal/company/business names, commercial designation, geographical indication or signs of indigenous peoples.

Obtaining protection abroad

Trademarks are territorial rights – they are only protected in the countries or regions where they are registered. If a trademark has not been registered in a given country, it will not be protected in that country. This means that anyone can make, use, import or sell goods bearing your trademark in that country.

You typically have six months from the date on which you applied for protection in the first country, to claim the right of priority for protection in other countries.

  • If you successfully register abroad within the six month period, your registration will be regarded as having taken effect from the date on which you filed for protection in the first country (this is recommended to avoid a competitor “stealing” your trademark in other countries).  
  • If you miss the six-month period, an application filed abroad will take effect from its own filing date and not the filing date of the original application.
(Image: Getty Images/sumkinn)

 Expert tip – If you intend to sell your trademarked goods or services abroad, make sure you file for protection in all the markets that interest you as early as possible keeping in mind that most countries require a trademark to be used after registration.

Three ways to register your trademark abroad

National route

Apply to the trademark office of each country in which you are seeking protection by filing the corresponding application in the required language and paying the required fees.

  • A country may require you to use the services of a locally-based trademark agent.
  • Some countries do not have a national system and use a regional system instead.

Regional route

If you want protection in countries which are members of a regional trademark system you may apply for registration, with effect in the territories of all member countries, by filing an application at the relevant regional office.

International route

WIPO's Madrid System significantly simplifies the process for simultaneously seeking trademark protection in more than 115 countries.

Rather than filing national applications in many languages, the Madrid System enables you to file a single application, in one language, and to pay just one application fee.

 Expert tip – Selecting an appropriate trademark for a foreign market

  • Choose a local language trademark and register all variations.
  • Consult language specialists and be sure to select a strong trademark that resonates with local consumers.
  • Monitor carefully for infringing trademarks: Search thoroughly for foreign trademarks that both sound and look similar to your trademark, or that have the same meaning. Search also for prior-registered domain names.
  • File broadly: File in all the right and relevant classes, not only for products you use, but also for products you might use in the near future. Some countries do not follow the Nice Classification, or have a unique system of subclasses. A local trademark lawyer can help you make sure that your registration is correct and complete.
  • Get familiar with the local trademark system. Do not assume that the law in a foreign country is the same as at home. Know the pitfalls of the local system and use lawyers you trust.
  • Ask questions!
    • Is it a first-to-file or a first-to-use country?
    • Does the trademark office perform a relative examination?
    • What is the system for opposition?
    • How long does it take before a trademark is registered?
    • Do you need to get approval for trademark assignments or licensing?

Case studies

article_0216_3_845
(Photo: KBTR)

A Brand Wrapped in Success

A powerful brand protected by a trademark and combined with an attractive and successful franchising strategy has turned Kebab Turki Baba Rafi into the world's largest kebab chain.

2018_03_art_5_1_845
(Photo: Chrisuk1/ iStock / Getty Images Plus)

125 years of trademark history

Curaçao enjoys a long tradition of trademark protection and was one of the first in the Caribbean to establish a fully operational trademark registration system.

A fog-harvesting net on a mountain side
(Photo: NODOKA)

NODOKA: Organic Japanese Tea

Mr. Suil Hong, CEO of NODOKA, developed a branding strategy to offer high-quality organic Japanese tea.

Find out more

(Icon illustration credits: Getty Images/Momento Design/DStarky)