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.
The costs of trademark protection vary significantly from country to country and may include:
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.
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.
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.
There are two main grounds for rejection of a trademark application:
Trademarks may be refused for reasons inherent to the trademark itself when they are:
Trademarks may be refused due to the existence of prior rights when they are:
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.
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.
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.
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.
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.
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.
Mr. Suil Hong, CEO of NODOKA, developed a branding strategy to offer high-quality organic Japanese tea.
(Icon illustration credits: Getty Images/Momento Design/DStarky)