How can Trade marks be protected?

Trade marks can be protected through registration. Trade mark registration protects your brand value, defends against rival marks, defines your rights and prevents counterfeiting and fraud.

In many countries, so called well-known trademarks are also protected without being registered. Such obligation result from the provisions of the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement.

What is a Trade mark?

Trade marks are signs used in trade to identify products and services. More specifically, a trade mark is a symbol your customers use to pick you out. It may consist of any sign, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, or sounds, provided that they can be clearly represented on the register and are capable of distinguishing the goods or services of your undertaking from those of other undertakings.

Where can I apply for a trade mark registration?

Trade mark  protection is territorial by nature, i.e. the geographic scope of protection for trade marks is limited and depends on the place of registration. Hence, it is advised that you consider applying for protection for your brand in all territories of your commercial interest. E.g. think not only about intended markets of distribution of a product, but also about the place it is manufactured.

Note that trade mark protection can be obtained in few alternative ways. Depending on the brand characteristics and planned commercial strategy, it can be registered as:

Our company is selling products worldwide. So far, we have registered our brand name as a trade mark for these products but only in Europe (European Union Trade Mark). What are the consequences of not registering our trade mark internationally?

Trade mark protection is territorial in nature. This means that, provided all conditions are met, such protection will be granted to your name only in the territories in which you have registered it as a trade mark. In other words, registering your name as a European Union Trade Mark only gives you exclusive rights to use that name with regard to specific goods and services (the ones identified in your application) across the European Union only.

What happens when a trade mark is not used/exploited?

In case of prolonged non-use of its mark, the owner may be deprived of its rights. Revocation of a mark is always pronounced by the courts following an application for revocation of the rights of the proprietor. It may be requested by any person if the owner has not begun to exploit its trade mark as it has been registered or has abandoned the use of its trade mark.  Revocation of a mark may be total or partial - for all or part of the goods and services specified in the deposit.

What is a class identification of the goods and/or services?

A trade mark registration is performed in a specific area - always in connection with certain products and/or services offered by its owner. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is an international classification of goods and services - it groups goods and services into thematic classes for the purposes of the registration of trade marks. The heading of each class indicates the products or services included.

What is a well-known trade mark?

The wording of the Article 6bis of the Paris Convention and(or) Art. 16(2) of the TRIPS Agreement as well as the Article 5(2)(d)of the Trade Mark Directive refers to a well-known mark. Well-known marks are usually protected irrespective of the fact as to whether they are registered or not. Furthermore, they are protected for goods and/or services which are identical with, or similar to, those for which they have gained their reputation if there is a likelihood of confusion in the relevant sector of the public.