Trade Mark Protection - From Application to Enforcement

Essential Requirements for Trade Mark Protection

Trade mark infringement can be complex, but a registered trade mark gives you the power to take legal action against unauthorised use, including court orders to stop it and compensation for damages. Registering your trade mark grants exclusive rights, enhances your brand's credibility, and increases business value by opening doors for licensing opportunities and preventing costly rebranding. This allows you to focus on growth without legal worries.

As a trade mark owner, vigilance is key. If you suspect infringement, taking immediate legal action is essential, as it can significantly impact your financial stability and brand reputation. Protecting your mark not only preserves its distinctiveness but also ensures your brand's ongoing success.

To qualify for trade mark protection, a trade mark must be distinctive, non-misleading, and unique within its market. It should not closely resemble existing trade marks and must avoid merely describing the goods or services it represents.

What is The Value of Trade Mark Protection

Brand protection is about securing exclusive rights to one of the most valuable assets your company has – its own, unique brand. By protecting your brand, you make it illegal for other actors to use it for their own purposes and benefit. Companies that illegally use a protected trade mark commit trade mark infringement, for which they can be reported and liable for compensation to you as the rights holder. Trade mark protection also safeguards you from accidentally infringing someone else's intellectual property rights. Once your trade mark registration is approved, you can feel secure that your trade mark is unique and does not resemble any other trade mark in the market and classes you have chosen to protect yours in.

Trade mark protection involves registering your trade mark with the local Patent and Registration Office, EUIPO, or WIPO for European protection, establishing your rights in the relevant market(s). This ensures that you own all rights to the trade mark, including the domain and relevant web security elements surrounding it. Given the challenges of incorporating a trade mark to the point where it is legally protected, we always recommend registering your trade mark.

In practical terms, trade mark protection means that a trade mark is either registered with the local Patent and Registration Office or with EUIPO or WIPO for European protection), established in the relevant market(s), and you own all rights to it, both when it comes to the trade mark in itself, the domain and the relevant web security elements to secure it (e.g.; hosting DNS, etc.)  around it. Incorporating a trade mark to the point where it is legally considered to enjoy trade mark protection is difficult, which is why we always recommend registering your trade mark.

Why is Trade Mark Protection Essential?

Trade marks act as powerful source identifiers, distinguishing your business’s products or services from those of competitors. They embody the essence of your brand, making it instantly recognisable to consumers. Without trade mark protection, your brand is vulnerable to:

• Misuse
• Imitation
• Confusion
• Misunderstandings in the marketplace

By properly protecting your brand and intellectual property rights, you ensure that your business stands out from your competitors, even when you offer the same goods or services. A protected trade mark builds your company's identity, strengthens your reputation and creates recognition in the market. It can also creates curiosity and interest among customers and investors - both for the goods and/or services you sell and for the company itself.

Significant risks accompany the lack of trade mark protection. Competitors could register your mark, leading to legal disputes and costly rebranding efforts. Imagine the financial and reputational damage if you had to change your brand name or logo because someone else legally claimed it. Trade mark protection is not just a legal formality; it’s a strategic necessity for preserving the integrity and value of your brand.

Bottom line, trade mark protection is about protecting all the investments you have made and continue to make in your business – for example in the form of time, inventory, machinery, customer relationships, materials and finished goods or services.

Which Companies Should Apply for Trade Mark Protection?

Securing the exclusive legal rights for your own brand is in the interest of all companies. The exclusivity protects what you have already built and want to continue building in the future - something that is important regardless of the industry you operate in, how big you are and what market you operate in.

In addition to protecting your brand legally, it is also important to protect your domains and web security. The fact that a trade mark is protected by law certainly means that infringers can face criminal penalties, but unfortunately that doesn't stop them from trying. This is where other protection, such as domain monitoring, various cyber security certificates and firewalls are needed. Combining these different tactics help you build a robust technical wall around your brand.

Protecting the entire brand on all these different levels comes with a certain cost, but is nevertheless something that should be prioritised by all companies. All are investments will bring return many times over.

When Should You Apply for Trade Mark Protection?

In order to be granted trade mark protection, you must be able to justify how you intend to use your trade mark both today and in the next five years. Therefore, you should not register a trade mark just for the sake of registration, without the intention of using it.

Applying for trade mark protection is best done when you have a clear plan for how and when you will use the trade mark. As mentioned above, according to the usage requirement, you have five years to be able to prove that you are using the trade mark. If you fail to do so, there is a risk that you may have your trade mark deregistered and that the protection will cease.

Preparations for the Trade Mark Application

The preparatory part of a trade mark application is important. The more prepared you are, the easier and smoother it will be to complete the application and the better your chances of getting it right.

The preparations are primarily about making sure you have what it takes to have the right to brand protection in your country. You should also research the competition in the market as well as identify any possible business risks.

In short, it can be said that the following are things you need to be aware of before proceeding with a trade mark application:

• Type of trade mark
  What type of trade mark do you want to register? Trade mark protection can be obtained for several different kinds of trade marks – for example, a figurative mark (logo), a word mark, a design of a product or a slogan.
• Distinctiveness
  A trade mark must be clearly distinguishable from others in order to be approved for registration. Check that your company's logo cannot be confused with anything else on the market. Searches for registered trade marks can be made in your country's Trade mark Database .
• Clear definition
  You must be able to define how your brand is to be used, for which goods/services and in which market.
• Classification
  Trademarks are registered in different trade mark classes depending on the goods/services to be marketed. In order to properly protect your trade mark, it is important that you know which classification you should register your trade mark in. In total, there are 45 different trade mark classes to choose from, of which two-thirds are for goods and one-third are for services.

How to Apply for EU or International Trade Mark Protection

Trademark protection in the EU and internationally is handled by authorities other than PTO.

For applications in the EU, the process is very similar to your local country's, while the international process for registrations looks a little different.

If you want to protect your brand in all EU countries, you make an application to the EU's common intellectual property rights authority, EUIPO - European Union Intellectual Property Office. The advantage of an EU application is that you can obtain registration in all EU countries through a single application and a single fee. This is commonly called an EU trade mark.

International trade mark registration in countries outside the EU is done with WIPO, the World Intellectual Property Organization. Like an EU application, the big advantage of a WIPO application is that you are able to submit your trade mark to several jurisdictions through one application. All administration is gathered in one and submitted through WIPO. In your application, you indicate in which countries you want the protection to apply. In total, there are about a hundred countries and intergovernmental organisations to choose from.

In contrast to an EU trade mark application, an international trade mark application must be based on a national trade mark registration (here both your local country and an EU registration work as a basis).

In other words, you must first apply to PTO or EUIPO. Once that application is registered, you can then apply for an international registration. If you apply for an international registration within 6 months of your trade mark being registered with PTO or EUIPO, you can apply for international registration with so-called priority, see more under the next heading below.

If you only wish to apply in one or a few other countries, regardless of whether it is an EU country or not, you should send your application directly to that country's own intellectual property authority. Preferably with the help of a local representative, as the national authorities usually communicate in the local language and the regulations may differ. For European countries, an EU trade mark are in many cases cheaper than country specific trade marks.

Possible to request a priority

If you have applied for trade mark registration in your own country or the EU, you can request priority if you also make an application to another country or internationally within six months. The priority means that you can count the day you submitted the application in your own country as the submission date also for the application to EUIPO or WIPO. It can be beneficial if someone else has applied for protection for an identical or similar trade mark and a conflict of interest arises.

When You Have a Protected Trade Mark - What do You Need to Think About?

After an approved registration, you have exclusive rights (trademark rights) to your trade mark for ten years, after which you can extend the registration by another ten years at a time for as long as you wish. This applies both within the EU and globally. Renewal can be done an unlimited number of times and is necessary to maintain the validity of the trade mark and your rights as a holder.

Furthermore, it is important that you manage your brand effectively after a registration approval, and protect your trade mark rights against potential threats and infringements. This requires effective and continuous brand monitoring.

The Importance of Guarding Your Brand

• Why it is important to guard the brand
• How to monitor the brand
• What monitoring solutions should all companies employ
• How should you act in the event of a breach or an infringement