IP Management

IP Guide for SMEs

Trademarks

  

Some Common Features of
Trademark Registration Procedures

  

World Intellectual Property Organisation (WIPO)

  

 

In some countries, protection of a mark can be acquired through registration or use. In others, for most trademarks, you have to necessarily register the trademarks if you want to protect them. Even where you have the option of protection without registration, that is, based on use of the mark, it is always advisable to register the mark to obtain a better or stronger protection.

 

 
 

If you wish to acquire trademark protection for your SME by registration then you must file an application in a national or, where such possibility exists, a regional trademark office. The Office will then, once the required fees have been paid, examine the application. There are a number of reasons for which your application may be rejected. In practice, applications are most frequently rejected on the grounds that:

▪ there is a likelihood that consumers will confuse your mark with a mark already on the register or applied for or an unregistered well-known mark;

▪ your mark only describes a product or service or a feature of the product or service;

▪ your mark consists of a geographical term which is misleading or should not be monopolized by a single enterprise;

▪ your mark violates public order or morality; or

▪ your mark consists of or contains without authorization an element which is identical with or an imitation of a protected official sign, armorial bearing, flag or other emblem, or hallmark of a state or intergovernmental organization.

 

 
 

Where the trademark law of a country provides for an opposition procedure, an application will be published after it has been examined and any interested persons will be provided an opportunity to object to the registration of the mark if they consider their rights likely to be affected by its registration. The Office will then make a decision based on the evidence provided by the two parties and this decision will usually be subject to an appeal.

Depending on national laws, the initial period of registration is not less than 7 years (generally 10 years). However, unlike other industrial property rights, the registration of marks can be renewed upon payment of a renewal fee indefinitely. See also "Conducting Trademark Searches".

For more information on Trademarks see Frequently Asked Questions.

 

 
 

Protection of Well-known Marks

Well-known trade and service marks enjoy in most countries protection against signs which are considered a reproduction, imitation or translation of that mark provided that they are likely to cause confusion in the relevant sector of the public. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. In many countries, they are also, under certain conditions protected for dissimilar goods and services. It should be noted that, while there is no commonly agreed detailed definition of what constitutes a “well-known mark,” countries may take advantage of the 'WIPO Joint Recommendations on the Protection of Well-Known Marks.'

Many countries protect unregistered well-known marks in accordance with their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).

Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks and acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for an extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS), i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.

You should be aware of the fact that a number of trademark laws merely implement obligations under Article 16.3. of the TRIPS Agreement and protect well-known registered trademarks only under the following conditions:

▪ that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation

▪ that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and

▪ that his interests are likely to be damaged by such use.