Is trademark registration necessary even when the mark has been in use for many years?

In countries which have a legal system based on common law, "prior use" is generally sufficient for claiming rights over a given trademark in case of dispute. In civil law countries, however, this is usually not the case. Only trademark registration will provide legal certainty on exclusive rights to the use of the trademark regardless of how many years an enterprise has been using the name. Even in the first case, it is highly advisable to register a trademark, as registration will reinforce the position of the right holder in case of litigation.

Does trademark protection automatically give rights to the related domain name?

The process for registering domain names is an altogether separate one from trademark registration. Nevertheless, many countries have reached the conclusion that there is a strong need for taking precautionary measures to prevent conflicts between marks and domain names. The system for domain names registration generally operates on a first-come first-serve basis and anybody is entitled to obtain any domain name without proof of commercial use. However, in order to stop cybersquatting, there is a simple procedure, the WIPO Domain Name Dispute Resolution Service, on which you can obtain information at the web sites of the WIPO Arbitration and Mediation Center and the Internet Corporation for Assigned Names and Numbers (ICANN).

When I register a trademark for one type of goods or services, does this automatically give me exclusive rights to use that trademark for all goods and services?

Trademark rights (other than those conferred by well-known marks which enjoy a more far-reaching protection in a number of countries) are typically limited to goods or services which are idetical with or similar to the goods and services for which the marks are registered. Thus, while you may have exclusivity over your mark for certain goods or services in a given class or several classes of goods and services, another company may legitimately use the same mark for goods or services which are not similar. Under most modern trademark laws, you may apply for trademark protection in more than one class if appropriate. However, some countries still require separate applications for each class of goods or services. Most countries adhere to or apply the system of International Classification of Goods and Services which divides goods into 34 classes and services into a further 8 classes.

Can I register my name as a trademark?

Yes, you can register your name as a trademark provided the Trademark Office of your country or the country for which you are seeking protection considers it "distinctive." As to whether a name is distinctive or not depends on a variety of factors. As a rule of thumb, the more common the name is the less likely it will be considered distinctive as there may be many others with the same name. Likewise, the more unusual the name is the greater the distinctiveness and the greater the likelihood that registration will be granted.

In any event, even if you have been refused registration of your name as a mark either for the reason that it was not considered distinctive or because someone else had already registered it you are not prevented from using your name in the course of your business for ordinary business purposes.

Can I own a mark and not necessarily use it?

As a general principle, once your trademark has been registered it should be used. If your mark is not put to use, its registration is liable to be cancelled on the application of a third party who can show that it has not been used. In most countries, a mark will not be so cancelled unless it can be established that there has been at least three years of non-use. In this context, it would be advisable to check the legal position in the country or countries for which your mark has been registered.

If, however, the owner of a mark can establish that, despite every intention to use the mark, he was prevented from doing so due to circumstances beyond his control, the mark may not be subject to cancellation.

Can I register or use a mark that sounds the same as an existing mark but looks different?

If you are trying to register a mark that sounds the same as a mark already registered, the Trademark Office of your country will take a decision as to whether your proposed mark is confusingly similar to the existing mark. If the Office is convinced that the goods or services in question are often ordered orally, there is a certain likelihood that the Office will reject your application provided that it examines on its own initiative as to whether the application conflicts with prior third party rights or, where this is not the case, upon a corresponding request in opposition proceedings. If you are using such a mark without registration, the owner of the registered mark may take legal action against your use of that mark on the basis that your mark is confusingly similar to his mark and, as such, your use is an attempt to "pass off" your mark as his. The corresponding decision is generally taken by a court in infringement proceedings on the merits of the case. Where the conditions are fulfilled, provisional measures may be ordered in many countries by the court even without hearing the other party.

Can sounds and smells be considered marks too?

As long as it is the sound or the smell which makes the mark distinctive, the sound or smell could be registered as a mark. However, there is no international obligation to provide for the possibility of registering sound and smell marks and it would depend on the particular national law in question as to whether it is in fact impossible to register such marks. Many countries that allow also the protection of signs which are not as such visually perceptible confine registrability for practical reasons to those signs that can be represented graphically without major difficulties which is usually the case for sounds.

Can I allow someone else to use my mark?

You can certainly license the right to use your mark to someone else. It must be kept in mind that since marks establish a connection between the mark and the goods, and are often understood as an indication for a certain quality and reputation. It is, therefore, important that the person to whom you have licensed your rights maintains that same connection and the same quality and reputation. To this extent, you must be closely involved with the proper use of that mark by your licensee. The legislation of a number of countries even require that the license contract provides for effective control by the licensor and the license contract is considered to be invalid if it does not provide for quality control or if such quality control is not effectively carried out. Close involvement and control of the use of the mark by the licensee is also important for satisfying the requirement of use. That is, the use of your mark by another who is legally authorized by you and whose use is under your control and supervision is generally considered use of the mark by the owner.

If I am exporting do I have to register my mark in other countries as well?

Intellectual property law is basically territorial, that is, your right with respect to your trademark is confined to the country in which it was applied for and obtained. Therefore, if you export goods bearing your mark and you have only obtained protection for that mark in your country then your mark is vulnerable in the export market. It is then important if you are in the export business that you register your mark in the countries to which you are exporting or intending to export so that your mark is protected in those countries as well. For a guide on how to protect trademarks abroad see Protecting Your Trademarks Abroad: Twenty Questions About the Madrid Protocol.