By World Intellectual Property Organisation (WIPO)
trademark registration necessary even when the mark has been in use for many
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.
trademark protection automatically give rights to the related domain name?
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).
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.
register my name as a trademark?
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.
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.
own a mark and not necessarily use it?
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.
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.
register or use a mark that sounds the same as an existing mark but looks
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.
sounds and smells be considered marks too?
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.
allow someone else to use my mark?
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.
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
Trademarks Abroad: Twenty Questions About the Madrid Protocol.