Trademark

A trademark is a sign that distinguishes the goods and services produced by your company, enabling you to differentiate yourself from your competition.

A trademark is also an exclusive right. If you hold a trademark, you can forbid others to use the same mark – or one that is easily confused with it – in selling and marketing the same or similar products or services.

There are two ways to gain exclusive rights to a trademark: Registering it, or establishing it through use. However, establishing a trademark through use can take a long time and might be an unreliable way of protecting a brand, so in most cases registration is highly recommended.

Trademarks of every type

You can register almost anything as a trademark as long as it fulfills the registration criteria. There are several categories of trademarks, with the most common being words and logos, but elements such as the shape of a product, a color, sound, or even a scent can be registered as trademarks.

Your trademark must be distinctive – what does this mean in practice?

The distinctiveness of a trademark means that it cannot directly describe the products or services it represents. If the trademark were excessively descriptive, it couldn’t serve to differentiate your products or services from other similar offerings. Furthermore, it is important to remember that the words or patterns for describing a product must be available to anyone, so one cannot gain an exclusive right to them.

Your trademark cannot be confused with prior rights

Your trademark must not be confusingly similar to earlier trademarks or company names. In other words, it must not be identical or too similar to other trademarks or business names that are in force in the given area and encompass the same or similar products or services. Usually, there is little danger of confusion between even highly similar trademarks, if they pertain to different products or services.

The patent office always assesses the risk of confusion individually, while considering all relevant circumstances, such as visual or aural similarity, the equivalence of goods and services etc. If needed, the risk of confusion with existing trademark rights can be evaluated with a preliminary examination before filing the trademark application.

The risk of confusion, along with the possible obstacle to registration resulting from it, can be eliminated if the holder of the existing trademark grants written permission to register the new trademark. This is common practice in situations in which there is no practical risk of confusion, even though the registrations are similar.

A correctly used trademark is a perpetual right

A registered trademark remains in force for 10 years. The trademark can be renewed without limitation every ten years, so in principle it is a permanent intellectual property right.

However, in order to retain the exclusive right to your trademark, you need to fulfill certain requirements for using it. If you don’t utilize your trademark for a certain period (usually three to five years), this allows another party to challenge your right to it. In other words, it is not possible to register trademarks and keep them “in storage” for an indefinite period.

With proper usage and timely renewals, your trademark can be maintained in perpetuity, which makes it your longest-lasting immaterial property right. Due to the extended time span and the nature of a trademark, it carries a lot of recognition and value, so it is crucial to register and protect your trademark rights diligently..

The 1-2-3 of trademark registration

Phase 1: Preliminary examination and defining the required scope of protection

A registered trademark must be

distinctive
not confusingly similar to earlier rights.

The distinctiveness of a trademark is worth evaluating as soon as possible before filing a registration application. If needed, existing rights can be mapped with preliminary research.

Before filing a trademark application, you need to define the scope of protection for the mark, i.e. the list of products or services that it encompasses. As a rule, the exclusive right granted by a registered trademark only extends to the items included in the application.

We can help you formulate a list of goods and services for your trademark that gives your product the protection that you need, and that will be acceptable for the official body issuing the registration.

Phase 2: Application and possible obstacles

The exact application process for trademark registration varies from office to office, but in practice all offices evaluate both the formalities of the application as well as so-called absolute obstacles to registration. These refer to non-negotiable reasons that preclude the registration of the trademark, such as lack of distinctiveness, misleading marks, or the trademark being contrary to law or morality.

Furthermore, the application may run into so-called relative obstacles, which in practice are usually prior intellectual property rights. The procedure for examination of relative obstacles varies between offices. Some offices research relative obstacles as part of the application process – possibly issuing office actions because of them – while others do not.

If your application requires additional information (or if you have been informed of any obstacles), the office will issue an office action. The next step will be to file a response in which the required details are corrected.

Once your application is ready to be approved, or has been approved, it is advertised for any oppositions. During the opposition period, other rights holders can file an opposition against the registration of your trademark.

Phase 3: Registration and renewals

Once all office actions and oppositions have been processed and your trademark has been approved, it will be entered into the trademark register.

A registered trademark is valid for ten years. You can renew your registered trademark every ten years without limitation, so in principle a trademark is a perpetual right for you. However, to maintain this exclusive right, you must ensure that your trademark is used actively enough in its intended context.

It is important to remember that even after registration, your exclusive right to your trademark is not an automatic one. As the trademark holder, you must actively ensure that other parties are not infringing on your rights. For essential trademarks, we recommend a monitoring service that enables us to respond swiftly to any trademark applications that may be confused with your valuable trademark.