What is a trademark?

All businesses and individuals are engaged in a commercial circulation. In order to differentiate their services or goods from other providers on the market, the services or goods are offered under a specific provider brand. Thus, a trademark allows to draw a distinction between services and goods of different providers. In other words, a trademark itself represents an identity of the service or good. 

 

Legally speaking, a trademark is one of the intellectual property rights. A trademark is a legally protected mark or any combination of signs.

Why should you protect your trademark?

There are several reasons for trademark protection. The main reason is that only a registered trademark gives the owner of the trademark the right to prevent third parties from using a mark that is identical or misleadingly similar to his mark for the same or similar goods or services, without a consent.

 

In the event of an infringement, a special procedure is established in which the owner of the trademark can exercise his rights. An infringement in this case is considered to be an unauthorized usage of a trademark that is the same or similar to someone else's trademark and may mislead the average buyer. 

 

The second reason for trademark protection is the fact that trademark represents a significant intangible asset (property) of the company, which is crucial for its positioning on the market. Therefore, legal protection of a trademark, which is largely achieved through its registration, is recommended. This allows the owner to build his business image on the basis of his own trademark.

 

There are also other company-specific reasons for trademark protection. For example, a trademark is often one of the tender conditions in various public funding programs.

What are the types of trademarks?

There are several types of trademarks that can be protected. In practice, word marks are most commonly protected, however a logo, a combination of a logo and a word, figurative elements, three-dimensional images or color combinations may also be registered. 

 

Examples of different types of marks are available at this link.

 

In practice the main reason why a word mark is more oftenly protected, is because the name changes significantly less frequently than a logo or a particular figurative element. In case of logo protection, every change of a logo after the trademark registration, the protection of the trademark does not apply to the new logo, but only to the old one. Every change of a logo, requires a new registration process. 

 

However, certain marks cannot be registered. This is because of several reasons, which you can read about on this link. 

Where can we protect a trademark

The validity of a trademark is territorially limited. You can, for example, protect your trademark only at a national level. If such registration is made, the protection of a trademark is valid only in countries where the trademark is registered. If you are active in more than one country it is recommended to register your trademark at an EU level. In this case, the protection of the trademark applies throughout the European Union.

 

In other countries the protection of a trademark can be done through the so-called Madrid Protocol and the registration should be made through the World Intellectual Property Office (WIPO). However, in order to do so, the trademark has to already be registered (for example at an EU level), as WIPO only allows for a trademark protection to be expended to selected countries.

Which goods and services can be trademarked?

The trademark is always registered in connection to certain goods or services. These goods and services are classified into individual classes that can be found in Nice classification. The number of classes in which the trademark is protected reflects the cost of registration. Each additional class represents an additional cost. 

 

It is important to be very specific when defining classes. Once a trademark is registered, new classes cannot be added, they can only be reduced. In case you want to add an additional class, registration of a new trademark is necessary.

How do you know if your mark is still available and has not been registered by someone else?

Before deciding whether to register your mark or not, it is advisable to check its availability. For this purpose, we check the registered trademark databases: 

 

Database of European Union trademarks

 

Global Brand Database

 

In case you find an already registered trademark which is very similar to yours, it is important to check the classes (see paragraph above) in which the existing trademark is registered. If it is registered in other classes than the ones you want to apply to your trademark, this is not an obstacle for your trademark registration. 

What do we need to know before registering your trademark?

Before starting with your trademark registration process, we need to obtain from you three essential information:

  • What kind of trademark you want to protect (word, figurative or combination of both), 

  • where do you want to protect your trademark (national, EU, the World), 

  • what are your core goods or/and services.

What is the cost of trademark registration?

Trademark registration costs include the cost of paying administrative fees and the cost of our services. 

  1. The cost of administrative fees

 

This is related to several different factors. Firstly, it depends on where you want to protect your mark and secondly, it depends on the number of classes in which you want to protect the mark. The basic fees are: 

 

  • A fee for an European trademark: 850,00 EUR (covers 1 class) 

  • A fee for extending an European trademark: 300,00 CHF (fixed) + country’s’ individual tariff (cost calculator) 

 

An additional class for an European trademark costs 50,00 EUR (the cost of a third and every subsequent class is 150€). 

 

No VAT is payable for the administrative fees. 

 

2. The cost of Lemur Legal Services: 

 

The cost of Lemur Legal services is 250.00 EUR for the European trademark. VAT is payable for the service.

What does the registration process look like?

The process of registration begins with filing the application form. For an European trademark, the application has to be filed in electronic form (via online platform).

 

After EUIPO verifies that the formal conditions for the protection of a mark are met, the mark is published on a public platform. With this a 3-month timeframe for interested parties to file a statement of opposition to your trademark begins. An objection is raised if someone disputes the registration of your mark, which in practice, rarely happens. 

 

The trademark is registered, when all the fees are paid for and the 3 month period expires. It is important to know that the date of the registration is considered to be the date of filing and not the date when 3 months expire.

How long does the trademark protection last?

Registered trademarks usually last for 10 years, this is why maintaining your trademark rights through efficient renewals management is of fundamental importance. To prevent the cancellation of a registered trademark, trademark owners are required to periodically file their trademark renewal documents with the local trademark Office. The number of renewals is not limited, however for every renewal administrative fees have to be paid.