As a business owner, you invest so much time and funds branding your company name and logo, that’s why it is important to protect them to prevent others from capitalizing on your intellectual property Rights; that what makes trademarks a key assets for every business. It helps you distinguish your products and services from others in the marketplace as well as associate them with your entity and its reputation; regardless, the niche your business is in, registering your trademarks is an important step as it allows you to strongly protect your brand against imitation, misuse and/or exploitation.
A trademark most often
protects intellectual property associated with companies, such as a word,
phrase, symbol or design used to identify and promote products or services.
Companies may also use a service mark, which protects their services in the
same way trademarks protect their goods. Trademarks are generally words,
phrases, logos and symbols used by producers to identify their goods. However, shapes, sounds, fragrances and
colors may also be registered as trademarks. In the past few years, trademark
laws has expanded to include trade dress and anti-dilution protection. Almost any word, name, symbol, or device
capable of distinguishing the source of goods may be used as a trademark
subject to few limitations.
Trademark examples can be
found everywhere and are sometimes surprising; for instance, a trademark may be
applied to colors, sounds and even scents but mainly the most elements that may be protected by
trademarks includes but are not limited to:
· Brand names.
· Product names.
· Logos and symbols.
· Slogans.
· Colors, such as Tiffany & Co.’s
“Tiffany Blue,” or the “Barbie Pink” trademarked by Mattel.
· Product shapes, like the Coca-Cola bottle.
· Sounds, like NBC’s three-tone chime.
· Scents, such as the distinctive fragrance
of Play-Doh.
· Fictitious characters like brand mascots.
In addition, combination or
composite marks can cover more than one feature, like emblems, which includes
both a name and a symbol.
For starter to use your
proposed trademark legally and safely, a clearance search should be conducted
to ensure your trademark can be used without infringing anyone else’s rights.
A trademark clearance search
will disclose any confusingly similar trademarks which have been registered or
which are in use, and which relate to the goods and/or services you are
interested in; it will enable your IP representative to tell you whether the
use of your proposed trademark is likely to infringe any registered or
unregistered rights for the same or similar marks, a trademark search will also
show whether an application to register your mark is likely to be successful.
The details of trademark
registrations are publicly available on a searchable database; as a
consequence, competitors who may be considering adopting a mark which is the
same or similar to yours will be deterred from doing so when they find your
registration on the Trademark Register, it also provides you the easiest and most
effective means of preventing others from using your trademark and/or one
similar to it, in relation to goods and services similar to those in which you
trade. To the contrary, trying to prevent others from using your unregistered
trademark involves multiplied expenses and difficulties of proving that you
have reputation in your mark in the area where the unauthorized use occurred,
and that the public is likely to be confused as a result of the illegal use of
your mark. Registration is the only way to guarantee unmitigated protection
across the country of application.
Yes, generally they are
because they convert the goodwill of your business in to a nationwide property right
which is protectable, and thereby increases the value of the goodwill of your
business and of course, registered trademarks can be readily assigned or
licensed, which is very important if when your business develops and you if you
want to franchise it or license others to use your trademark.
No, not all trademarks can be
registered. To be registrable, a trademark must be capable of indicating, in
the course of trade, a connection between you and your goods and/or services;
however, it cannot directly describe your goods/services, or a characteristic
of them, and it cannot be a word other people would ordinarily use in
connection with those goods/service to promote them. As such, trademarks which
consist solely of descriptive or laudatory and praiseworthy words, common
surnames, or certain geographical names, may not be registrable. A good
trademark is a distinctive trademark that stands out in the market, and is
easily remembered by consumers.
Firstly, the trademark
application will be examined by the Intellectual Property Office of the country
of application within two to four weeks of filing depends on the time frame of
the country in question (kindly check our jurisdictions tab to have the exact
time frame needed for each country). If no objections are raised, the
application will be accepted. If the Intellectual Property Office has concerns regarding
the registrability of the trademark, a detailed compliance report will be
published. The objections must be overcome before the application can proceed.
Your IP attorney must consider the objections, and need to provide you with proper
advices on the likelihood of overcoming the objections and how this can be
achieved. On your behalf he needs to prepare and file submissions arguing
against the objections raised in the compliance report; assuming all of the
objections raised can be overcome, the application will then be accepted.
No, a trademark acceptance is
just a step toward its registrability, if and when the application is accepted,
details of the application will be advertised; following the advertisement
there is around a three-month opposition period which as well differs from a country
to another of course (kindly check our jurisdictions tab to have the exact time
frame needed for each country), during this period third parties can oppose the
application provided they have grounds to do so. If no opposition is lodged, a
certificate of registration for the trademark will issue.
Assuming no major objections
are raised and the application is not opposed and it took a normal course of
actions, the process from filing to registration, should take about six to
eighteen months, once again it depends on the country of application (kindly
check our jurisdictions tab to have the exact time frame needed for each
country).
Once the trademark
registration is provided it must be renewed every ten years, indefinitely.
However, a trademark registration can be cancelled if it has not been used for
three years, or if it becomes a generic term. Therefore, in order to keep your
registration safe from cancellation, you will need to make sure that you use
your trademark properly by receiving experts’ advices regarding the proper use
of your trademark.
Trademarks can help a business
to differentiate what they make, do and sell from their competitors’ offerings.
Businesses can become more recognizable and attractive to consumers through the
use of their exclusive names, logos and other branding elements, because no
other businesses will be permitted to use such elements if they are protected
by trademarks. If you develop an invention, trademarks can help you to market
what you have made by using a trademarked name and logo, for instance, you can
avoid the risk of others attempting to portray your product as their own.
Through our
international offices and our relationships with foreign counsels, we are able
to prosecute and defend our clients’ trademarks around all of the Mena region.
Our IP attorneys work closely with our international practitioners in Egypt, United
Arab Emirates, Turkey, Morocco and more to ensure that our clients’ trademark
portfolios are properly protected and enforced in the world’s largest markets.
The IP attorneys in our international offices counsel clients operating in the
Middle East and North Africa, and we also have relationships with firms
throughout Asia, Australia, Europe and USA, giving us a truly global reach.
At Scutum IP
Law Firm our trademark team handles a broad range of intellectual property
matters, with particular focus on trademark in the Mena region. Equipped with
the industry knowledge, our attorneys provide tailored solutions to
multinational corporations in a broad range of industries in relation to
acquiring and maintaining intellectual property rights and to implementing
brand protection and licensing strategies.
We focus as
well on the enforcement, protection and commercialization of intellectual
property rights in general. We represent clients in the areas of trademarks,
trade secrets and other technology-related matters as well as clients involved
in company name and domain name disputes. We support our clients in
implementing a global protection strategies for their trademarks, coordinate
suitable searches to be absolutely sure that they have an original trademark,
and determine the necessary actions to protect and defend their IPR.
For more information on how we can assist you with trademarks please do
not hesitate to contact us.
Kindly note
that, the above information is simplified and must not be taken as a definitive
statement of the law or practice.