What issues need to be considered in choosing and managing a company’s trademarks?

Registration

  • Focus on the company name or products.
  • Marketing should decide which trademarks to register.
  • Consider registering products names in local markets.
  • If companies are acquired, consider registering trademarks for new products or company names if no trademarks are already registered.
  • Carry out a trademark search before trying to register new trademarks, to see if they are available and what other similar marks are already registered.

Ownership

  • All trademarks should be registered and owned centrally by one company (holding company if possible).
  • Where it is not possible to register ownership with the holding company, discuss with marketing which subsidiary should be owner.
  • If companies are acquired which already have registered trademarks, ownership should be transferred to the parent in the long term (check the share purchase agreement for restrictions).
  • All changes in company names, address etc of the owning company must be forwarded to the local trademark register.

Registration Process

  • Obtain a costs estimate for any proposed registrations. (Roughly speaking each trademark costs 5,000 Euros to register and maintain over a 10 year period).
  • For international or expensive multiple registrations also obtain prior authority from marketing.
  • Decide which classes the trademarks need to be registered in. Note in some jurisdictions classes may differ as not all countries follow the Nice Classifications.
  • Decide which countries the marks should be registered in. Don’t forget the EU.
  • Consider extending an EU mark or local mark once registered to an international trademark.
  • Consider whether any non-treaty countries need to be applied for in addition.
  • Consider whether logos or Chinese character registrations are required in addition.
  • Local trademark lawyers usually have to register trademarks due to local restrictions on who can communicate with the trade mark and patent office.
  • Keep a all registrations and applications in a table to have an overview of the portfolio.
  • Update this table with all changes as the process moves forward to registration.

Watch Notices

  • Use a professional trademark watch service to monitor registrations of marks similar to your trademarks worldwide.
  • Watch “word” trademarks for all of your registered trademarks in the classes in which they are registered.
  • If new trademarks or classes are added to your portfolio the watch services should be changed to cover new classes and trademarks.
  • Watch “picture” trademarks for any logos that you have registered.
  • Watch notices usually arrive on a daily basis.
  • All notices must be checked promptly as deadlines for opposing the registration of trademarks are very short. If missed, no appeal can be made out of time.
  • Enter deadlines contained in watch notices into a critical dates, reminder book.

Trademark Disputes

  • Obtain authorisation from relevant persons before initiating any dispute procedure.
  • All disputed trademark issues should be entered into your trade mark table.
  • All deadlines for taking actions in dispute matters should be entered into a critical dates reminder book.
  • Local trademark lawyers usually have to be used to dispute trademarks due to local restrictions on who can pursue an action with the trademark and patent office.

Renewals

  • Trademark protection in all jurisdictions is for 10 years usually from either the date of filing or the date of registration of the application.
  • Renewals are not automatic and if a trademark lapses someone else can obtain the trademark.
  • Check the critical dates reminder book monthly for all pending renewals.

Original Certificates

  • When a trademark is registered you will be sent the original certificate. This proves ownership of the trademark.
  • Check that the details on the certificate are correct i.e. trademark, class, address, owner etc.
  • Update your trademarks table with all renewal dates, registration number and other details.
  • Enter all deadlines, in particular, renewal dates in the critical dates reminder book, with reminders.
  • Inform marketing that the mark has been registered – as it must be used in order to protect it from lapsing for non-misuse!

Brand Awareness

  • Obtain regular information from local marketing departments on our use of trademarks.
  • Centralise storage of this information as this will help if you need to provide information quickly to oppose registration of a trademark.

Help

For assistance with trademarks or any other IT legal issues contact:

irene.bodle@bodlelaw.com
www.bodlelaw.com

To register for my newsletter click here

______________________________________________________

Other related articles: