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