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Pernilla Brocker — 18/06/19

Some advice on registering a trademark

As global trade grows and digital services become more commonplace, the challenge of protecting goods and services becomes harder – for both established companies and newcomers. Many companies find it extremely hard to be unique, because they no longer compete just within their national borders. The opening up of global trade brings potential rivals from across the world.

As a company, you have a lot to gain from taking strategic control of your trademark protection, legally and digitally. Improved defence against competition, copying and trademark dilution are some of the desired effects.

Why should you legally register your trademark?

Registering your trademarks brings many advantages. Here are the two principal, most important reasons:

  1. Exclusive rights

The range of available goods and services grows constantly, which leads to a trademark becoming an all-important symbol for a company’s profile and reputation.

Exclusivity means that no-one else has the right to use your trademarks on their goods and services, or in their marketing for those goods and service, in those countries your protection covers. It can also give you rights to digital assets, for example domains.

  1. Increased value

A registered trademark is a concrete asset for your company that, if necessary, can be licensed out or sold. These rights can help you attract new business partners and investors, because exclusivity increases a company’s value.

 

Why should you register your trademark as a domain name?

In the same way that it is important to protect your trademark legally, there are many reasons why it is wise to protect your trademark as a domain name. Domains, today, are much more than just web addresses – they are digital assets that create value for your company. Here are two reasons why it is important to register your trademark as a domain name:

  1. Create availability

Domains are essential for branded websites and email addresses.

  1. Protect against digital infringements and fraud

Most of the trademark infringements taking place today happen online. On the internet, domains are important security mechanisms. By securing them, you prevent other people from using them in ways that could hurt your company.

 

Get there in good time!

It is very common for companies to start thinking about registering trademarks in connection with product launches or commercial campaigns. There’s always a risk, though, of trademarks encountering obstacles during the application process. Often this can happen because of existing registrations for similar trademarks connected to similar goods or services. This can bring the launch or campaign to a sudden halt, because the company doesn’t want to risk committing trademark infringements against the existing rights holder.

Therefore, it is much wiser to check if trademarks are legally available at the idea stage of the project. One tip is to find a trademark lawyer who can help you make sure that no-one else has registered the name, before you invest in a trademark application. That way you minimise the risk and can save yourself both time and money.

But don’t forget to check the availability of the domains that you have in mind at the same time!

Because most domains operate on a “first come, first served” basis, we recommend that you ALWAYS register your domains BEFORE you make any trademark applications. Once the trademark is registered and the launch has taken place, similar domains will become much more attractive to criminals on the web. Domain pirates commonly operate by monitoring publicly filed trademark applications, then immediately snapping up corresponding domains.

Unfortunately, these are the kinds of pitfalls that we see many people encounter when launching new trademarks. The consequence is often that domains which could have been acquired simply and cheaply, instead end up costing a lot more money or have to be allocated through a dispute process (in regions where such processes exist).

 

Create a strategy

There are three key strategic tips you should consider when registering your trademark.

 

  1. Word or logo?

There are many ways to register your trademark, but the two most common are to register a word and/or a logo. There is, of course, a strategic difference between these two trademark registrations. By protecting a word or phrase, you gain exclusive rights to the word itself, for example, iPhone. This is often the most useful protection. It prevents others from creating similar or identical trademarks, and it stops competitors from using your trademark in their marketing, for example in search engine optimisation. It also means that others cannot use your trademark in their logo or logotype.

Logo trademarking protects a visual design, for example iPhone’s famous apple. Many manufacturers brand their product with a symbol so consumers, as far as possible, recognise the brand and distinguish it from competitors. This means that it is at least as important to register the logo, if you don’t want others to legitimately market similar symbols that could be confused with the original.

  1. Geographic markets

Think long-term! Where are you today and where will you be in two to five years? Every country has its own authority where you can apply to register your trademark, but be aware that the application process in some places can take up to two years.

This means that you should make your trademark applications early!

Because Sweden is an EU country, companies here have the option of applying for an EU trademark, that applies across the entire EU. It’s a perfect start for companies that know, even as a start-up, that they want to establish themselves overseas in the future.

  1. Classification

The third factor – and this is an area where companies often need legal assistance – is about specifying and classifying goods and services in the trademark application process.

Taking the system we have here in Sweden and the EU as an example, there are 34 different classes of goods and 10 different classes of services.

Again, it’s important to think long-term.

For instance, are you absolutely sure that you will only sell shoes, OR do you think that perhaps you might also want to sell hats with the same trademark in the next 2 years?

Classification is an area where companies that make their own trademark registrations often slip up. They register their trademarks according to how their business plan looks at that precise moment, but two years down the line they may have established themselves in more countries and sell more types of goods or services than they had anticipated. The knock-on effect is that they have to operate in those markets without exclusivity rights. This often leads to legal problems and higher costs – and it is not at all certain that they can get extended trademark protection for those ventures

 

At Dotkeeper and AWA, we are experts in digital and legal trademark protection. Please get in touch for more information about how we can help you.