Trademark and brand

In the framework of the EU's intellectual property, a trademark is a sign that identifies a company. It allows to distinguish one brand from another, or, more specifically, to distinguish the products or services of a company from the products and services of another company.

In fact, any distinguishing sign can be considered the trademark: it can be a word, a design, a logo and even a particular shape, color or a sound. In particular, a registered trademark is a sign considered by law as worthy of legal protection and property right. Any sign that can characterize the company, can be registered, becoming the company’s trademark. For this reason, a trademark is a legal concept that is different from a brand, which is frequently used in marketing studies. It is possible to say that a brand is what you protect when you want to register a trademark. Every consumer, who knows a company - has an idea about its products and services as well as a general idea about the company as such. This idea is the brand.

You can check if your desired trademark is available by requesting a trademark due diligence procedure from us!

European Union intellectual property office (EUIPO)

Every EU Member State has its own intellectual property Office, but EUIPO is currently becoming more fundamental as the trademark and design registry for all EU member-states. An application to obtain a registration of your trademark can be filed to EUIPO for a set fee, which grants an exclusive right and a legal protection against infringement within the internal market of the EU. The EUIPO made possible the registration of almost 120 000 trademarks during the last year and it played a crucial role in the harmonization of national trademark systems.

Trademark registration in EU

The company that registers a trademark obtains an exclusive right to use it together with legal protection. In this way, the trademark itself can gain a value, which can grow with time, according to the value and reputation of the brand. The trademark holder can prevent the use of a similar trademark for a similar business purpose if unauthorized third parties undertake such attempt. Therefore, it is very convenient to register a trademark, if you want to prevent a competitor from using a similar sign to identify its products or services.

The trademark holder has the right to use well-known symbol ®, making it clear that no other company can use this trademark, because it has already been registered and is under legal protection.

Registering a trademark can also give you the possibility to reach agreements for franchising contracts, gaining a share for the use of the trademark made by the contractors. In such manner, the creation of a chain becomes possible.

Nonetheless, the registration could be rejected if it does not meet specific requirements. In particular, the requirement of distinctiveness means that, for example, words describing company's goods or services are too generic, implying it cannot be registered as a trademark.

If you have any questions or you require legal assistance in registration of a trademark in European Union – contact our lawyers directly or read our F.A.Q. section. Our field of expertise includes intellectual property rights and litigations – we can help you reach your goals!

Trademark protection in EU

Once you obtain a registration that is issued by EUIPO, you have a legal protection against third parties who file an application to register a similar trademark in a similar business field. In this case, you can raise an objection directly before the EUIPO by filing a notice of opposition.

Above all, you have a legal protection against any infringer - any competitor that is using your trademark without your authorization. In this situation, it is advisable to send a cease and desist letter, making the infringers aware of the possible consequences.

Depending on the circumstances of the infringement, you can endeavor to reach an agreement with the counterpart by means of a mediation process or you can directly bring legal action before the competent Civil Court with the advocacy of a lawyer. If the trademark is registered by the EUIPO, the competent national Civil Court of an EU Member State is entitled to order enforcement measures to prevent the infringement in all EU member-states. It is important to notice that these measures can anticipate legal protection even before the final decision, since the competent Civil Court can also issue preliminary injunctions effective that have power in other EU countries.

Often, the concept of trademark infringement coincides with the crime of counterfeiting, but not all trademark infringements can be considered counterfeiting.

Trademark protection in the U.S.A.

Trademark protection in USA dates back to the colonial period when American Common Law recognized some Intellectual Property rights. This tradition has its trace in history, because many American companies thrive on their marketing strategies. These companies know the importance of registering and protecting their trademark in order to promote their brand.

For this reason, registering a trademark in USA is rather quick, cheap procedure compared to other countries, and even unregistered trademarks may benefit from a certain legal protection if they have already been used in commerce. If this is your case, you must be able to prove that your use of the trademark is well established in your interstate commercial activity. This is not always easy to prove and it is not cost-effective to take position against your competitor if you skipped your trademark’s registration stage.

At a federal level, the United States Patent and Trademark Office (USPO) manage trademark registration in USA. Because of the legal value of the commercial use of trademarks, it is feasible to enter the American market before applying for a registration. Nonetheless, it is also possible and it is often advisable to file the so-called 'intent to use' trademark application. You can file an intent-to-use (ITU) application if you make a sworn statement of intention, but be aware (!) that in case of legal dispute you must prove your efforts for 'using in commerce' your trademark soon after the application date. Later, with a series of specific procedures, you should be able to convert the (ITU application into the ordinary one (use-in-commerce application).

Before any application, is important to conduct a thorough research of possible trademarks that could be confused with yours. Attention! This research is under responsibility of the applicant. USPO offers a search system (Trademark Electronic Search System, TESS) that can be used conducting this research, but it must be kept in mind that the search engine does not take into account trademarks that are unregistered at federal level, but are used in commerce, which can even prevail over registered ones.

Descriptive marks can be protected (so-called weak protection) only if they are considered distinctive because of their use in commerce for more than 5 years. The federal Office adopts strict parameters to assess the Class of products or services to which your trademark is related. In order to avoid likelihood of confusion or many other grounds for refusal of registration that may be found by the Office, you should consider asking for legal advice.

Trademark protection in China

The Chinese market is huge and developing so that there are many advantages for registration of your trademark in the registries of the Trademark Office of The State Administration For Industry & Commerce of the People’s Republic of China (SAIC).

Since the TRIPs agreement entered into force, the legislation on registration and protection of trademarks in China has become more and more similar to the European one. Nonetheless, the process has been gradual and not completed because the TRIPs agreement provided only ground rules that could be implemented by the States, parting the agreement according to their legislative situation in the long term. Companies that do not promptly register their trademark in China may deal with many issues when trying to fight the counterfeiting of their products in order to gain trademark protection in China.

If you fail to register in time, there is a big risk that even before starting your expansion across the Chinese market, your trademark could have been already 'copied' and registered in China by a local company.

In fact, unlike Courts in Europe and United States, Chinese Courts can completely refuse the worldwide common practice of granting protection to non-registered trademarks of well-known companies. For example, in 1996 a Chinese clothing company registered a graphic of a horse identical to the Ferrari's one. The Chinese Trademark Office rejected Ferrari’s opposition to the registration, arguing that the Chinese company applied for the registration of the graphic first (first-to-file principle). Ferrari appealed the decision objecting that the symbol was recognizable all over the world, including China, as the symbol representing Ferrari brand. After 11 years of proceedings, in 2007, the Beijing First Intermediate Court decided that the Ferrari's horse graphic was not a famous trademark among Chinese consumers and it was not worthy of legal protection, although the name 'Ferrari' was.

In nearest future the situation might change due to the development of Chinese technology and commerce, which makes Chinese companies interested in trademark protection as well as the European and American ones, therefore the competition might become even tougher.

Taking into consideration the fact that the mere usage of the trademark without registration is legally irrelevant, you should act ahead of starting your commercial activities. This is also important because of the fact that the effects of legal protection in China enter into force from the moment of registration instead of the moment of application and that the ordinary time to obtain a registration is about 2-4 years.

Confidus Solutions

Confidus Solutions will help you to evaluate all possible options and choose the most efficient solution in order to achieve your personal goals! We have many years of expertise in this industry and our experienced agents and lawyers will help you to register and protect your intellectual property! If you require more information – check our offered solutions or contact us to get a unique offer!