What is trade mark?
“Trademark” means any visible sign capable of distinguishing goods or services of one person from those of other persons; it includes words, designs, letters, numerals, colours or the shape of goods or their packaging or the combinations thereof.
What should I do before using a trade mark?
It is important to make sure your trade mark will not infringe any registered or unregistered trademarks which already exist. The consequences of not checking whether your trade mark is available for use before starting to use it can be serious.
You could be sued for trade mark infringement, be forced to stop using the trade mark and be forced to pay damages and costs.
While a search is not only critical, it is also fairly complicated and should be conducted by a specialist. The specialist’s search will cover identical trade mark applications and registrations as well as any confusingly similar trade mark applications and registrations that could prevent you from using and registering your trade mark.
How do I protect my trade mark?
You need to obtain trade mark registration.
Why register a trade mark?
There are a number of significant advantages in registering your trademarks including:
- The exclusive right to use your trade mark in relation to the goods/services covered by the registration throughout the country covered by registration
- The ability to prevent the use or registration of the same or any confusingly similar trade mark for the same or any confusingly similar goods or services + the prevention of infringement of a trade mark is easier, less time consuming and less costly in cases where a registered trade mark is held as opposed to proceedings based on unregistered rights.
- Registration allows for the effective appointment and control of licensees and franchisees. Trade mark registration in one country can assist trade mark registration in other countries.
Can all trademarks be registered?
No. A trade mark cannot be registered if it is not capable of distinguishing your goods or services from the same or similar goods or services of other businesses in the market place.
In general trademarks that cannot be registered include:
Those that conflict with an earlier registered trade mark, descriptive words, laudatory words, common surnames, common geographical names, deceptive names, sounds, smells
How long is the trade mark registration process?
The period from application to registration is approximately not more than three months, assuming there are no major objections or oppositions.
Trademarks Eligible for Registration
Any trademark that is capable of clearly distinguishing goods or services of a person from those of other persons shall be eligible for registration.
A trademark may be registered in black-and white or color. A trademark, which is registered in black-and-white, shall be protected in all color combinations; a trademark, which is registered in color, shall only be protected in the color combination in which it is registered.
A trademark eligible for registration may include elements which are not subject to protection unless they decrease the distinctive character of the trademark or infringe the rights of other persons.
Trademarks non eligible for Registration
The following trademarks may not be eligible for registration:
A trademark which consists of sound or smell;
A trademark which is incapable of distinguishing the goods or services of one person from those of other persons;
A trademark that is contrary to public order or morality;
A trademark consisting exclusively of sings or indications which designate the kind, quality, quantity, intended purpose, value, geographical origin of goods or services, the time of production of the goods or rendering of the services, or other characteristics of the goods or services:
A trademark consisting exclusively of signs or indications which have become customary in the current language use in relation to such goods or services for which the registration of a trademark is applied for, or which have become customary in economic and business activities:
A trademark consisting exclusively of a shape which results from the nature of the good itself or that is necessary to obtain a technical result of the good or that gives substantial value to the good;
A trademark that is likely to mislead the public or the business community, in particular as regards the geographical origin of the goods or services concerned, or their nature or characteristics;
unless authorized by a competent authority, a trademark which is identical with or an imitation of or contains an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by any state, intergovernmental organization, or other organization created by international conventions.
A trademark that consists exclusively the Surname of the applicant,
A trademark mark that consists exclusively the full name of an alive individual with out his consent.
Types of Trademark
Product Mark. is a mark that is used on a good or on a product rather than on a service.
Service Mark. is similar to the product mark but a service mark is used to represent a service rather than a product.
International trademark classification
International trademark classification is established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”), published by the World Intellectual Property Organization (“WIPO”). The products for which trademarks are registered are categorized using the 45 product classes of the International Classification of Goods and Services under the Nice Agreement. Classes 1 to 34 are used for goods and classes 35 to 45 for services.
How long does a trade mark registration last?
A trade mark registration lasts for 7 years from the date of the application and can be renewed indefinitely for further periods of 7 years. Trademarks can be restored and renewed within 9 months from the date of expiration. No evidence is required for a restoration application.
Does registering a Trade Name also mean that my trade mark is protected?
No. Commercial law is different from trade mark law. You cannot stop someone from using a trade mark when it is similar to yours merely by registering your Tread name.