Protect the marks that are important for your company
February 12, 2018
Have the marks that are important for your company been protected? Every company should consider protecting the most important marks and brand elements they use in their operations. Trademarks will have an increasingly important role in the protection of various new concepts and services in the future.
The marks used in the commerce of goods or services can be protected with trademark registration. A trademark can be e.g. a word or a logo. It gives the owner the right to prohibit others from using the mark in question or a mark that can be confused with it. A trademark is separate from the company’s business name, although sometimes they can include the same word.
Here are some tips to ensure the protection of your trademarks:
1. List all the marks used by your company and choose the most important ones to protect
Your company may have many different marks in use in its business operations. List all the marks used by your company and collect data on the different identifying marks you use. For unregistered marks, consider which of them would be important to be register.
2. Think about where you want the marks protected
A trademark offers protection in certain areas; it may be just one country or a combination of countries. You can apply for a trademark e.g. in Finland or in the EU. Because there is a trademark application fee, consider which areas are important for your company to have protection in today and in the near future. Applications can also be staggered within the framework of the so-called period of priority. Something to keep in mind is that some European countries, e.g. Norway, are not part of the EU so a separate application is required.
3. List the goods or services to be protected
In the application disclose the goods or services that you want to protect with the mark in question; they are divided into trademark classes. Do not list any goods and services that are not of importance, because having a higher number of classes increases the application fee. Additionally, if the trademark has not been used for the specific goods and services within a certain time period, the trademark could later be forfeited. In some countries, like the United States, proof of use also must be submitted at specific intervals.
4. Check potential obstacles
Once you have determined the area and the goods and services subject to the protection application, it is possible to assess if there are existing trademarks that will impede the trademark being applied for. A mark can also describe goods or services in such a generic way that the trademark cannot be registered. Even though you will ultimately get the answer by applying for the trademark, it still makes sense to investigate the possibility of any obvious obstacles in advance. The research should be done before the use of the mark has advanced too far. So when protecting your own rights, you must also make sure you don’t infringe on other trademarks.
After these steps, it’s time to compile the trademark application. It’s usually a good idea to use professional assistance in the research and application process.
Along with IPR, brand asset management is important for a company. If you need help with trademark-related research, the application processes or other IPR consultation, you can apply for an innovation voucher from Business Finland to fund the assistance >>
Markus Myhrberg, Partner, tel. +358 40 505 5343, [email protected]
Jaana Saarijärvi, Associate, tel. +358 50 377 5285, [email protected]