Find out the procedure for trademark registration
1. What is a trademark and what is its role?
2. What do I have to do before I register my trademark?
3. What does it mean to have a trademark?
4. What is the legal procedure for trademark registration?
5. What happens if you abusively use another trademark? Example
The trademark is an instrument which helps in distinguishing the products and services belonging to one person or company from the other ones which are present in the market, so that the products and services offered by you can be easily identified.
In order to benefit from the advantages offered by a trademark, you have to register this right with the competent authority from the territory you want your trademark to be protected. The authorities are:
– Romanian State Office for Inventions and Trademarks (OSIM);
– Office for Harmonization in the Internal Market (OHIM);
– World Intellectual Property Organization (WIPO).
Before starting the legal procedure for trademark registration, you have to decide which type of trademark you want to register:
– one or more words representing a name, a slogan, written with normal letters (word trademark);
– a graphic representation which doesn’t contain neither letters, nor numbers (figurative trademark);
– a name written which a special graphic and/or in colors or a name accompanied by a graphic element (combined trademark);
– the shape of a product or of the package or any other tridimensional specific sign which allows the identification of the product or of the service (tridimensional trademark);
Afterwards you will have to decide where you want your right to trademark to be protected (at a national level, European level or internationally).
When you arrive to a conclusion regarding the above, you will need to conduct a preliminary research in order to determinate if the trademark you want to register is similar or identical with a previously registered trademark or with a trademark which in pending registration. For this, the specialist’s advice is essential because the specialist will know exactly which steps to follow in order to draw-up a complete and conclusive study.
Why is this study so important? For saving time and money by determining the success rate of the completion of procedures for your trademark registration. More precisely, if after concluding the study the consultant identifies trademarks which are similar or identical to the one you want to register, there is a high possibility that the owner of that trademark will file an opposition to your registration and 100% chances that the authority, at its own initiative, will also be opposed.
If you find yourself in this situation, the necessary time for solving such an opposition is of about one year and in the end you risk that your trademark registration will be rejected and the time and money you have already put into this will be lost.
When you come to the conclusion, together with the specialist, that your trademark can be registered, the steps are the following:
– Filing an application with the competent authority;
– Publication of the trademark in the Official Bulletin. Thus, third parties are informed of the trademark registration request and have two months time to submit any objections they might have;
– Solving objection or appeals of third parties (if any);
– Background check (is performed by a specialized service within the authority);
– Obtaining the certificate and registration in the Registry of Trademarks;
The taxes you will have to pay for this procedure vary depending on the type of trademark you wish to register and the territory were the protection will be granted.
In practice, the duration of the trademark registration procedure calculated from the time you file the request, up to the moment you receive the registration certificate is of around one year (if nobody files oppositions to your trademark registration).
The whole procedure has to be carefully followed and checked so that all payments are done in time, otherwise your request for registration will be rejected and you will have to do it all over again from the beginning.
The certificate will be valid for 10 years, after which you will have to complete the procedures for extending your right over period of times of 10 years.
The abusive use of a trademark or its counterfeiting by persons/companies which are not its owners is punishable by law with jail time and/or pecuniary damages.
In Europe, these acts are better known as parasitic (free riding), and means that an agent of the market lives as a parasite on the expense of the trademark belonging to others, benefiting from the efforts and reputation of others. In other words, trying to attract for its products the advantages conferred by the reputation of the other trademark.
For example, a case of interest is the one of two trademarks from France, between France Telecom and Communication Media Services, involving the brands “Pages Jaunes” and “Pages Soleil”. The French court sentenced Communication Media Services, considering that the use of the trademark “Pages Soleil” was likely to cause confusion with the well-known trademark “Pages Jaunes”. Their reason was that the word “soleil” (sun) is reminiscent of yellow (jaune) and also has acoustic similarities, having the same number of terms and syllables. The French law punishes facts likely to cause confusion, which means that in order to be in the presence of a fact of unfair competition, it is not necessary to already have produced confusion, the risk of such confusion to be made being enough.
In conclusion, we quote Niall Fitzgerald, chairman of Unilever Corporation: “A trademark is a deposit of trust that matters even more when choices multiply”.
In an increasingly competitive environment, the trademark becomes the image of the products and services and it directly contributes to their success. At the same time, the trademark is an important tool for organizing the market and an effective mean of advertising, being a guarantee of quality.