April 14, 2019
A trademark is the road to success for your company. However, when registering a trademark, it is worth your while to turn to an expert early on to avoid unpleasant surprises. Kolster’s IP lawyers Maria Ojala (MO) and Juha Myllyoja (JM) explain how you can best utilise your trademark.
1. Register with the help of an expert
A company can itself register a trademark on the basis of information available on the internet. However, the process or registration involves challenges that you cannot necessarily take into account if you proceed alone. So, it is worthwhile to accept help from an expert early on so as to avoid any pitfalls.
MO & JM: “We carefully evaluate potential problems that a company may bump into in the registration process of a trademark. A typical problem relates to the customer taking a fancy to a particular mark, but it later turns out that there are dozens of similar marks on the market. We always carry out thorough availability surveys and extensive advance research of trademarks. We have available to us extensive databases covering the entire world.”
2. Pay attention to classification
There are specific, precise classifications for the trademarks of products and services. The most common challenge to tackle is how a specific product or service is classified. Even if the company found the exact correct classification for a single product or service, it is worthwhile to examine with an expert what else can and makes sense to include in the classification.
MO & JM: “Classification is difficult to make on your own, and the biggest damages result from thinking that this is an easy task. No two companies are alike. Together with the customer, we go carefully through what products and services it is worth their while to include in the scope of protection of their trademark, specifically. The most common mistake in a do-it-yourself classification is that something important was left out or irrelevant products or services were included. Availability may also have been increased in wrong classes, and the use of alternative and supplementary systems of protection or protection forms has not been fully utilized. In that case, the trademark has not got protection to the extent needed.
3. Avoid the most common mistakes
In trademark registrations carried out on one’s own, the utilization of databases and protection potential often lack.
MO & JM: “When applying for a trademark, it is important to carry out identicalness searches to find out whether similar marks already exist on the market. Often such searches are made to incomplete databases, which means that the protection possibilities are not thoroughly examined. It is possible that the search does not take into account abandoned, not renewed, or cancelled trademarks. An expert is able to interpret the search results correctly. This way, the company can avoid the danger of confusion with another mark and can asses the scope of protection of different marks and their commercial strengths. If need be, a new trademark can be found, or the mark be so modified that there is a clear distinction between it and existing trademarks.
4. Use your trademark correctly in marketing
It is important to take into consideration matters relating to trademarks in the company marketing as early as its planning.
MO & JM: “Always remember to use a registered trademark in the form in which it was registered. It is also a good principle to use the symbols ™and ® in connection with your trademark. The mark ® signifies a registered trademark and ™ a trademark which is not yet registered, but has become a trademark through with its usage, for example. If a logo changes, remember to protect the new version, too."
5. Gather material on the use of the mark
It is a good idea to collect diverse marketing material on the use of your company’s trademark from early on. The material should show when the trademark has been used and to what extent. Situations may arise later on when you need to show that the trademark has actually been used.
MO & JM: “If a trademark has not been used for more than five years, another party may seek to cancel the registration. A mark is not automatically cancelled even if it had not been used, but a long period of non-use makes it vulnerable. For example, the EU trademark office recently took the view that McDonald’s had not submitted enough evidence on the use of the BIGMAC trademark and consequently cancelled its registration.
6. Prevent your trademark from becoming generic term
A trademark turning into a generic term is a serious threat to the trademark. For example, aspirin, nylon, bikini and kännykkä have over the years changed from trademarks into common nouns. In the worst case scenario, this results in the company losing its exclusive right to the trademark.
MO & JM: “Distinguish the trademark from the surrounding text, capitalise it, or use an upper case first letter. Do not inflect it or make it into a verb, use a common noun alongside the trademark, and use the trademark for several different products. Also monitor how the trademark is used by the media, dictionaries, and the competitors, and if need be turn to experts. Draft internal instructions on the correct use of the trademarks for your own people but also for retailers and cooperation partners.”
7. Correctly tackle infringementsIf you notice that your trademark is used without permission in a competitor’s marketing, for example, it is important to react immediately, discuss the situation with an expert, and correctly tackle infringements. Otherwise the goodwill and value of your brand may suffer.
MO & JM: “If a company remains passive for long in an infringement case of a trademark, the result may be that the infringement can no longer be prohibited . It is worthwhile to get involved in a correct manner, preferably with the aid of an expert.
Read more on trademark registration here.