Brand protection through trade mark registration: a vademecum

What is a trade mark®?

A trade mark is a name, symbol or, more generally, a sign whose function is to link the product or service provided to a specific business entity so as to distinguish it from identical or similar products or services provided by other companies.

Registering the trade mark allows its owner to exercise exclusive use over its brand while preventing unauthorised use in the territory where registration has been applied for. The trade mark thus occupies a fundamental function in a company’s marketing strategy, creating an unequivocal link between the company and the recipient of the products or services that the company offers.

The scope of registration: goods and services

We have seen how registration of a trade mark confers on its owner the exclusive right to its use. However, this exclusivity does not apply to all existing goods and services, but only to those goods and services identified in advance when the application is filed.  For this purpose, there is an international classification (the so-called Nice Classification) that identifies 45 classes of goods and services. When applying for trade mark registration, you must “associate” your trade mark with at least one class of goods and services.

If one of these classes is omitted, a third party can freely register a trade mark for the unspecified class.

For this reason, it is essential to identify at the outset in which class the product or service you intend to offer to the market falls.

Where and how to register the trade mark

Once the classes have been identified, the next step is to identify the state or states in which you intend to apply to register your trade mark. Just like the choice of classes, identifying the territory in which you want to apply for registration is a pivotal and crucial step in the trade mark registration process for two orders of reasons. The first order of reasons relates to the territoriality of the trade mark, whereby the non-registration of the trade mark in a given country means that it can be freely registered by other parties. The choice of target countries will depend fundamentally on the geographical circulation of the product or service at the time of registration and on the company’s expectations in the medium term.

The second order of reasons relates to the registration requirements, which may vary according to the territory chosen. Each country, in fact, has specific procedures and fees for registering a trade mark within its territory.  Without an in-depth analysis of these requirements, one runs the risk of having one’s application rejected, with the consequent loss of the resources spent on the procedure.

Trade mark requirements and characteristics

In order for a trade mark to be registered, it must meet the following requirements:

• Lawfulness: it must not be contrary to law, public order or morality. It must not be likely to deceive the public, in particular as to the geographical origin, nature or quality of the goods or services.
• Distinctiveness: Signs that are devoid of distinctive character, and in particular those consisting solely of the generic names of goods or services or descriptive indications referring to them, cannot be registered as trade marks.
• Originality: It is crucial to make sure, by means of a prior search, that there is no registered trade mark identical or similar to the one you intend to register, as the trade mark must be the identity of the company in order to guarantee the quality and origin of its goods and services.

Once these requirements are met, all representable signs may constitute trade marks, be they words, names, designs, letters, numbers, colours, shapes or sounds of the goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one company from another; and be clearly stated in the register so that the subject matter of the protection granted to the proprietor is clearly and precisely identified.

Aiternalex professionals take a strategic approach to trade mark protection, following their clients from the design phase through to the management and exploitation of their national and international trade mark portfolios.