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How to Trademark Something — a Step-by-Step Guide

Julia RichardsDecember 2020
How to Trademark Something — a Step-by-Step Guide

Every country has a slightly different process on how to trademark something, but the general steps are the same.

Here is all you need to know about how to trademark your products, goods or services and so protect your intellectual property.

 

Can I trademark my business name?

The first thing to understand is that one doesn’t “trademark a business”. Trademarks are used exclusively to associate certain marks (whether those are sounds, words, colours, or other distinctive marks) with goods or a product. In the case of “service marks” (which follow the same procedure for registration in the UK), those marks are associated with a particular service.

An airline’s name, tagline and logo can all be considered service marks because they refer to a service being offered — flying people around the world.

“Reebok” and “Fila” would be trademarks because they refer to products or goods.

A brand is the public’s perception of your product or service. Trademarks are deeply connected to brands.

As for your business or company, that is the legal entity which conducts trade and has certain rights and limitations according to law. For example, Reebok’s company name is actually “Reebok International Limited”. Their company name is not registered as a trademark, but the following words are registered:

  • Reebok
  • Weebok
  • Hexalite
  • Blacktop
  • The Pump
  • DMX
  • And others.

The company “Reebok International Limited” has built a brand around its products which go by the name of “Reebok”.

 

Step-by-step guide on how to trademark something

Step-by-step guide on how to trademark something

Trademark applications are similar from country to country. In this article, we’ll use the UK as a model.

There are slight variations in the procedure for each country. For example, in certain jurisdictions, power-of-attorney might be required if you are not physically present in that country to file your own trademark. In the USA, you are required to have a “U.S.-licensed attorney represent you” at the trademark office if you are a foreign-domiciled applicant.

Whenever you choose to use us to register your trademark for you, we will help you with each of these requirements so that the trademark registration process goes as smoothly as possible.

 

Decide where to apply for your trademark

[image: https://pixabay.com/illustrations/map-of-the-world-background-paper-2401458/]

Trademarks are territorial. Registering a trademark in the UK does not automatically protect you in any other country.

That means that anyone in China can register your trademark and start selling counterfeit goods there, and it would be perfectly legal if you haven’t previously registered your trademark there. This is surprisingly common.

China is a particularly egregious offender in this matter, but it can happen in many other jurisdictions as well.

 

First-to-file vs first-to-use

Many jurisdictions use a “first-to-file” policy when determining who has the rights to a particular trademark. China strictly uses only this policy.

The USA, on the other hand, uses a “first-to-use” policy, which means that the first person to use a trademark is the one who has the legal right to its use.

This is why it is so important to file for a trademark in any country that you plan on selling your goods in. If you manufacture shoes called “Funky Dunky Sports Shoes” in South Africa but want to sell them in Europe, then you need to register the trademark “Funky Dunky Sports Shoes” in Europe to prevent someone else from selling shoes under that name in the EU.

There are provisions in many countries’ trademark laws for marks which are already “famous” or very well known.

In these cases, it is sometimes possible to claim rights to that particular mark, even if it isn’t registered, under an agreement called the Paris Convention.

But, unless you’re a huge worldwide name such as Coca-Cola or Puma, you’re unlikely to win any court case claiming rights to an unregistered trademark in a first-to-file jurisdiction.

Besides, registering a trademark is so easy if you have the help of experts by your side, and the costs of it are so much lower compared to expensive legal battles.

It just makes sense to register your trademark in all the countries you plan on doing business in eventually.

 

Trademark squatting

Trademark squatting

This doesn’t mean that you can blindly register trademarks in every single jurisdiction and leave it at that, however.

Almost all jurisdictions require the following to register a trademark as well as to keep it registered:

  • An actual intent to use the trademark.
  • Active use of that trademark (e.g. sales of the product) within a certain period of time (usually 3 – 5 years, depending on the jurisdiction) after the mark has been successfully registered.

If you don’t show an actual trade involving your trademark in that country, then your trademark’s status can be challenged, and you will lose your rights to it.

China’s modified Trademark Law of 2014 now also states that, if trademarks are not used for the duration of three years, the registration of the trademark can be challenged and the trademark revoked.

Some countries require actual use of the trademark before it can be registered, not only the intent to use it.

 

Establish the mark you want to trademark

Certain marks are allowed to be trademarked and others not, depending on the country in which you plan to register your trademark.

In Australia, for example, it is possible to register a plant as a trademark, according to very specific rules.

[suggested image: https://pixabay.com/photos/plant-succulent-potted-white-space-2004483/]

The UK is less liberal in what types of marks can be registered as a trademark. According to the IPO (Intellectual Property Office in the UK), only the following types of marks will be considered for trademark applications:

  • Words
  • Sounds
  • Logos
  • Colours
  • Or any combination of the above.

Before applying for your trademark, you need to go to the website of that jurisdiction’s intellectual property office and see if the type of mark you wish to register is allowed to be registered.

 

Establish the mark’s class(es)

Most major jurisdictions utilise the Nice Classification system (NCL) to determine a trademark’s class.

Depending on your jurisdiction, you might be able to assign your mark to more than one class in a single application.

In Switzerland, for example, you are allowed to specify up to three classes per application with no additional fees. China also allows you to specify multiple classes per application (it didn’t in the past), but it is recommended to file separate applications per class in China as it actually works out to be both cheaper and less complicated in the end.

 

Conduct a trademark search

Conduct a trademark search

Conducting a trademark search is not a requirement. But not doing it increases your chances of the mark being rejected — a costly mistake that could be avoided easily.

In first-to-use jurisdictions such as the USA and Canada, searching official trademark databases will only give you partial results. There are pros and cons to the first-to-use policy (as there are for the first-to-file policy), and the biggest con is that it makes registering a trademark more complicated due to the possibility that someone has already been using it in some remote part of the country but failed to register it.

Expert assistance is crucial to ensure the most comprehensive search possible when trying to determine if a trademark has been registered or used before.

All the countries we offer trademark registration services for providing a searchable, online database of trademarks. These searches can be conducted by company name, trademark ID and the trademarked word itself.

 

Filing the application

Filing the application

Once you’ve established the type of mark you want to register and the classes you wish to register them in, it is time to file an official application for it.

It is crucial to ensure you fill out the application 100 per cent accurately and completely in order for the registration not to be kicked back for “deficiencies informality”.

This initial process of filing the application and waiting for any response regarding “deficiencies informality” takes about a month in the UK. (In Taiwan, this step can take up to six months.) A “Deficiency in Formality” occurs when an error has been made in the filing format itself. This often occurs when the filer is inexperienced.

It should be noted that the UK has one of the fastest trademark application and registration times in the world. Even so, registering a trademark in the UK can take as long as eight months. (As a comparison, in China and in Hong Kong it can take nearly two years!)

 

Examination and addressing any objections

Examination and addressing any objections

The respective Trademark Office (IPO in the UK, USPTO in the USA, etc.) will then examine the mark and raise any objections if the mark is in conflict with:

  • An existing trademark
  • The rules of what can and cannot be registered as part of a trademark.

Although the UK uses a first-to-file system, it subscribes to the Paris Convention of 1883. By that convention, a “well-known” mark could be objected to even if it is not officially registered.

As for registered trademarks, if your mark is not distinct enough and could be confused with other marks, it will be kicked back as either completely rejected (in which case, the application is dead and is not allowed to move forward) or it will be objected to, awaiting your reply.

As an example, if you try and register “Reebok”, you will not receive an objection but rather an outright refusal. If, however, you tried to register, say, “Reeglebox”, there might be some concern that the mark is not distinct enough. The decision to proceed would then be based on your response to their objection. If “Reeglebox” is a new brand of sports shoes that you’re creating, registering that mark will be difficult as it might cause confusion amongst consumers.

If the mark is a new type of online storage service, however, you would have better chances of the objection being successfully argued against because online storage will likely never be confused with sports shoes.

This part of the process — examining, objecting, arguments countering any objections — takes approximately 3 to 5 months in the UK. (In the EU, it takes about one month; in the USA, 6 to 9 months.)

Once the mark has been through this rigorous initial test and has passed all objections successfully, it is published.

 

Publication in the trademarks journal

After your trademark’s examination report has been issued and no outstanding objections to its registration exist, the mark is published in the UK Trade Marks Journal for two months (can be extended to three months).

This does not mean your trademark is registered yet!

During this two-or-three-month period, third parties can make official observations and even oppose the registration of a mark.

A famous case of where this occurred was when Cadbury tried to register its special shade of purple as a colour mark. Nestlé opposed this registration. The matter went to court, Cadbury was allowed to proceed with the registration but with a reduced scope (they were only allowed to use the colour for a specific brand of their chocolates). Nestlé appealed the decision and Cadbury eventually lost the case and was not able to gain its trademark for that particular colour of purple.

Most other countries follow a similar pattern. In the USA, the mark is published in the weekly “Official Gazette” where it can be opposed for 30 days. Third parties may request an extension of this time during this period.

In the EU, the mark is published in the Trade Marks Bulletin and can be opposed for three months.

 

Successful registration

If nobody opposes your mark, or if you manage to successfully counter their opposition in front of the respective legal body (usually the trademark office itself), then your mark will be officially registered!

In the UK, this usually occurs two weeks after the opposition period ends.

You will be issued with a certificate after the mark is registered in the UK.

 

Your rights as a trademark owner

Your rights as a trademark owner

Once your mark is successfully registered, you as its owner are given the exclusive right to use that mark and to prevent others from using it. This also applies to marks that are similar to your mark and which might cause confusion to consumers.

After Brexit, you will need to separately apply for a trademark in the EU if you wish to deliver your service or sell your product on the continent as well. The same applies to any other jurisdiction in which you plan to sell your product or deliver your service.

The administrative burden of doing this is, of course, enormous. Trademark law is, unfortunately, both tremendously complex as well as inordinately cumbersome.

To be fully protected in a particular jurisdiction, you must register your trademark there officially if it is a first-to-file-jurisdiction. Or, if it is a first-to-use jurisdiction, then you must start using the mark in that territory (actually selling products) before anybody else does.

Some jurisdictions offer IP protection in connected territories. For example, it is possible to register a trademark in the EU and be afforded protection in all countries of Europe. Registering a trademark in France protects you in many of the French territories as well, such as Caledonia, the French Antarctic Territories, Reunion, Martinique, etc. (It does not protect you in French Polynesia, though.)

Registering a trademark in the UK offers you some leeway in historically related (Commonwealth) territories, such as a simplified registration process.

For example, in the Bahamas, the “owner of a UK trademark is entitled to registration on the production of a UK trade mark certificate.”

A full list of the extensions of UK IP rights abroad can be found on the official government website here.

 

Retaining your trademark registration

Retaining your trademark registration

Most jurisdictions enforce that a trademark is actually used inside that particular territory during a certain amount of time for it to remain in force. If a trademark is found to not be actively used after registration, then it can be challenged and the right to use that mark revoked.

In the USA, it is only necessary to prove a legitimate reason for a mark not being used to prevent it from being revoked.

In some other jurisdictions, no flexibility is afforded at all and non-use over a period of time (usually three years) furnishes immediate grounds for cancellation of the mark.

The reason for this is to prevent trademark squatting, which has been an enormous problem in China, historically.

But the 2014 Trademark Act in China now enforces this must-be-used policy as well, thereby reducing the possibility of unscrupulous individuals registering trademarks simply for the purposes of preventing the rightful owner from registering them at some later stage.

 

Repeating the process in other jurisdictions

The ideal strategy for trademark registration is to register your trademark in as many territories as possible that you plan on selling goods within the next few years.

This can entail an enormous amount of planning and forward-thinking, especially as registering a trademark in one jurisdiction might make it easier to register that trademark in another.

When planning on registering your trademark in multiple jurisdictions, it is imperative that you work out your strategy with an expert who is familiar with trademark laws and nuances in all the jurisdictions in which you intend to register your mark.

 

Renewing your trademark

All trademarks need to be renewed after a certain number of years, usually ten. (Macau is seven years.)

In the UK, you may renew your trademark six months before its expiration date or up to six months afterwards. In the latter case, there is a late penalty of £1.

If you miss renewing your trademark, you might be able to restore it by physically mailing in a “Request to Restore” form to the IPO.

If your brand is popular, failing to renew your trademark can be catastrophic. Be sure to have a proper system to keep track of:

  • Upcoming renewals (separated by territory)
  • Non-use tracking (by territory)

Other useful tips for registering a trademark

Registering a trademark in the EU will not afford you protection in Switzerland. You will need to register a trademark in Switzerland separately to be protected in this jurisdiction.

Registering a trademark in China does not protect you in Hong Kong. You will need to register a separate trademark in Hong Kong to be protected in that jurisdiction.

Generally speaking, all jurisdictions have restrictions in place for registering trademarks which:

  • Are not distinct enough
  • Utilise state flags or other state emblems on them
  • Are offensive or against public morals
  • Relate to a generic description of service as such and not a particular brand of that service (e.g. “Mail Service” would not be able to be trademarked)

In Taiwan, it is forbidden to use the name of the current head of state in a trademark.

 

Summary

As with all legal matters, registering trademarks can be complicated. The road to protecting your IP is best travelled by people who have travelled that road often.

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Julia Richards

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