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What is a trademark?
A trademark is usually a name, a logo, a combination of both, or a slogan. It can be a trade name, brand or designation of goods or services, a domain name, and so on.
Why should you trademark your brands and other signs?
The brands you use create your identity in the marketplace. Thanks to them, the customers recognize you, remember you easily and they can return to your goods and services if they are satisfied with them.
The more successful you will be, the more competitors there will be trying to ride on the coattails of the reputation of your goods and services by copying your brand. Trademarks make it much easier to take action against these infringers, whether by lawsuits, including preliminary injunctions, or by customs offices and arbitration centers.
At the same time, you avoid the risk of speculative registrations. Speculators can register your unprotected brands as their trademarks and attack you in various ways on their basis, causing considerable inconvenience. However, if you already have the brand registered as the trademark, they cannot prohibit you from using it.
The trademark is also an intangible asset for your company that can be valued in money.
Where should you register your trademark?
Trademarks can be registered at national offices for individual countries, at the EUIPO for the 27 countries of the European Union, and at the WIPO for countries selected from the 129 member states of the Madrid system.
In principle, it is good to have trademarks registered in countries:
- where you distribute your goods and services,
- where you plan to distribute your goods and services,
- where you manufacture your products.
For example, if your suppliers are from China, it is good to have the trademark already registered in China, so that speculators do not overtake you with the registration and, for example, have your goods seized at a Chinese port during export.
For example, if you run an e-shop that potentially sells to every country in the world, it is good to at least initially identify the countries where there is the greatest potential for sales and register your trademarks in those countries.
We are authorized to represent you before the Czech and Slovak Industrial Property Offices, before the EUIPO and before WIPO. We also have experience with representation before the UK Intellectual Property Office in trade mark matters. Through our extensive and time-tested network of cooperating patent and trademark representatives and office around the world, we are able to represent you in registration and litigation proceedings in any country.
What do you need to register the trademark?
In order to register a trademark, we need the following things from you:
- What will we register as a trademark? Name, logo or something else? If we are going to register a logo, it will help us if you send it to us in electronic format in a higher resolution.
- Who will be the owner of the trademark? Depending on your situation, we can advise you whether it is better for an individual or a company to be the owner. We will prepare the relevant powers of attorney.
- What goods and services will you use the trademark with? Just describe them in your own words, or send us a catalogue, refer us to your website, etc. We will make the necessary classification.
- In which countries will we register the trademark? We will always choose the most economical approach for you.
How does the registration process work and how long does it take?
The process of trademark registration has two phases:
- Examination of absolute groundswhere an office examines whether, for example, the mark is not descriptive (e.g. it is not possible to register “BEER” for beers), whether it is in accordance with public policy, and so on.
- 2. Publication of the trademark application for oppositionAfter successful examination, the application is published for 3 months, and anyone who thinks that the application infringes their rights – e.g. it is similar to their earlier trademark – can file an opposition. If there is no opposition, the trademark is registered.
The length of this process varies from office to office - e.g. at the SK IPO, the whole process takes about 6 to 9 months. At the EUIPO, we can achieve registration within 4 months.
My trademark is registered – what now?
Once your trademark is registered, you can:
- use your brand together with the ® sign,
- take action against any infringers who imitate your brand,
- file opposition against similar trademark applications.
The trademark is valid for 10 years from the date of filing and can be renewed as many times as you wish for the next 10 years.
You do not have to start using the trademark right away; the law gives you the time to prepare. However, if you do not use the trademark for 5 consecutive years, it can be revoked for non-use at the request of a third party. We will advise you after registration on how to use your trademarks in order to avoid this risk.
Why should you be represented?
As in other specialized areas, it is good to rely on experts in the field of trademarks, too. We offer you complex services:
- samozrejmosťou je An initial search in all relevant databases is a matter of course: sometimes we find that similar logos or names are already registered as trademarks and it is better to come up with a new logo or a new brand. We do not only enter your brand into the search bar – we conduct complex search for non-identical but similar trademarks, too.
- We will always suggest the most effective course of action:sometimes it is not necessary to register all variations of a logo, other time it is possible to achieve broader protection for the same costs – our aim is always to make sure that you only have the trademarks that you really need, and at the same time that you get the most out of your trademarks.
- We handle the whole registration process;
- We will never miss a deadline thanks to our custom-made in-house deadline tracking system and at the same time we will notify you of the need to renew your trademark renewal in 10 years.
- We regularly monitor new applications and alert you to those that you might want to oppose.
We will always inform you of total costs prior to the start of registration, which is the final price if things run smoothly (i.e. if no opposition is filed), so you will not be surprised by any additional fees.
Representation is mandatory when applying abroad.
Why choose us?
Our law firm has more than 20 years of experience with representing the clients before various patent offices. We represent the clients directly and actively before Industrial Property Office of Slovak Republic, Industrial Property Office of Czech Republic, European Patent Office in Munich, World Intellectual Property Organization in Geneva, and European Union Intellectual Property Organization in Alicante (formerly OHIM, Alicante). Our success rate as well as the amount of filings can be checked in the public registries of these offices.
We have registered more than 1500 trademarks and we have litigated against infringers, filed oppositions, or defended the clients in the infringement lawsuits. Due to our experience in adversary proceedings and lawsuits (before EPO, SK IPO, CZ IPO, EUIPO, Slovak courts at all levels) we are now in the situation where we can advise our clients on correct tactics, and we can identify the risks and perform due diligence.
FAQ
Whenever you come up with a new name or a new logo for the goods and services you offer and under which you want your customers to know your goods and services. By registering your brand as a trademark, you prevent others from copying you. You will also avoid the risk of someone else speculatively registering such brand as a trademark and then prohibiting you from using your own brand. Write us or give us a call and we can advise you on what is worth registering.
This is not possible, the new logo can only be registered as a new trademark. However, the new registration not always necessary, it depends on how much you have changed your logo. Each situation has to be assessed individually. Write us or give us a call and we will advise you.
Yes, there are effective ways – either by courts or by arbitration – to prevent such behavior. However, each situation needs to be assessed individually. If you want to know the options in your case, contact us and we will advise you.
There are, of course, effective ways to prevent this – either by courts or by cooperation with customs offices. Often, even sending a cease-and-desist to the infringer suffices. Write us or call us and we will advise you what are the options in your case.
In principle no, but there are cases where several identical signs can coexist (e.g. if they are registered for different goods). There are also, for example, trademarks registered in the registers that are no longer in use and can be revoked. Write us or call us and we will see if such options are available in your case.
Yes, even mere use can give rise to rights to an unregistered trademark. The law also does not protect trademarks registered in bad faith. Such situations tend to be complicated, but we are able to find solution for our clients. Contact us, and we will advise you as well.
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