A trademark is a sign that distinguishes your product/service from others. It creates recognition for your customers. No one else can use your registered trademark without your approval. And yes, this applies on the Internet as well.

The definition of what is possible to protect is wide. For just EU trademarks, you can now protect any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

When you apply for a trademark, you get a protection for the specific name or figure in the product or service classes that you have applied for.

So how is this done?
If you think about it, do you know any trademark names that are exactly the same? We think you do, this is because of the classification system. There is a possibility that you can apply and get a registration for trademarks that are exactly the same as other registered trademarks, as long as the product and services are not the same or similar.

The Trademark system is built with a so called classification system so you can distinguish different product- and services from each other.

The best known and used system is called after the city of Nice. The International Nice-classification system.

There is a total of 45 different Nice-classes. 34 product classes and 11 service classes. Depending on what kind of Trademark you are going to create a classification has to be made for your future products and services. The Trademark classification process is not easy and you have to include parts like; future strategies, legal parts and industry Know-how.

When you have applied for you trademark, it is not possible to add more classes afterwards. All changes you want to do require a new trademark application, which is both time consuming and expensive.

Our recommendation is that you always think five years ahead. When you, hopefully, have your trademark registered, you have five years to start using the trademark in all registered product- and service classes. If you aren’t using it, there is a risk that another party starts a cancellation process of your Trademark – in, not used classes – or in worst case, the whole registration.

For EUTM the application process is about 4 months. Assuming that no one objects against the trademark application and there is no Office Action.

An individual, company or several holders combined.

Yes, if you have a good and proactive trademark (IPR) strategy this can give you many advantages. For example, if you are negotiating with investors this can be used advantageously in the process. Or, when the time comes and you want to sell your business and trademarks, you almost in all cases get a higher value. How much higher? Well, this depends. InstanTM.com and our consultants can help you set up a strategy for the future.

A trademark infringement means that a trademark is being used identically or confusingly similarly compared to an already registered trademark by another party. By doing so, the “infringer” is violating the exclusive rights that the current trademark owner is entitled to. The consequence by infringing someone else’s trademark rights can be huge and expensive. In some cases, there is also imprisonment in the scale of penalties.

When you apply for a Trademark the authority will examine your application. Different jurisdictions have different rules. If your application doesn’t fulfill the requirements needed, you will be sent an Office action. For example, the process within EUIPO (EUTM) is the following:

1. Classification – The goods and services you seek protection for are reviewed to see if they have been correctly classified and their nature has been clearly indicated
2. Formalities – All the details you have entered on your application are reviewed to make sure that everything is as it should be; the signature, languages, owner and/or representative data, priority and/or seniority claims are all reviewed.
3. Absolute grounds – Your trade mark is analyzed to see whether it is distinctive but not descriptive.
4. Translation – Your trade mark application is translated so that details of it can be published in all the official languages of the European Union.
5. We carry out a search in the EUTM database for identical and/or similar marks. The results are sent to you before we file your trade mark application.

The Trademark Search Report Light is made on all trademark applications as a service for instanTM clients. The search is made in all European trademark databases and will give you a result of confusingly similar trademarks that might interfere with your application. This is done because we want to minimize problems in the application process.

A submitted trademark application has, in most regions, an objection period (Three months in EU for EUTM) where an objection can be submitted stating reasons why the trademark application should not be accepted and registered.

® Registered symbol – You can only use this symbol if your trademark is registered. This is a quality stamp and means that you actually have a trademark registered.

™ Trademark symbol – You can use this symbol when you want to state that you use the particular sign as your trademark, or before you have got your trademark application approved.

Our recommendation is to use the ® sign.