Legal Journal: What can a trademark be useful for?

When building a new business, entrepreneurs usually focus on steps towards economic growth and often forget to protect their own brand. Today, the protection of intellectual property is no longer limited to world-class brands, and in connection with the growing pressure for originality, local manufacturers and service providers are also beginning to attach importance to it. You will find out why to protect your brand by registering a trademark, what to take into account in the registration process and what not to forget in today's Legal Journal.

Mgr. Petronela Rybová, Junior Associate

Why you should consider registering a trademark

A trade mark guarantees its proprietor the distinguishability of its goods or services in a competitive market. However, distinguishability, the hallmark of exclusivity and prominence in the eyes of consumers are not the only advantages that a trademark can provide to its owner.

With the registration of a trade mark, its proprietor acquires significant rights, consisting in particular in the possibility of preventing unauthorised use of the trade mark for registered classes of goods or services. The right to protect a registered trademark is relatively broad and does not apply only to the use of the same mark for identical goods or services. It is also sufficient to infringe the rights of the trade mark proprietor to use a similar sign for similar goods or services, which could lead to their confusion in the eyes of the public.

When calculating the benefits of registering a trademark, it must not be forgotten that a trademark is also an asset value, the value of which on the market is constantly increasing with the right business approach. Trademark registration is a straightforward process, so when deciding whether to register a trademark, an entrepreneur can find few reasons not to do so.

Where to apply for a trademark registration

If you do business only in the territory of the Slovak Republic and do not intend to expand, protection at the national level will suffice. In this case, it is necessary to submit an application to the Industrial Property Office of the Slovak Republic. A similar procedure should be followed if you trade in one specific country and no other. Here, too, it is necessary to file an application for registration of a trademark at national level with the Industrial Property Office of the given country.

If you need to protect your trade mark in more than one EU country, the easiest way is to apply for a trade mark registration with the European Union Intellectual Property Office (EUIPO) based in Alicante. This will make you the owner of a European trade mark that enjoys protection in all Member States and you do not have to apply for protection at national level separately at the industrial property offices of each Member State.

If you do business in several countries outside the European Union, the most suitable choice will be to register the trademark at the international level at the International Office of the World Intellectual Property Organization in Geneva (WIPO). Those who carry out their business activities exclusively in Belgium, the Netherlands or Luxembourg can register a trade mark with the Benelux Intellectual Property Office (BOIP), which guarantees protection in these three countries.

How can you apply for a trade mark registration

At the Industrial Property Office of the Slovak Republic, each applicant can submit an application for registration on their own, without any representation. The Office recommends that applicants who do not have the necessary trademark and legal knowledge and experience take advantage of the opportunity to be represented by a lawyer or patent attorney in proceedings before the Office. The application procedure is always conducted by the Industrial Property Office of the Slovak Republic with the applicant or his representative.

Only an authorised representative who is designated for the Slovak Republic as an attorney-at-law demonstrably registered with the Slovak Bar Association may submit an application to the EUIPO. If the applicant is not a lawyer himself, the applicant will no longer be able to apply for an EUIPO application and will have to be represented in this case.

Any person who is a national, resident or registered office of any member of the Madrid System may apply for registration with the International Bureau of WIPO. Such a person must have or at least must have applied for a national trademark registration through the domestic Industrial Property Office. Representation by another person is possible. In the case of the BOIP Office, representation of the applicant is not required, so he can file an application for a Benelux trademark himself.

Fees associated with trademark registration

The Industrial Property Office requires a fee of EUR 166 when filing an application for an individual trademark in three classes of goods and services. In the case of filing an application for a collective mark in three classes of goods and services, the fee will be once such and will amount to EUR 332. In case you as an applicant would like to file an application for more than three classes of goods, you will pay a fee of €20 for each additional class of goods and services.

The EUIPO requires payment of the basic fee within one month of receipt of the application by the EUIPO. The examination process of the application and all notifications related to it will be processed by the EUIPO only after payment of the fee. The basic fee, which covers one class of goods or services, is EUR 850. The fee for the second class of goods or services is EUR 50 and the fee for three or more classes is EUR 150 for each class.

When filing an application with WIPO, determining the amount of trade mark registration fees is more complicated. The final amount of the fee will depend on many factors, which is why WIPO recommends using its fee calculator tool, which is available on the WIPO website. The basic fee is 653 Swiss francs, but you need to take into account many additional fees that can significantly increase the final amount of the fee.

The basic fee for applying for an individual trade mark in one class of goods or services at the BOIP Office is EUR 244. For the second class of goods or services, the fee will be increased by EUR 27, the third and each subsequent class is EUR 81.

For a collective or certification mark in one class of goods or services, the fee at the BOIP Office is EUR 379. For the second class of goods or services, the fee is increased by EUR 42, the third and each subsequent class is EUR 126.

What to look out for after applying

When paying the registration fee, pay close attention to any documents that will most likely be delivered to you in electronic or letter form. In particular, applicants for a European trade mark are faced with the delivery of fraudulent invoices or other applications for payment of the trade mark registration fee after filing an application. The EUIPO never sends invoices or letters to applicants requesting direct payment for services.

To eliminate the risk of fraud to which applicants are exposed, the EUIPO maintains an official list of companies that are part of trade mark fraud schemes. The list can be searched by company name. As a registrant, you can easily find out that it is a fraudulent email or shipment.

Trademark designation

After you successfully register a trademark, in addition to protecting your brand, you also gain another competitive advantage, which is the possibility of using a ® symbol that you can attach to your trademark. The letter "R" in the circle refers to the word "registered" derived from the phrase "registered trademark". Anyone who sees your trademark should know that your trademark is officially registered.

Please note that the right to use the symbol designation is linked to the date of registration of the trademark in the relevant trademark register. In any case, the symbol cannot be used earlier. Filing an application for registration of a trademark is not sufficient for use.

If you would like to give the consumer the impression that your brand is verified, but the registration of your trademark has not yet been decided, you can use the symbol ™ with your brand, which is an abbreviation of the word "trademark".

The use of both symbols is voluntary, and it is up to you whether you choose to use them or present your brand without these symbols. However, if you have used the symbol ™ in the past, after registering the trademark, we recommend replacing it with the symbol ® , in order to declare your rights arising from the registration. Thanks to the ® symbol, the consumer will be able to recognize your original services or goods much more easily, while assuming that the goods or services marked with the ® symbol meet higher quality requirements.

In practice, you may encounter a © symbol that is not related to trademarks and is used as a copyright clause for audiovisual, musical, verbal and other works. You could also see the symbol (D), which is currently unofficially used for designs, but it is currently proposed to use it for officially registered designs.

What not to forget after registration

If you are already the owner of the trademark, it should be remembered that the validity of the registration of the trademark is 10 years from the date of filing of the application (not from the date of its publication). A trade mark must be renewed every ten years. There is no limit to the number of trade mark renewals.

Last but not least, you must actually use your trade mark in connection with all the goods or services for which it is registered for a continuous period of at least five years. If you do not do so, your competitors could challenge your trademark for not using it and demand its cancellation. If you, as the proprietor of the trademark, fail to prove the contrary or have no legitimate grounds for using the trademark, the trade mark is deemed not to have been used for five consecutive years, with the result that it would be revoked.

Once you have a trademark registered, you can dispose of it – sell it to another person or allow another person to use the trademark under a license agreement.