Procedure
Brand name creation
Since not all trademarks are automatically accepted for registration, it is advisable to give this some thought before filing. The most important ground for refusal is lack of distinctiveness in relation to the products and services for which trademark registration is sought. For example SWEET ICE would be perceived by the public as a description of the product ice-cream, and not as a trademark. On the other hand HÄAGEN-DAZS for ice-cream is registrable as a trademark because, being a fanciful term, it would be perceived as a trademark. Coming up with a distinctive name is something you can do yourself or you can have a company specialized in name creation do it for you. Once you have a shortlist of names you are interested in, you can submit the list to us for a free check. We can advise you which names are lacking in distinctiveness so that you can limit your list to those names that stand a chance. Tip: if you are planning on launching a new trademark in the near future, we suggest you check the availability of corresponding domain names and register these. Once your name gains in reputation there are bound to be domain name hijackers around seeking to register your trademark as a domain name.
Trademark screening
Before registering a trademark it is advisable to conduct a search for prior trademarks. This is because a new trademark may be refused if an older trademark is similar to it. Moreover, you may come across an older similar trademark after having registered and used your own trademark for years. This can be very costly if you are forced to stop using your trademark due to the existence of such a prior mark. An example: older mark for bicycles DIESEL with a filing date of 10 January 1995. Your trademark for bikes: DIEZEL with a filing date of 8 September 2013. This is too similar to the older mark DIESEL. The owner of the older trademark can prohibit use of the more recent mark and thus force the owner to choose a different name. We can conduct an extensive search for both (phonetic) identical and other similar older trademarks. You will receive a report listing those trademarks that may represent an obstacle to registration, including our advice. If no obstacles are found we can proceeding directly to filing your trademark. Enquire about our free identical trademark check to find out if your trademark has already been registered by someone else. If this is not the case then you may want to carry out a more extensive search for similar trademarks.
Trademark registration
Without a trademark registration you cannot prevent others from using an identical or similar trademark. This means that a competitor can use an identical or similar trademark without having to ask permission and cause confusion. In the worst-case scenario a competitor might decide to register the trademark himself and subsequently force you to stop using your own trademark. Therefore always make sure you secure trademark registration at an early stage in those countries where you are already on the market or plan to be in the near future. A trademark registration is valid for 10 years and can be renewed indefinitely for additional periods of 10 years. During your first appointment with one of our trademark attorneys you will be asked questions concerning the use of your trademark. Based on this information we can determine in which countries you should file for protection now or in the future and, for example, whether a word, device or a combination word-device mark should be filed and whether the mark should be in colour or black and white. In addition a goods and services specification will be prepared which defines the scope of protection of your trademark. This is followed by an application for registration with the official trademark office, which could, for example, be the EU office or the Benelux office. If there are no objections the trademark will proceed to registration and you will receive an official registration certificate. From this moment on you may use the ® symbol and exercise your rights as a trademark owner such as preventing others from infringing your trademark. Using the ® symbol is not a requirement in the Benelux, but it is advisable since it serves as a warning to others that you have a registered trademark right and can prohibit others from using a similar trademark.
Trademark watching
After registration it is important to have your trademark watched. Annually millions of trademarks are registered and any of them could be similar or identical to your own trademark. Our watch service monitors all new applications for registration. If you subscribe to this service you will receive an e-mail alert every time an identical or similar trademark is filed enabling you to object to its registration if you wish. Allowing such trademarks to proceed to registration may dilute your trademark right and ultimately lead to weakening of the scope of protection. Moreover, the costs of objecting at an early stage are much lower than doing so later in the trademark cycle.
An example: you are having your trademark BRADLEY’S BAKERY watched. Our watch service alerts you to a new trademark for “BRADLEY’S BREAD AND CUPCAKES”. You object and “BRADLEY’S BREAD AND CUPCAKES” is removed from the trademark registry. Your competitor has to choose a new name.
Try out our watch service for free for the first six months.