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  • Jeremy Rutman

Trademarks Around The World

עודכן ב: אפר 26


What's a Trademark? (TM)

A trademark is literally a mark on an item of trade. Thus the Coca-Cola (TM) logo, the Nike swoosh, etc. are all used to mark various items, indicating the company producing the item. A registered trademark offers legal protection for unique logos, phrases, and designs affixed to tangible objects.



Who can file a trademark, and what can be trademarked?

An individual or company can apply for trademark protection. The thing being trademarked should be a unique word, image (e.g. a logo), or slogan associated with a specific item. You can't get coverage for the word or image only, but only for the word/image on a specific item. A logo for instance could be registered for use on a t-shirt, sign or other tangible item. The kind of item determines the category or 'class' of the trademark, more on that below. Often companies register a mark in several categories so that they can be used on an assortment of merchandise. If another company has registered a mark that is similar or identical to yours, it may prevent your registration, hence a search is advisable. This may be done by text or image at the WIPO database, for instance.


Where to file?

Trademarks, like patents, are valid only in those countries where the trademark is registered.

Clearly one should consider registering your mark in any countries you sell product or offer services. You may also consider registering in countries where you intend to use your mark in the future, and/or in which you have offices or manufacturing facilities. Less obviously, some companies also register in jurisdictions known to have problems with counterfeiting.


Trademark Search

To determine if your item is eligible for trademark registration, conduct a trademark search on the WIPO search page. You can search by text or a combination of words, symbols and images. The USPTO has an analogous Trademark Electronic Search System but US marks are included in the WIPO database, which is easier to use.

Keep in mind that the trademark is actually given not just for the mark but for the combination of mark and 'class' or category of good/service that is being trademarked. Some example classes from the US system:

Class 1: Chemical Products

Class 2: Paint Products

Class 3: Cosmetics and Cleaning Products

...etc.

The WIPO classification system is called NICE, and can be searched as well. So two companies can actually trademark the same word, for instance, if one company is selling stoves and the other is selling computer software.


Going International

Several international agreements allow you to file a single application and register your trademark in more than one jurisdiction.

  • The Madrid Agreement (and Madrid Protocol) allow you to file an application for international registration. This gives trademark protection in any of the 125 participating countries covering most of the world, including the US, Israel, China, EU, Australia,etc.

  • The Benelux Office for Intellectual Property offers trademark protection in Belgium, Luxembourg, and the Netherlands (together, aka Benelux).

  • A European Union Trade Mark (EUTM) protects a trademark in all EU member states with a single application.

  • The African Regional Intellectual Property Organization protects trademarks in all its member states, generally the French-speaking African countries: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, the Comoros, Republic of the Congo, Côte d’Ivoire (Ivory Coast), Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, and Togo.

  • The Andean Pact between Bolivia, Colombia, Ecuador, and Peru created a common trademark law providing for reciprocal rights to the trademark owner.


Around the World, Starting from Madrid

One of the most popular routes is the Madrid application since it covers most of the world. These applications are checked by the World Intellectual Property Organization (WIPO) International Bureau for classification and other details, then sent to the countries you choose for final acceptance or rejection based on the particular country's rules and database of trademarks.

PROS

The fixed examination periods of 12 or 18 months make the application examination process predictable, and registrations can be subsequently extended to extra countries. It is also less costly than filing individual applications within each country. And for the IP office doing the filing, the Madrid system allows for a single application to be submitted.

CONS

The International Registration depends on the status of the national application for a limited period. There are also a few holdout countries not protected under the Madrid Agreement, such as Saudi Arabia, Canada and South Africa.

Requirements and Use Before Registration

Depending on the country, you are often not legally required to register a trademark to assert that you own it. Many people therefore choose to use their trademarks before registering them. Even before registration, you can use the "TM" symbol next to the mark.


Conflicts

If another company has registered a mark that is similar or identical to yours, and is in a similar class, it may block your registration, hence a search as described above is advisable.

Keep in mind that it's actually the trademark in conjunction with the category that's protected, not just the trademark itself. You can't file to register a trademark that someone else is already using and/or has registered if they used/registered the trademark first. However, if someone else is using your registered trademark and/or you used the mark first, you can be able to contest the trademark. If you can show that you used the trademark prior to it being registered, you may still own the mark. As in patent infringement, the usual steps involve notifying the other company that they've infringed on your trademark, and possibly filing a trademark lawsuit.


First to File vs. First to Use

Trademark laws may either be on a first to file basis or a first to use basis. As the names suggest first to file countries allow registration to the first company that files an application, regardless of use, while first to use countries do the opposite. The following list covers most of the world:

First To File Vs. First To Use - the full monty
First To File Vs. First To Use - the full monty

If a company hasn't registered a mark, it can still acquire "common law" trademark rights. Common law trademark rights are usually limited to a certain area where the product was sold, not necessarily an entire country.


COSTS

There is a fee calculator which makes it easy to estimate filing costs for a given set of countries and number of categories.

The cost of an international trademark registration includes the basic fee (~715USD), plus additional costs for extra countries, classes/categories covered, and color vs. black/white/grayscale.

For example, to register a greyscale trademark with no color elements in the European Union, for one class of goods, the total cost will be $980USD for one class in the European Union plus the $715USD basic fee for a total of $1695USD.





The International Trade Administration

WIPO trademark search tool (search by image/text)

NICE classification system search

Trademark Fee Calculator

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