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Brand protection: EU and scaling in 2020

The first thing you need to deal with initially is
Why do you need a brand and when is it worth registering?
The trademark, in addition to being a means of individualizing business entities in the market, will also help protect your domain name rights in the event of any disputes or claims, it is intellectual property that can be contributed to the authorized capital or transferred for use under a license agreement and use royalties for tax planning purposes, or transfer the franchise trademark right to use as one of its constituent entities.

Just say that a definite answer to the question "when?" we do not have. It can be registered when you are just starting your activity in the market, or when there is already an established system and business. Important to remember:it is better to invest in protecting the sign before introducing goods and / or services into the trade, than to spend significantly more on protecting your products from unscrupulous competitors and businessmen from intellectual property.

Secondly, you need to understand
which brand will better protect your interests - verbal or graphic (logo)
Clients often turn to us with this issue and therefore we decided to collect all the pros and cons in one place.

(1) If you have a unique name

A verbal brand protects the meaning of a word (s) separately from its graphic design.

Benefits:

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  • If your competitors use a similar graphic design with intentional errors in words or completely different phrases (as shown in the picture below), in this case the verbal brand will not be able to help you protect your rights.

(2) If you have a unique logo The

pictorial trademark (combined) protects the word (s) in their graphic unique image. The emphasis is on the visual part of the trademark.

Benefits:

  • Opportunity to prohibit competitors from using identical or similar protected graphic trademark graphics. In this case, although the phonetic similarity is taken into account, the emphasis is on the graphical criteria.

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Many large companies do not want to take risks and register both variants of the brand. Of course, this is associated with additional costs for the company, but it provides full protection for the brand in the most important areas. It is difficult to predict when registering a trademark what violations may occur in the future. Or, as an alternative, a verbal trademark and industrial design (“design”) may be registered.

The next step is to
determine the classes of goods and services to which the legal protection of the trademark will apply.


In this case, you can use the TMClass resource and select the necessary terms that most accurately characterize your business. We want to note that, as a general rule, all declared goods and services must comply with the International Classification of Goods and Services (the so-called Nice Classification), however, the practice of EUIPO (European Union Intellectual Property Office) went further and formed a wider harmonized list of available for protection goods and services terms.



So, as we see from the example, the term “betting” is available in classes 16,41,36 for EUIPO, in classes 41,42 for USPTO (United States Patent and Trademark Office), in class 41 for CIPO (Canadian Intellectual Property Office ) and is not available according to the Nice classification of goods and services. Therefore, we recommend that each “term” you select be checked for acceptability by each particular registrar in order to avoid delays in conducting the examination and delaying the decision to register a trademark.

Before directly filing an application, it is also necessary to conduct a search for identity and uniformity with existing brands in homogeneous classes of goods and services in order to identify possible risks of refusal to register a trademark. You can use such databases -eSearch , TMView .

Filing an application

Here we want to pay attention that the choice of strategy depends on business interests.

If you need to cover all EU countries with legal protection, the best and most economical option is to apply for EUtm registration with EUIPO. Filing such an application online will cost EUR 850 for one class + EUR 50 for choosing a second class + EUR 150 for each subsequent additional class. At the same time, it is possible to file separately for non-EU countries according to the national registration procedure (for example, in the USPTO (USA) - USD 325 per class, CIPO (Canada) - CAD 250).

You can also file an international application in accordance with the Madrid Protocol - filing is done through the national authority of the applicant’s country, indicating other countries participating in the Protocol, in which the applicant also wants to register the trademark. The fee is calculated depending on the number of selected countries on the Duty Calculator and when choosing all EU countries it will be several times higher than the first registration option we proposed.

After the application for registration is accepted, you can legally use the markings near your trademark.

The territory covered by the protection of the registered designation is always indicated in the title of protection. It may include one or more states.

Registration validityTK in most countries is 10 years. Subject to the periodic payment of relevant state fees, the certificate may be extended for an unlimited number of years.

NB! EUtm & Brexit

EUtm, registered before January 1, 2021, will be automatically transferred to the UK independent registry. If, as of January 1, 2021, the EU trademark is in pending mode , such a trademark is given a grace period of 9 months to register it separately in the UK base with payment of local duties.

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