Trademark Search and Registration

Trademark and company name registration

Trademarks and trade names (or business names) belong to the intellectual property family as well as patents or the utility models. They confer to the owner exclusive rights on its object. For instance, a patent protects an invention (“a solution to a technical problem”) and a trademark confers to the owner the exclusive right to use a sign on the market to distinguish a specific good or service.

There are many types of signs that can constitute trademarks: logos, figures, names, words, drawings, letters, colours, smells, shape of goods or of the packaging of goods, sounds, etc.

However not any sign can be registered as a trademark, but it must be:

  • Suitable to distinguish the company’s products and services (for example, it does not have to be descriptive of them).
  • Appropriate to be represented in such a way that allows the object of the record to be clearly and precisely determined.

Likewise, if the trademark in question has already been registered by third parties, it cannot be registered or used in the market (for identical or similar products or services) without the authorization of the owner of the previous registered trademark.

To reduce the risk of unwanted surprises, before starting to exploit or register a trademark it is advisable to carry out a general search for priors.

Once the appropriate searches have been carried out, the first step to obtain exclusive rights over a trademark or a trade name is to request registration with the competent Office depending on the countries where you want protection of the trademark at issue.

Why use inmentor to register your trademark?

Registering a trademark or a company name is a delicate procedure that requires specific knowledge of the applicable regulations, especially when what is sought is a trademark that can be exploited in the market.

In addition to filing the trademark application for you, our lawyers advise you on all that is required for efficient trademark registration in order to avoid obstacles to its granting and reducing the risk of the trademark being invalidated.

inmentor lawyers offer (inter alia) the following services:

  • Trademark search and results analysis in the light of relevant legislation in order to avoid possible obstacles and to reduce the risk of opposition by third parties or prohibition of use of the trademark in the market;
  • Checking that the symbol for which the trademark is sought includes the necessary elements in order to avoid registration being refused;
  • Help in the definition of the products and services to be included in the trademark application in order to obtain adequate protection;
  • Help in defining the most suitable territory for trademark registration.

In short, our trademark lawyers are responsible for studying, proposing and carrying out the trademark strategy that best suits your needs, taking into account all relevant factors. It works alike for business name registration.

Specialised lawyers provide tailor-made solutions.

How to register a trademark (or company name)?

The trademark registration PROCEDURE may vary from one country to another but usually begins with the filling of a trademark application with the competent Office (national, regional, or international) including, inter alia, a clear reproduction of the sign to be registered, the goods and services for which such trademark is registered.

Further, there is usually an examination to ascertain the presence of the requirements for trademark registration and finally, in the absence of obstacles (e.g. incidents, oppositions from third parties, etc.), the granting of trademark.

Regarding costs for a trademark or trade name registration, at least the payment of official fees must be foreseen and attorney fees as well, if you entrust him the protection and defence of the trademark at issue.

Where to register my trademark: only in my country or in others as well?

The granting of exclusive rights for the exploitation of a trademark, including the right to prohibit a third party from using the trademark on the market, is the prerogative of each country and the effects are limited to a specific territory.

There can be many reasons for registering a trademark in several countries: it is advisable to register the trademark in all countries in which there is a serious intention to market the products or services, in order to avoid the risk of having to change the trademark in countries where a third party has already registered the trademark to distinguish the same or similar products and services.

In short, the trademark registration system offers three alternatives:

  • National registration: the trademark registration is filed in each country of interest (for example Spain, Germany, USA etc.), resulting in separate proceedings in the official languages of each country. Moreover, if granted, the trademarks are independent and their effects are limited to the territories of the countries where the registration of the trademark has been obtained;
  • Regional registration: through a single application with the competent office, if granted, the registered trademark covers a number of countries. This applies, for example, for the Community trademark whose effects extend throughout the European Union;
  • International registration: enables the registration of trademarks in several countries by filing a single application and a centralized granting procedure.

Choosing which alternative depends mainly on the strategy you choose to protect a trademark. Our lawyers will give you a professional legal advice to help you to take the best decision in your interests. The language, time, market of interest, competitors and costs are factors that can influence your choice.

How long does trademark protection last?

Unlike patents, trademarks and business names can last indefinitely. In principle the term of a trademark is 10 years, with 10-years of registration renewal terms.

European registered trademark search

Normally the legislator grants a registered trademark owner not only the right to prohibit third parties from using an identical sign to distinguish identical products or services on the market, but also the right to prevent use by third parties of any similar sign to distinguish similar products or services if there is a “likelihood of confusion” or “association” by the public.

In some countries such rights to prevent competitors from the “use of a trademark” are granted based on the simple use on the market by a company.

Therefore, since the obstacles to the grant of a trademark may vary, it is highly recommended to make a trademark search before filing a trademark application. Such search has to be accurate and adequate in order to achieve an effective trademark protection; in some cases it should also cover symbols used in the market.

By means of a general trademark search our trademark lawyers:

  • Make the pertinent investigations;
  • Analyse results based on the relevant legislation, in order to prevent possible obstacles to the grant of the trademark;
  • Draft reports and legal opinions.

In case of need of international trademark search, inmentor put at your disposal specialised multilingual lawyers experienced in trademark and business name searches at european level.

It is crucial for this process to be professionally carried out prior to start with a trademark or company name registration.

Although it is not possible to provide absolute guarantees that a trademark will be granted, a trademark search is a good tool to sharpen the trademark strategy and significantly reduce the risk of opposition from third parties and the risk of being forced to change the trademark itself, despite the investments already made.

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