IP Law: The Basics of Registered Trademarks
June 07, 07The exhibition has finally finished. You’re allowing yourself a few days of well earned rest and recuperation before heading back to the office. As you lie back on the golden sands, partly shaded by the palm trees lining the beach, your mind begins to drift.
You think of the new diamond cuts that you have seen, and the names…There’s so much in a name, you think… With a slight twinge of jealousy, you wish you could think of a name… One that will set your customers’ imagination alight… You open your eyes, and see the pure white clouds above, through the palm fronds… You shift your gaze to the azure waters surrounding the nearby coral, and suddenly you are inspired! You have thought of the perfect name! And you can now picture the next exhibition in your mind.
The huge placards with the graphic background to the perfect name, the perfect trademark…. And the admiration in the eyes of the passersby, as they realize the inspiration of such a name. This time, you will be the one with the name that is not only brilliant, but is also protected as a registered trademark.
But what exactly can you protect in a trademark registration? For how long? And where?
You take a deep breath. Slow down, you tell yourself. First things first, speak to your patent/trademark attorney. Your attorney will have the answers to both of these questions, and to many others.
Although it’s true that your patent attorney will be responsible for ‘getting the job done,’ it’s also important for you to understand how trademark registration can help you. So let’s answer the questions above, bearing in mind that situations differ, and that the information provided here is of a general nature only. Accordingly, always seek professional advice prior to taking action.
Q: What is protected in a trademark registration?
A: A new name and/or logo of specified goods or services, in a specific line of business. Slogans may also be registerable. Not all marks, however, can be registered. Your patent attorney will advise you as to what can or cannot be registered, depending on the circumstances and the jurisdiction(s).
Q: How long does trademark protection last?
A: In most jurisdictions, a trademark may be registered initially for ten years, and is renewable for additional ten year periods, indefinitely, as long as the mark is still being used in commerce.
Q: Is worldwide registration required?
A: Although international protection may be available under the so-called Madrid System, it is not available in all countries and is not always advisable. It is in any case normally unnecessary to register a trademark in every country in the world. While there isn’t a single rule that can be applied to all situations, trademarks should be registered in all countries in which you feel that there is potential for a significant market and in which infringement is likely to occur if you do not have registration.
Q: Can I register my trademark after disclosure?
A: Unlike patents and designs, applications for trademark registration can be filed even after many years of use of your marks, provided that they haven’t been registered by someone else first.
In some areas, registration of trademarks is often viewed as being a luxury, or of secondary importance. However, in a market in which reputation, image, publicity and marketing are paramount, you do not want to be in a position in which someone else registers your mark, and then threatens you with legal action if you don’t stop using it.
Clearly, you may feel that you wish to continue using the mark and that you have significant prior use, such that you are prepared to become embroiled in a legal battle, if the registered owner decides to sue.
On the other hand, if you decide that you don’t wish to become involved in a legal tug-of-war, you will have to stop using that mark and replace it with a different mark. Both options will cost large sums of money.
You would thus be well advised to carefully invest a relatively small amount of money in registration, rather than leave continued use of your marks to chance.
You stretch out, 33,000 feet above those azure waters where you were first inspired to think of that brilliant name. As the plane touches down, you are still dreaming of the faces around you, in rapture at the name that you have chosen, evocative of sea, sand, clouds and creation. And like the diamonds you sell, as long as you use the name, it will remain yours forever.
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This is the sixth in a series of articles about intellectual property. Click Related Articles below for the first three articles.
Jeremy Ben-David, originally from the UK, has been involved in IP since 1985, and since 1995 has been managing partner of JMB & Co, a full service Intellectual Property firm. He can be reached by email at: jmbendavid at israel-patents.co.il.