5 Things You Need to Know To Create A Brand and Register Your Trademarks
If you are thinking of a name for your business or your new product, you should consider the following 5 things before you register it as a trademark.
- What is a trademark?
- How to Call A Trademark Yours?
- What Classes Do You have To Register Under?
- Which Countries Should You Register In?
- How to Register in Many Countries and Save?
1. What is A Trademark?
A trademark can be a word or a logo with color or without that is used by a business to distinguish its products or services, which must not be confusingly similar to another registered trademark under the same class or sub-class of goods or services. The test of confusing similarity is carried according to the “ordinary consumer” – an ordinary (not to the expert) consumer of average care and attention – as defined by Egyptian case-law. The trademark cannot be a geographical indictor (that has a different type of IP protection), has national symbols or terms, contain defamatory or immoral words. The trademark has also to be a distinctive term and not be generic or descriptive of the goods or services it is used for.
2. How to Call A Trademark Your Own?
You have to register a trademark with the Trademark Office of the country you wish to own your trademark in. Owning a registered trademark in a certain country means that you are the rightful owner of the trademark and have the exclusive right to use it for the classes of goods or services you registered it for. Once your trademark becomes famous (certain conditions have to be met before a trademark would be recognized as famous by law) the law extends your trademark protection to all classes of goods and services, and not just the ones that you registered. Registration of trademarks also enables you to take legal measures to stop others from using your trademark without your authorization, that is to enforce your trademark rights.
Registration gives your protection, provided you were also the first to use your trademark for the goods or services, and you acted in good faith. If another party can prove that they have been using the trademark before you filed or registered your trademark then they can block your registration through the Trademark Office, or cancel your registration if you have already registered through court. If five years pass and no one challenges your trademark registration is ownership is perfected in your name except if another can prove before a court of law that you obtained registration by bad faith or fraud, within or after the five years period.
You can keep your trademark as long as you wish provided you continue using it and you renew the registration every ten years. Trademarks like Coca Cola has survived over hundred years. Not using your trademark for two (and in some countries for three) consecutive years gives the right to interested parties to request the cancellation of the registration from a court of law.
Registration gives your protection, provided you were also the first to use your trademark for the goods or services, and you acted in good faith.
3. Which Class of Goods or Services Should you Register your Trademark under?
In 1957 a number of countries signed the Nice Treaty to classify goods and services in markets into 45 classes. To date, 80 countries joined the Nice Treaty including Egypt. Any business wishing to apply to register a trademark in any of the 80 countries must specify which class or classes of goods and/or services the trademark will be used for. For example a company in the automobile industry would apply to register the trademark under class 12 for vehicles and apparatus for the transport of people or goods by land, air or water. The company should also register in class 7 for starters and mufflers, and class 11 for automobile lights, and other related classes. A beauty salon on the other hand would apply to register its trademark under class 44 for beauty care for persons services.
A brand or business manager should consider the goods and services the business will offer at the present as well as few years ahead to make sure the brand (trademark) is registered under all the relevant and related classes. A good registration strategy is one that covers the main classes and similar classes e.g. snacks businesses that always register under class 29 for snacks made of potatoes and vegetables and class 30 for snacks made of wheat and other cereals. If you don’t, then you may find a competitor has registered a trademark similar to yours under a similar class or for a similar product and is offering the similarly branded product next to yours. Of course if your trademark has become famous such as Apple, Pepsi Cola, or Mercedes then you need not worry, as famous trademarks are protected across classes.
The next criteria you need to consider is where will you offer your goods or services.
4. Which Countries Should You Register Your Trademark in?
There are 195 countries in the world according to the United Nations. Registration of trademarks is local and hence protects your trademark from imitation in relation to similar goods and services in the countries that you have registered in. Hence, when you plan to register your trademark you should consider where your business will expand geographically in the future (within two years and more for some countries) to register your trademark therein. If you fail to do so, you risk that others register your trademark in another country and block you from using your trademark in that and possibly other countries. This is not farfetched – there are many businesses who look for successful brands in foreign countries to register them in their own.
The only hinderance in relation to registration in many countries is cost and the fact that you should use your trademark within two years of registration to preserve your trademark registration from cancellation by court. This is where your knowledge of international registration systems would come handy.
5. International and Regional Registration Systems
The Madrid International registration system was initiated by a protocol signed by member countries in Madrid, Spain in 1996 based on the Madrid Agreement of 1891. A single application can be filed with the World Intellectual Property Organization office in Geneva to file an international trademark international specifying the required member countries. An applicant can choose to register in any of the 120 member countries by applying first through the Trademark Office of one of the member countries. An applicant can apply from Egypt to around 110 countries, while reducing cost and time.
WIPO Offices in Geneva
Regional registration systems also operate to offer the applicant the opportunity to register a trademark in various countries through one application for reduced fees. Regional systems include:
- ARIPO covering English speaking African countries, and OAPI covering the French speaking African countries
- European Union Intellectual Property Office covering the European Union countries,
- Benelux Intellectual Property Office covering Belgium, The Netherlands and Luxembourg.