The Basics of Intellectual Property: Trademarks
Ludwig Lindermayer is a patent and trademark attorney at PAUSTIAN & PARTNER. In a series of articles on thought leadership, he describes the basics of intellectual property and how best to protect it as a startup.
As the last session was on the subject of patents which is sometimes quite “dry”, in this session on intellectual property, we will tackle a more lively subject: trademarks.
What are registered trademarks?
A trademark may consist of any sign, in particular words, including the names of persons, or designs, letters, numbers, colors, the shape of the products or of the packaging of the products, or of the sounds, which distinguish the products or the products. services of one company from those of another.
If you have a sign that brings your business to mind when they see it, you might already have a brand. Famous examples here are a certain “swoosh” of a sports business, the triangular shape of a chocolate bar, the shape of a glass bottle – even when not filled with the dark drink and sweet- and red soles on high heels.
Not to mention the names of the companies, almost everyone knows who I’m talking about. And that’s exactly what a brand is: people see it and think about your business.
The only limitation is that it must be represented in the register in a clear and precise manner. This is why a golf ball scent mark (the scent was fresh cut grass) was not entered into the register, as it could not be represented clearly and accurately.
Of course, the possibilities of what can be recorded vary from jurisdiction to jurisdiction.
There are many possibilities to register a trademark: at national level with the office of the corresponding country or at regional level (like a European trademark EUTM) or international (which facilitates the importation of your mark in many countries). Tons of different rules and laws apply here, so we’d better leave it there or we could get lost in the IP rabbit hole.
To file a trademark application, you need your sign and your list of products and / or services that you want your sign to protect. This list is structured by what is called the “Nice Classification”. A classification of 45 classes (1 to 34 for products and 35 to 45 for services) which covers all imaginable products and services. As the classification was established in 1957, it is a living document since many goods and services that appear in the classification today were not imaginable at the time (Internet, 3D printing, etc.) . Thus, the classification evolves over time and each new good or service will find its place in one of the 45 classes. The number of classes generally has a great influence on the costs of a trade mark application.
If you have found your brand and determined your list of products and / or services as well as the office where you want to submit your application, you generally have two obstacles to overcome during the registration process:
Your sign should not be descriptive for the products and / or services for which you want it to be protected; and
There shouldn’t be any older brand that could be mistaken for yours.
This is where there is a lot of case law around the world, so I will only talk about each point in principle. If you want to register the word “milk” for your products “drinks; yoghurt ”and the“ smoking fish ”service you will most likely encounter problems as your sign will be perceived as being descriptive of your claimed products and / or services. Or another example: a bitten apple as a sign would certainly cause problems for “fruits”, but not so much for cellphones or computers.
If you are trying to save a bitten pear for cellphones and computers, you will probably have problems with point two above.
Trademarks are certainly intellectual property rights (IPRs) where startups can do at least a good deal of the work of preparing an application on their own.
Advantages of brands:
- Brands are pretty cheap: Take a European Trademark Application (EUTM), in the simplest case it will cost you 850 euros for the basic office costs for a trademark application in a class. If this app is registered, you get EU-wide protection with just one app. Please note that each EUTM has a hole in the middle: Switzerland.
- You can get marks quickly: While patents can take several years, it only takes a few months to get a trademark.
- Judges are jurists: Comparing images is easier than understanding technical descriptions. The mark will be much more effective over time when it is applied. Compared to all the hurdles you have to overcome in patent infringement, trademark proceedings are generally much less complicated.
- The brands toolbox is packed: Be creative and benefit from broad protection. You can get protection for all kinds of crazy ideas: words, logos, colors, where you put your name, the shape of your product or packaging, sounds, etc.
- The brand is the Highlander among intellectual property rights: He can live forever. If you take good care of your brands, they will never lose their advantage. Your brand consultant has all the care instructions.
Of course, not everything is easy to live with with trademarks. There are a few things to consider:
Use or drop : Trademarks must be used correctly and this use must be well documented for possible need in subsequent trademark litigation. In everyday life this can cause a lot of problems.
Nourish and flourish: Brands need care. For example, they must be used correctly and they must be protected from dilution. Again, ask your trademark attorney for maintenance tips.
Better safe than sorry (and broken): Sign up for more rather than less. This is true for goods and services and countries. It is very expensive to have a procedure for example in a country where your mark was registered too late and has been “seized”. It is considerably cheaper to apply for one country or class too many, than to miss one which is necessary and which has been left out “to save money“.
Trademarks are sometimes seen as less valuable than patents, especially among tech startups and SMEs, which – in my opinion – is very wrong. Brands protect names and sometimes even the freshness with which a business makes money. A successful brand is not possible without brands because they help protect your marketing investments.
The rule of thumb is this: If you earn your money with a sign (it starts with the company name / logo), the IPR should be yours.