Protecting a trademark
The intellectual property invested in a brand cannot be protected by simply developing the brand and putting it on the market. To achieve an efficient level of protection, the owner should be aware of the possibilities how this intellectual property can be protected.
The first, and perhaps the most important step is registration of a trademark. Nowadays brand-owners are usually well aware of the necessity to go through the registration process, as well as the possible registration choices 's national, international or EU-wide. But there is an important aspect of trademark registration that is sometimes forgotten though: namely, applicants for a trademark registration fail to choose carefully the goods and services to be covered by a trademark application.
It should be emphasized that a trademark, with the exception of well-known marks, is protected only in respect of those goods and services that are included in the trademark registration application. In general, this means that the trademark's owner will be able to prevent other parties from using identical or confusingly similar marks only if such marks will be used in relation to the same or similar goods and services as those indicated in the trademark owner's registration application.
So one should thoroughly consider what goods (services) the trademark will cover. It would be advisable to include in the application not only the goods and services that are already sold or marketed under the trademark, but also the ones that might be sold or marketed in future. It is true that adding additional goods to the trademark registration application will involve additional state duty to be paid. But saving money now will have to be weighed against not being able to add additional goods or services to the same application at a later date, since a new application will have to be filed. And filing a new application will be more expensive.
On the other hand, it is not recommended whatsoever to choose a wide description of the goods in the trademark registration application or to list all possible more or less related goods. In this case the trademark can be easily attacked in relation to the goods where the trademark is not used.
In sum, a list of goods and services for a trademark application should be prepared with due thoroughness, and, if necessary, a specialist's advice should be sought.
It is a common perception that after a trademark is registered the trademark's owner can forget about it until he is required to pay registration-renewal fees. This is not the case, however. Firstly, the trademark must be used in relation to the goods and services covered by the trademark. If one fails to do so, competitors will be able to have the non-used trademark either partly or fully invalidated. Use of a trademark should commence within five years of registration.
Secondly, a trademark owner should observe the market and take active steps in eliminating competitors using identical or confusingly similar trademarks. Preventative actions against such trademarks should be carried out even if at the respective moment the competitor's trademark does not cause any actual harm and does not hinder the activity of the trademark's owner.
If the trademark's owner does not contest use of a competitor's trademark for a period of five years, although having been aware of such use, he loses the right to oppose such use or to request invalidation of the competitor's trademark. So the trademark owner should put up a defense as soon as he becomes aware of the breach of his trademark rights, otherwise he might eventually be considered to have acquiesced with the breach. And when the competitor's activity becomes really obstructive, it might be too late to take an action.
