Trademark Services

Trademark in Brief

Organisations spend time and energy to invest in the development of a new brand. This is to ensure that time and energy is not wasted on the wrong name. It’s equally important that, at an early stage of brand development, thought is given to the question whether the developed brand, the creation or the design can be protected by means of a trademark registration.

In principle, almost everything can be protected as a brand. ‘Everything’ can include: words (and any special style of writing), drawings, letters, numbers, shapes, packaging design, colours and family names. This protection can be applied for and granted individually (linked to a person or company) or collectively (as a hallmark for different parties). These different symbols must, however, meet certain conditions; otherwise a trademark application for registration can be refused.

Why an application may be refused

Several reasons abound why an application may be refused. For example, non-distinctiveness of a proposed trademark, too simple or perhaps even too complex, it is descriptive or a generic term, a trademark can also be refused if it is in conflict with common decency or public order. Deceptive symbols are not accepted either. Geographical names will be refused in certain cases, as well as flags or state emblems. These restrictions once again underline the fact that solid legal advice at an early stage of brand development can prevent disappointment and cut costs.

Definition

What Exactly is a Trademark?

Legally, a trademark is any sign, symbol or external appearance that distinguishes a product or service from competing products or services.

A trademark has different functions, but in particular it provides brand recognition, identification and distinctiveness for consumers. The definition of a trademark is actually quite broad. In everyday practice, there are various types of trademarks, such as:

● Brand names
● Logos
● Shape marks
● Sound marks
● Colour marks

Examples of brand names include Toyota or McDonalds, while famous logos include the apple mark of Apple. A design may also be a trademark, such as the Coca-Cola bottle. Colours can also fulfil the function of a trademark (for instance the yellow of Yellow Pages), as can letters or abbreviations (BMW), figures (X5), a family name (Louis Vuitton) and even smells and sounds.

Distinctiveness — How it Matters

In trademark law, the distinctiveness of the trademark occupies centre stage. The name of the product or service must be distinguishable from similar products or services of competitors. Trademarks and brand names must not be confusing therefore.

The greater the distinctiveness, the stronger your brand will be. And the stronger the brand, the better your chances of taking action against trademark infringers or copyists.

The Process

Availability & Registration

Trademark Search

Investigation via a trademark search provides you with a quick and easy answer to the question as to whether you can use your chosen trade name(s) undisturbed.

Mitigating Risk

Save money and time by performing a trademark search early. Avoid the risk of a third party forcing you to remove products from shelves and starting from scratch.

Expert Registration

Our experience helps highlight potential conflicts you may not have considered, examining all relevant trademark registers for identical or similar marks.

Essential for Protection

The registration of your trademarks is vitally important since it gives you the exclusive right to use the trademark (or, rather, to stop others from using it). It provides you with an important means for taking action against third parties that attempt to use the same trademark or a similar one.

When registering a trademark, it is important that you carefully consider the areas for which you want trademark protection. It is important to register your Intellectual Property in all countries where you produce or offer products and services.

The Manner of Registration

Protection can only be invoked for what has been registered. The registration thus determines the scope of protection for the trademark. It is not enough to determine the countries; you should also consider for which products or services you want to register your trademark (goods classification).

Trademark Watch Service

Registration alone is often not enough. You will have to actively monitor and watch your trademark(s) to prevent others from infringing them. It is a useful tool for identifying infringements and misuse timely such as:

✔ Early detection for opposition
✔ Investigation by KellysIP
✔ Monitoring online marketplaces

Preventing Infringement & Misuse

In today’s world, the internet is also used by those who want to use or abuse your name or trademark. We have developed a system in which we constantly monitor against misuse of our client’s trademark or trade name, whether it involves counterfeits or unauthorized parallel imports.

What is Trademark Infringement?

Infringement is a complex journey of seeking to distinguish and uphold your rights. The more distinctive and novel the brand name you select, the more likely it will be that your trademark will be awarded protection.

Conflicts may arise between owners and applicants. Unless an applicant has conducted a thorough search, there is a strong likelihood of similarity to a mark already registered in their class of goods.

Trademark Law & Protection

Trademark law provides essential tools for companies as a shield against possible infringers. These tools enable brand owners to operate freely, so that their Intellectual Property can come to full maturity. It provides opportunities to take action against parties that infringe upon such rights or want to take advantage of your brand name and your efforts to be successful.

Enforcement Actions

Opposition Procedure: The onus falls on the trademark owner to identify and object to any attempted new registration that might infringe its existing rights. It is crucial that the opposition is formally submitted within the prescribed period.

Logos: If you have registered your logo as a trademark then you can also take action against any unauthorised use or misuse, helping you maintain your brand's visual integrity.

Our Trademark Services

Trademark filing (new applications and renewals)
Clients’ portfolio management
Preliminary advice
Conduct of clearance search at the Registry
Takeover
Recordals (Assignment, Merger, Change of Name / Address)
Restoration
Watch Services

If you would like to know more about strong and weak brands and why it is important to protect them, please contact us or Email: info@kellys-ip.com.