What is a Trademark?
A trademark is a sign that enables the goods or services offered by an enterprise to be distinguished from those of other enterprises.
What Can be a Trademark?
Trademarks are distinctive words, letters, numbers, drawings, images, shapes, colors, logos, labels, or combinations of these that are used to differentiate products or services. Advertising slogans are recognized trademarks in some countries and can be registered in national trademark authorities. An increasing number of countries also enable the registration of three-dimensional indications (product or package forms), sound markings, and scents as trademarks. However, many countries restrict what can be registered as a trademark, allowing only visible or graphically detectable marks to be registered.
Grounds for Refusal of a Trademark
The following are some of the most prevalent reasons for refusal:
· Errors and deficiencies in the application process,
· Merely descriptive of the applicant's goods or services, or deceptively misdescriptive,
· General words or design,
· Similar to a registered trademark,
· Confusing terms or design that might mislead the consumer regarding the product's origin, producer, quality, material etc.
· The proposed trademark might be used to denigrate or falsely indicate a link with living or dead people, institutions, beliefs, or national symbols, as well as bring them into disrepute,
· Official words, terms, designs or pictures,
· Merely a surname.
International Trademark Registration
Since the trademark registration documents are valid only in the country where the application is made, a separate application must be made to the countries where protection is requested. There is no worldwide registration system. In the case of an application for registration to the authorized institution in the country of residence, registration creates rights only within the borders of that country. The use of unregistered trademarks in international sales transactions creates risks for companies in global trade.
Companies should apply for trademark registration to the countries where they want to register their trademarks. These applications can be made directly to the official institutions of the country of interest, or in the case of international agreements, they can be made using international institutions. There are various application methods for trademark registration abroad.
A direct application can be made to the patent office of the country where the trademark is desired to be registered. In order to apply for trademark registration in non-citizen countries, it is necessary to work with a resident and authorized trademark patent attorney in that country. The process of appointing a proxy is different for each country and in some countries, it can be even more costly than trademark registration.
2. Application Using International Application Institutions
It is both costly and burdensome to carry out the registration procedures by making separate applications for each country. As a result of globalization and the necessity for practical growth in business life, various global registration systems have been developed. Some of these global registration systems are as follows:
2.1 Madrid System
The use of the Madrid System in international trademark registration provides the advantage of applying to more than one country selected with a single application, language, and currency.
Firms must first register with, or file an application with, their "home" IP office before filing an international application. The registration or application is known as the basic mark. The firms must next submit their international application to the same IP Office, which will certify and transmit it to the World Intellectual Property Organization (WIPO). The application is sent to the pre-selected countries for the registration of the trademark by WIPO. These countries carry out research on trademark registration separately and only for their own country.
One of the most significant advantages of the Madrid System is that if one country refuses to register a trademark, it has no effect on other countries. Other countries may still approve this application. However, although applications can be made from the offices in the country of residence, in the case of an objection, proceedings must be made from one of the offices in the country of objection. In order to prevent cancellation, the trademark must also be used in all countries where it is registered.
You can reach the member countries of the Madrid System by clicking here.
2.2 European Union Community Trademark
This system is a registration process that takes place in all European Union member countries. In all member countries, protection is offered through a single application.
Community Trademark applications can be made to the Office for Harmonization in the Internal Market (OHIM) that has its head office in Alicante (Spain). Unlike the Madrid System, there is no requirement to have a trademark registration or application in the country of residence in order to register through this system. Furthermore, the use of the trademark in merely one of the European Union member states is sufficient to prevent the trademark from being cancelled.
Although it seems to be less costly to register a trademark in all European Union countries with a single application, this system has a drawback that should not be ignored. Countries are treated as a single country in the Community Trademark application system. For this reason, the rejection of trademark registration in any country means the rejection of the application in all countries.
Companies that export goods and services, in particular, must protect their trademarks in the countries and regions where they operate or seek to operate. Because trademark protection is granted on a country-by-country basis, registration in one country is insufficient.
It is critical to do preliminary research in the countries where trademark registration is sought in order to avoid high costs in trademark registration applications. When people or companies see the preliminary research costs as excessive and prefer to apply without doing any research, they will be exposed to high costs that will occur afterwards.
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