4 November 2020 Trademarks Stefano Giro

Registering a trademark for your brand, product or business can be challenging, if you are not sure where to start. This is a quick guide to help get you started on your trademark registration journey.

1. Secure your trademark before you go to print

If you have a product or brand that needs a trademark registration, which will have packaging and other print materials where the trademark is required, it is important to ensure that your trademark has been secured before going to print with your materials. In the event of a conflict, you may end up being unable to use any of those printed materials, thereby losing a significant amount of money. Additionally, you would most likely need to reprint all the materials, doubling your initial costs. You may also be left with inventory and materials that have to be written down or donated to recoup some of the costs.

In many cases, trademarks are necessary to protect your product, brand or business against competitors and counterfeiters. Conducting a trademark search is the first place to start on your journey to protecting your IP. You will either be able to protect the trademark, or the search will flag any conflicting marks, whereby you will need to modify the trademark to prevent confusion or conflicts with the existing mark. In both cases, the outcome is worth the wait to prevent unnecessary costs to your business.

2. Don’t be afraid to be unique

It is generally easier to secure a registration with a distinct trademark. Using simple words and phrasing is usually not distinctive, e.g., Luxury Leather Handbags. It can also be difficult to acquire the domain name with simple wording as many .com domains are no longer available or carry a hefty price tag. A unique business name, e.g., Net-A-Porter, can help you not only to stand out from the crowd, but also to secure a trademark for your business name, providing added protection to your IP.

While simple names can be more difficult to work with, a little creativity can go a long way, for example, when you are naming your business. Certain phrases that are memorable and relevant to your industry can work well as a business and domain name, and they can also help you stand out from the competition. The example above of Net-A-Porter is a play on words of prêt-à-porter, a fashion term meaning off-the-rack or ready-to-wear, which is memorable for their fashion-conscious target customers. If you are considering this style of naming for your business, you should consult with IP and branding experts to understand what would work best for you and what the future implications may be, for example, if you wish to expand your business to other markets.

3. Go big or go home

When registering a trademark name, you should consider whether you will ever take your business activities to the international market. If you are certain that your business will only remain in one particular country, then it is best to work with an IP firm that can provide specific advice for that country. However, if you foresee an overseas expansion in the future (even if it’s some time away), consulting with an IP firm to register an international trademark is strongly advised. This will protect your business from potential competitors who may get the first-to-market advantage in your future markets, if your trademarks are only protected in your current country of activity.

Many businesses today are founded by replicating concepts from foreign markets. Examples of this can be regularly seen in the technology industry, for example, in cases where live streaming apps were originally developed in China and then foreign companies replicated the technology for the US market, subsequently overtaking the Chinese companies with their ability to quickly adapt to the US market needs. A trademark registration can be the first step to ensure that your brand, product or business isn’t hijacked before you have a chance to get a foothold on a new market.

4. Dot the i's and cross the t's

Last, but certainly not least, it is important to consider the complexity of a trademark registration. It requires national and international legal expertise as well as specific industry knowledge to properly understand how to broach the registration process. A missed deadline, a missing form, a slight conflict – these are all minor issues than can result in your registration being refused. An IP firm with extensive experience sees numerous trademark registrations on a daily basis and they are equipped to prevent issues, such as missed deadlines or missing forms, and catch any conflict issues when they occur, so you can quickly respond.

Additionally, trademark rights can differ between markets, whereby a business may have more or less rights, depending on the country or region. For instance, in Italy, a non-registered trademark may still have protection as a new registration does not mean a business that previously used it no longer has rights. The business may apply to continue using it within the current regions of usage. Consulting with a local IP expert to register a trademark name can provide valuable detailed insights into IP specifics for a local market, such as Italy, to help mitigate risk and address unique circumstances.


Article by: Stefano Giro