Registering your mark sounds easy. Like getting a domain name! You just pick it up on a website, check if it’s available, then hit “register” and within 10 minutes the name is yours.
Brand registration works the same way, right?
Right?
Well, actually no.
A brand is a too general term meaning a lot of things. The font you use, the official color of your company, your store design, all this can be part of your branding. While a trademark is something more defined.
Trademark types 101
There are 3 main types of trademarks: a logo, a wordmark, a combined mark and a few non-traditional types.
1. A logo example. No word elements.
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2. A wordmark example. A simple word in any font, without any design elements.
3. A combined mark aka wordmark+logo
What you ought to know
When you made up your mind on what you wish to protect you need to know a few things:
- Marks are territorial, every country has its own Trademark Register and does not recognize foreign trademarks.
- Registration can take months and even years in some countries
- Marks protect only the products and services that you mentioned in your application.
- There can be prior similar marks that might block your mark.
- Some trademarks can be unregistrable for a number of reasons.
Generally speaking, there are 2 ways to make a country recognize your trademark. First, to file a trademark there nationally. That’s the most preferred way in the majority of developing countries. Second, you can try using a Madrid Agreement to extend your existing mark to another country. That can sometimes be more cost-effective, but has its drawbacks.
Registration of marks can take years. That’s crazy, we know. But in Nepal it can take 7 years to register a trademark and it lasts only 7 years from the moment of filing! So you actually need to renew a mark BEFORE it’s even registered! Not all countries are like this. Nonetheless, the US the process takes around 14 months and in other countries it’s around a year.
When filing a trademark you must specify your products and services and they must be in accordance with local standards. All products are divided into 34 classes and all services are divided into another 11 classes, making 45 classes in total. There is an international classification which makes it easier to choose terms for each country. An ideal number of items is 7-30 items per class.
Any active trademark which is similar to your mark and has a prior filing date can block your trademark from registering. That’s why it’s so important to order a Study before filing the mark! Sometimes only a very detailed search conducted by a trademark specialist can find conflicting marks.
Some trademarks can’t be registered as they are either descriptive, or misleading, or offensive or simply contradict to one of the local laws. Each country has its own set of rules, what is allowed in one country, is forbidden in another. Descriptiveness is the most common reason for refusal. That’s a mark that describes the associated products and can limit the competition and give an unfair advantage to the owner of the mark. Think of “Salty” for snacks, what if you own the mark and can demand that all other manufacturers stop using salty to describe their products?
Other links:
• Benefits of getting a mark. https://bonamark.com/content/benefits-trademarks-explained-1-minute
• What is a trademark? https://bonamark.com/content/trademarks-101-explained-2-minutes
• What is a study? https://bonamark.com/content/explaining-trademark-studies-1-minute
• How to get a trademark? https://bonamark.com/content/registration-process-nutshell-explained-2-minutes
• Why Bonamark.com is so good. https://bonamark.com/content/our-value-explained-2-minutes