Protection for start-ups and scale-ups

PRIORITY: A MIGHTY WEAPON

Every owner of a new trademark is entitled to claim priority abroad six months after the first filing date. The protection date of the foreign application will then have retroactive effect to the filing date of, for example, the Benelux trademark. If someone has filed an objectionable trademark in a country within this period, you can file an opposition, while your trademark is filed later in that country, but with priority.

PRIORITY gives time and insight

Priority gives trademark owners a mighty weapon because it puts the entire world ‘on hold’ for six months. During this period, you have a kind of provisional right to a trademark anywhere in the world. You can wait and see how your product is received and how quickly your expansion plans develop before making a final decision on which countries to register your trademark in before the end of the six-month period.

Other benefits

Major companies also use priority to remain anonymous. 20 applications by Apple would attract immediate attention and reveal their strategic plans. This is probably why Apple filed the iPad trademark in Jamaica, a country without access to an online trademark database. Filing the trademark in the name of the trademark office and transferring it at a later date is another common practice.

Do you have any questions about how to use priority?

REGISTER AS SOON AS POSSIBLE

If you want to register a trademark it is advisable to do so as soon as possible. Waiting until a trademark is successful before registering it is a very risky business, as a similar trademark application may have been filed in the meantime, which will then have older rights. This could prove to be an enormous obstacle.

Trademark registration and compulsion to use it

If you want to protect a trademark, you have to decide which countries are relevant for you. Often, the first impulse is to register the trademark in as many interesting countries as possible. However, you must bear in mind that it will be subject to a use requirement of three to five years. This means that you will have to use the trademark within this period in order to maintain your rights. It is essential to register a trademark in good time, but there is little point in registering it too far in advance.

Start off with a Benelux trademark registration

A Benelux registration is usually a good starting point. You can claim priority in many countries within six months of filing a Benelux trademark. This is a smart weapon. The protection afforded by registering a trademark abroad is retroactive to the date of filing the Benelux trademark. This means that you can wait and see whether the Benelux trademark can be registered without any problems. In six months’ time, you will have a better idea of which countries are important, and therefore where you will need to protect your trademark.

Expanding trademark registration to extra countries

If you have already been selling a product for some time and want to add countries to your sales area, you should inform your trademark consultant. They will check whether the trademark is available in that country, whether there are any unpleasant surprises afoot, and whether it is possible to register your trademark in these new countries.

Applying for a patent before disclosure

There is one particular point to remember to when it comes to patents: a patent cannot be disclosed before the application is filed. We recommend that you meet with a patent attorney before registering the product as a design or putting it on your website. Designs must also be new, which means that they must be filed within 12 months of disclosure. As with trademarks, it is advisable to register designs as soon as possible.

You have a trademark that you have been using for some time. Or perhaps you have a new trademark for a new product, company name or service.

Your trademark is worth a great deal to you as it is an integral part of your identity and serves as a clear indicator to your customers that the product or service originates from your business. Hopefully, it will be a big success. To safeguard that success and act against anyone attempting to profit from it, it is important to protect your trademark name or logo. Below, we have made a list of 5 benefits of registering your trademark.

Benefit 1

The only way to obtain the exclusive right to a trademark is by registering it in the trademark register. Once you have the right to a trademark, you may safely assume that you can use it without any problem in the countries where you have registered it.

Benefit 2

Not only is your trademark protected against any other trademarks that could create confusion, but also against trade names and domain names. Confusion goes beyond that a competitor using an identical name; a trademark right protects against similar trademarks being filed and/or used for similar products or services.

Benefit 3

Protecting your trademark properly may even prevent court cases in the first place. Often, a threat is enough to deter another party that has tried to profit from the success of your trademark. These parties could be direct competitors or even your own distributer who has made your trademark successful in their country and wants some leverage against you.

Benefit 4

Even if you have already been using the trademark for years, you will still need to register it in the trademark register in order to obtain protection. Use alone in most cases does not confer any rights. If you do not register your trademark, you could be forced to stop using it in the event that another company registers it and then brings a claim against you!

Benefit 5

A trademark registration increases a company’s value. If you want to sell your brand or business in the future, potential buyers will first examine whether the trademarks (names and logos) have been registered properly. If so, the buyer can assume that they will be able to use the trademark without any obstacles.

In short, trademark infringement may be intentional or unintentional, but customer confusion almost always harms your brand. Trademark registration is, therefore, not a luxury, but a necessity.

There are a great many factors to consider when protecting a trademark. Fortunately, there are experienced trademark attorneys who specialise in this area and are only too happy to assist you in researching, registering and protecting your trademark. At Knijff, we have a team of over seventy professionals who work diligently every day to protect thousands of trademarks globally. Naturally, we would also be delighted to help you.

If you would like to receive expert guidance when registering your trademark, please contact us.

Knijff Trademark Attorneys is the leading international trademark firm in the Netherlands, protecting intellectual property for over 10,000 clients worldwide. With over 30 years of experience and more than 70 employees, we help high-profile companies with renowned brands as well as scale-ups and small and medium sized business to protect their identity and originality. Our trademark attorneys have both the best legal expertise and specialized industry knowledge, for example in the fields of pharmaceuticals, horticulture, retail and music.

We are leading in trademark protection of product names, company names, logos and product design. From trademark availability searches and guidance on introduction to thorough protection in the Benelux, European Union and the rest of the world. Knijff offers complete assistance with comprehensive services, including budget management, preparation of brand guides and legalization services.