What is a trademark?

A trademark is a sign that distinguishes the goods and services of one business from those of another.

Typically a trademark can be words (including personal names), designs, letters, characters, numerals, colours, sounds, smells, product shapes or their packaging, or any combination of these.

Trademark registrations give companies the exclusive right to use that sign to represent their goods and services, for up to 10 years (after which they can be renewed).

It should be noted that company names and trademarks are two very different things – owning a company name doesn’t mean that you have trademark rights. Company names and trademarks require separate registration.

What’s the value of a trademark?

Trademarks build credibility, help to protect brand identity and reputation and function as a deterrent to would-be infringers. They also open up routes to commercialise your brand and your products through licence, franchise and joint venture arrangements.

Without trademarks, your business risks losing its unique identity (and potentially revenue) to competitors and copycats. It also risks being blocked from certain markets or being sued for trademark infringement because of existing third-party trademarks.

Online marketplaces and social media platforms also have processes in place for brand owners to report infringing products, posts and profiles but they require proof of trademark ownership. In most cases, a trademark registration is the only acceptable form of proof.

Those looking to partner with or invest in a business will also expect to see a robust trademark portfolio. Ultimately, trademarks help to boost confidence in the viability and longevity of a brand and the security of any investment.

Trademarks build credibility, help to protect brand identity and reputation and function as a deterrent to would-be infringers. They also open up routes to commercialise your brand and your products through licence, franchise and joint venture arrangements.

Are unregistered trademarks effective?  

Unregistered trademarks should be the last line of defence for a business rather than the smoking gun. With a registered trademark, all you need to prove is infringement (i.e. that your trademark has been copied). With an unregistered trademark, you will need to prove goodwill in your trademark, misrepresentation (in the mind of the public), and loss as a result, none of which is straightforward. 

Further, not every jurisdiction recognises unregistered trademarks. Hong Kong, China and Singapore all have laws which protect against the infringement of unregistered trademarks, but China’s laws are extremely new and relatively untested. 

Ultimately, trademark registration is the only route which will guarantee brand protection and provide cost certainty.

Are trademark applications straightforward?

National trademark applications are generally straightforward. It’s the following due diligence and strategic planning beforehand which adds complexity:

• Ensuring your trademark is capable of registration – some phrases, words and images are a non-starter (i.e. descriptive, generic or laudatory marks or marks which are similar to other trademarks)
• Searching for existing third-party trademarks so that you are fully aware of potential problems and limitations with your trademark, and are able to make any required changes before fully committing
• Identifying which of the 45 classes of goods and services are relevant to your application – getting this wrong may compromise your level of protection or leave you exposed to a non-use claim
• Deciding on how your trademark is to be represented (i.e. black and white or colour)
• Ensuring that your filing strategy is both cost effective and compatible with both your company’s national and international growth strategy, and that you understand any regional nuances

It should be noted that some national applications (for example, China) will be more challenging than others, especially if you’re applying for a foreign language mark. Applications for International (Madrid) and EU trademarks are also much more complicated than their national counterparts.

Why are trademark searches important? 

Undertaking trademark searches to establish whether there are identical or “confusingly similar” brands already in existence, is strongly advisable. They can help you to identify problematic trademarks in markets of interest and alter your approach to increase your chances of a successful registration (i.e. adding graphics to a word mark to make it more distinctive). Ultimately, the earlier you identify problematic trademarks, the more control you’ll have over branding, legal costs and exposure. 

Make sure that you allow enough time for trademark searches to be undertaken – international searches can take several weeks, even months, depending on the scope. 

Getting the right support from the outset can help you to avoid costs associated with rebranding and trademark infringement (which can cost hundreds of thousands of dollars). 

What does a trademark search entail? 

Google isn’t a bad place to start but it will not provide an accurate representation of active trademark registrations. Proper due diligence involves searching trademark registers in your key and current markets. 

Accessing these registers is straightforward but the correct search criteria must be used to get the right results. For instance, if you’re searching for a logo, you will need to search for the word elements as well as the figurative elements in accordance with the Vienna classification, which is far from straightforward. 

Once you have your search results, you will also need to assess whether any existing trademarks are “confusingly similar” to your own. This applies to visual and phonetic similarities, as well as the goods and services they are being applied to. The question as to whether something is “confusingly similar” is a matter of law and is a hard question to answer without an in-depth understanding of the relevant legislation. 

First to file or first to use? 

In jurisdictions like Hong Kong and Singapore, whoever first uses a trademark has the right to use it, but that isn’t always the case. In China, for instance, the person or organisation who registers the trademark first has the right to use it. First to file jurisdictions, like China, are high risk and should be prioritised when it comes to trademark filings.

Can anyone apply for an International (Madrid) trademark? 

Sadly not. At a minimum, you need to: (i) have a national trademark in a country which is a Madrid signatory from which to launch your international application; and (ii) be able to demonstrate that you have “real and effective commercial/industrial establishment” in that country – it’s not enough to have a client base or a shell entity, you have to prove an operational presence. 

Hong Kong cannot currently access the Madrid system, creating a headache for Hong Kong based companies with no international presence.

Expert opinion is a great investment

If you’re thinking about trademark registrations, engage the help of an IP professional. 

Getting the right support from the outset can help you to avoid costs associated with rebranding and trademark infringement (which can cost hundreds of thousands of dollars). 

IP specialists will also ensure that applications are filed correctly and in the most cost-efficient way, helping you to avoid costly refusals and helping you to future-proof your brand.

For expert legal advice about trademarks contact Ellie Patel at Rethink Legal.

©Ellie Patel – June 2024