Breaking down the trademark / Simple guidance for business owners

One of the most important things to consider when setting up your own business is to safeguard and protect the business’ trademark. Trademark registration is one of the most effective ways to build and defend a brand, thus it constitutes one of the company’s most important assets.  The means through which your business can attract and retain customer loyalty and create value and growth. which according to WIPO (World Intellectual Property Organization) is defined as “a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”. A trade mark can consist of any signs, in particular words (including personal names), or designs, letters, patterns, numerals, colors, the shape of goods, or of the packaging of goods or sounds.

In order to provide protection, trademarks need to be registered, in accordance with the Regional, European or international legislation. To be eligible for registration, your trade mark must be distinctive and must not describe what you sell.  It must be such to distinguish you from your competitors, while at the same time it must not monopolize  a sign that merely describes the goods and/or services that you offer. The reason behind that is quite simple: such signs should remain available for everybody: for you and your competitors.

Once registered, a trademark not only gives the trademark owner the exclusive right to use the mark, but also allows the owner to prevent others from using a similar mark that can be confusing for the general public.

There are three (3) different levels of protection which are respectively provided by Regional, European and international trademark. In case your company is a small or medium-size one that does business within the country of its domicile, a regional trademark will cover your needs. You can apply for registration at national level at the intellectual property offices of your country, under the specific provisions of local legislation. As far as Greece is concerned the law governing such issues is the l. 4072/2012.

For a more extended protection you can go for the ‘European Union trade mark’ (EUTM) which will be registered at the European Union Intellectual Property Office (EUIPO), and which is regulated under the Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark. The EUTM system consists of one single registration procedure that grants the owner an exclusive right in all 28 EU countries.

National and EUTMs coexist and are complementary to each other. The same trade mark can be registered at EU and/or national level.

However in case your business develops activities in the international market, you may find it convenient to apply for an international trademark, under the provisions set by “Madrid – The International Trademark System” of WIPO.  The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide, which gives you the opportunity to opt for protection in up to 117 countries, with a single application. However, bear in mind that before you can apply for an international registration, you need to have already registered, or have filed an application, for a regional trademark in your local IP office. You need to submit your international application through this same local IP Office, which will certify and forward it to WIPO. Once your application is approved, WIPO will notify the IP Offices in all the countries where you wish to have your trademark protected, which will in turn approve or decline your request in accordance with their legislation.

It is important to note that before applying for registration in any of the above three (3) levels (Regional, European and/or international) you need to conduct a research to find out if identical or similar marks already exist (or are pending) in your target markets. You need to make sure there are no other trademarks similar to your mark and used on related products or for related services registered. United States Patent and Trademark Office’s Database, Global Brand Database and European Trade Mark and Design Network’s Database are some of the online platforms that enable you to check for already existing trademarks that could potentially block your application for registration. However, be aware that if your search yields a mark that you think might conflict with your mark, you should then check status to see if the application or registration is still "in force" since any "abandoned” trademark cannot be used to block your new application.

So, once you start with your own business, pay attention to the valuable asset of trademark. Come up with an attractive idea, decide your target market, search- apply and register.

The information and views set out in this article are those of the author(s), do not constitute a legal advice and should be considered as such. It is noted that this is a general overview and that each case needs to be examined separately as special rules may apply.

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