Tips on trademarks

As part of the company’s identity and distinction, a trademark is a key element of marketing policy. It is therefore important to protect it by registering it with national intellectual property organizations and, where appropriate, to opt for an international filing procedure.

What is a trademark? | How to register a trademark internationally? | What to check before you start?

What is a trademark?

A distinctive element

A “goods or services trademark” is a sign which enables a company to personalize a product through the use of distinctive elements, thus allowing the business to better position itself on the market. A trademark can be a word, a name, letters or numbers, an acronym, a logo ... or a combination of any of these elements.

A key element of marketing policy

A trademark is considered an element of distinguishing one’s products from those of the competitors. Its choice is an integral part of the marketing strategy of a product.

A trademark allows for an easier identification and location of the product on the market. It influences and incites consumers to make a purchase. It transmits the company’s image and represents a basic element of its reputation. In the context of export, it is important to choose one’s trademark well because it will represent you in the various target markets.

The risk of counterfeiting

In order to reduce the risk of counterfeiting which is harmful to the image of the trademark, it is important to protect it by registering it.

How to register a trademark internationally?

Your needs

A trademark is a territorial right. If you are planning to export products associated with this mark, you will need to register your trademark internationally, in order to retain your commercial rights and advantages abroad. There are several methods of filing a patent in a foreign country. Firstly, it is useful to decide in how many countries should your patent be filed. Based on this, you will choose the most appropriate method.

Filing locally

You only wish to register your trademark in one or a few countries. It is preferable to file with the national intellectual property offices in the target countries. The website of the World Intellectual Property Organization (WIPO) publishes a directory of the national intellectual property offices in all of the world’s countries.

Filing regionally

You wish to register your trademark in several countries belonging to the same regional intellectual property organization. In this case, filing with regional offices represents a simpler alternative to the previous method. The registering and/or renewal procedures are only to be completed once and they confer a uniform protection of your trademark throughout the whole zone in question. No complementary individual registration with the national offices is required.

Filing internationally

The countries you are targeting are numerous and spread out throughout the whole world. In this case, you have the possibility to start an international procedure, which will lead to registering your mark with a number of national and regional offices. The system is directed by the Madrid agreement and the Protocol relating to the Madrid agreement and it is administered by the WIPO. Unless protection is refused by a trademark office in one of the targeted countries, within a specified period of time, the protection of the trademark is valid, as if it had been registered directly with this office. For more information about the Madrid system, please see the general information available on the WIPO website.

The Madrid system has 96 member countries, however, not all of them are party to both treaties simultaneously. In this case, according to the countries concerned by the registration request and according to whether they are the signatories of the agreement or the protocol, the filing procedure will differ slightly: in terms of requiring a previous national or regional registration of the trademark, in terms of the national offices’ response time, of the filing fees and of the transformation of the international request into a national and regional request. For more information regarding the differences between the Madrid agreement and its protocol, please see the definition of The Trade Marks and Designs Registration Office of the European Union (OAMI).

Under Article 4 of the Paris Convention for the Protection of Industrial Property, there is a priority period of six months from the first filing of a trademark in a member country of the Paris Union, which allows to file the same trademark in any other member country by claiming the first filing date.

What to check before you start?

Availability

In order to be registered, a trademark must satisfy a number of criteria of eligibility. It must be distinctive, lawful and available.

The WIPO website offers access to the express search engine of international trademarks recorded under the Madrid system, as well as a Gazette of International Marks.