A beginner's guide to Trademark Registration
Every business needs one and Amazon expects serious companies to own one if they want to register onto their Brand Registry scheme. But what is a trademark and how do you go about getting one? Trademarking is an extremely complex subject which would require an entire subsection on this site and may also require legal advice from an Intellectual Property Lawyer (IPL). This blog post will only attempt to give a basic overview of why and how to register a trademark.
What is a trademark and why should I register one?
A trademark is a unique sign that identifies you as the owner of goods or services making it clear that it belongs to you. The most common type of trademark is a name or logo but it can range from a colour, slogan or sound. It is not a legal requirement to register your trademark but is generally a good idea to. If you register your trademark you will be able to prevent other companies from using a similar name/logo. If you don’t, another company might decide to register a similar trademark and you might find yourself liable of infringement. This means you are lawfully unauthorised to use your trademark as it shares similarities with another name/logo that has been approved of use by a governing body. The most common penalty of trademark infringement is having to pay for the lost revenue that the registered trademark ensued and further use of the mark must then be stopped immediately to avoid criminal charges.
Imagine growing a loyal consumer base only to lose them all because you did not register your brand. You would ultimately have to rebuild your client base all over again with a different trademark. It is important to note that a trademark does not need to be identical to be accused of trademark infringement. Infringement relies on the likelihood of a consumer confusing the trademarks with another.
Where can I register my brand?
Most countries have their own trademarking systems meaning to secure your trademark you would usually have to apply for registry in each separate country you sell in. Perhaps the most important in relation to Amazon’s brand registry are USPTO, EUIPO & JPO.
With the above examples, you only have to worry about other products with the same brand name in the same areas. Therefore, if another company shared a similar brand logo as you in Japan but yours was only trademarked in the EU then both products would be legally free to continue to sell. What if you decide to sell in Japan though? There is an international trademarking organisation called the Madrid Protocol which you might decide to register on. This system provides trademark protection in up to 120 countries. Japan, UK & North America are all countries covered in this system. The UK will still remain part of the Madrid Protocol after it leaves the European Union. In order to be eligible for the Madrid protocol though, you must have already registered or applied for a trademark in your country’s International Property Office for example, USPTO. It is much more difficult to obtain an international trademark than a regional one as you must also be aware of other products with the same or similar brand name/logo in all countries associated with the Madrid Protocol. If another company has beaten you to the punch and registered a similar trademark logo in a specific country, there is always the option to change your trademark logo or name in that country for example, Lay’s crisps in America are called Walkers in the UK.
It is important to note that applying for trademark approval can take up to 6-8 months for the EU and US Intellectual Property Offices and applying for Madrid Protocol may take up to an entire year. A trademark registration protecting any country/countries is usually valid for a total of ten years but can be renewed indefinitely as long as the trademark is being used.
Why should I need an Intellectual Property Lawyer (IPL)?
The process for trademark registry can be tedious and costly if unaware of what will be required for registering your trademark. One common issue that arises during the process is caused by businesses not doing enough in-depth research into already registered trademarks. In this case, the registration would be rejected for the ‘likelihood of confusion’ and the brand would have to pay again to reapply with another trademark. Companies can initially start their research by looking up registered trademarks on a database usually provided by the regional IPO website however deeper research might be required. An IPL would be aware of this and be able to give reassurance as to the likelihood of a trademark being successfully registered. An Intellectual Property Lawyer would also be able to define all the information an Intellectual Property Office would need in order to approve the trademark and be aware of what is considered as trademark infringement. They would ultimately be able to advise you in this matter.
When can I use the ™ and ® symbols
™ is the symbol used for claiming ownership over a brand which is not yet a registered trademark. The brand may be in the process of getting a certificate of registration so it should be assumed that the brand is still protected. It is generally used to prevent anyone from using it either by accident or mistake. Companies eager to trademark a similar brand may still risk registering their trademark in the hope that the original brand had not yet applied though. It is not advisable to use the ™ symbol to protect your brand without paying for registration. Trademark registration holds a first come, first served policy so it may not matter how long your brand has been selling but rather who registered it first. There are certain country laws that might still protect your unregistered brand though.
You can use the ® symbol when your trademark has been issued a certificate of registration by the Intellectual Property Office. This will allow you all the rights to the trademark’s usage and will protect your brand from being accused of infringement. It legally must only be used after your trademark application has been approved. Once your trademark is registered you will also be allowed to sell and license your brand.