PROTECT YOUR BRAND: TRADEMARK REGISTRATION
Intellectual property, information and communication technology, press and Audiovisual media, artists law
A trademark can protect the name and logo of a franchise, its products and its services. Anticipating brand protection is crucial in order to avoid legal disputes and business loss over prior trademarks. The importance of anticipating trademark protection is even bigger when expanding abroad.
· Determine markets to protect
· Anticipate registration with previous trademark search
· Register trademarks for your brands and products
· Secure the legal background of your activity
I. Consider Registration in Markets That You Target and Markets Where Your Brand Has Exposure
One common mistake is to only register in the countries where the franchise started or has an ongoing activity. New entrepreneurs could be inclined to register within the fewest countries possible, in order to save costs.
It is advised, however, to consider a broader protection for your brand. Franchises should register their trademarks at least in all countries where they expect to do business even if it will be only in the long run.
It is recommended to register trademarks where the brand has market exposure as well. This is often the case with neighboring countries or countries sharing a common language, for example, on the MENA market.
II. Anticipate Your Trademark Registration
A trademark availability search is a must in order to avoid a legal dispute over a trademark prior right.
We highly recommend our clients to proceed with a trademark availability search and a market search before even committing to a brand name as it can be a roadblock for the expansion of a franchise.
It is advised to hand this due diligence to a legal counsel who will proceed in an extensive manner: with identical but also with similar signs, on registrars’ databases and for prior use without registration.
In some cases, you might want to reconsider your brand name and/or logo according to the result of the search.
III. The Trademark Registration
1. The Sign and the Class
Trademark protects ownership of a sign under a certain class or category.
A trademark sign is capable of distinguishing the goods or services of one enterprise from those of other enterprises. Such sign can be a word or a combination of words, letters, and numerals. As noted by the World Intellectual Property Organization, it can also be “drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features – the possibilities are almost limitless.”
When applying for a trademark registration, it is often advised to be assisted by a legal counsel for the written description of the sign, particularly for the most complex signs.
2. The Cost of the Registration
Depending on countries, the fees can range from under 300 to up to 1000 USD per country.
As registration in several countries can be costly, it is highly recommended to ask your legal counsel for an estimation of the fees from the early stages of your franchise development in order to take the costs into consideration in the budget.
3. The Choice of the Registration Office
For registering a trademark, you will have to proceed with the trademark registration service of the competent administration within your state. Assistance of an attorney or an IT counsel is highly recommended, when not compulsory.
In countries that are member of the Madrid System, registration can be facilitated. The Madrid System is a convenient solution for registering and managing trademarks worldwide. It allows you to file a single application from the Registration Office of one country and, from there, apply for registration in the desired countries from the 117 members of the Madrid System.
Of note, there is no such thing as an “international brand registry”. The Madrid System is only a service that will allow you to register, from one office, in the Offices of all the other desired countries.
4. The Choice of the Registrant
A first instinct for some entrepreneurs is to register their trademark under their own personal name.
Instead, it is highly recommended to register the trademark under the name of the company running the business activity or the relevant company in the group (when there is a group of companies, for example for tax optimization purposes).
IV. Before and After the Trademark Registration
In addition to registering trademarks, any work or business (between the partners of the franchise or with third-parties) related to the franchise brand shall be protected with carefully drafted Non-Disclosure Agreements or Confidentiality clauses.
It is also important to keep in mind the duration of the registration, as it can vary between 10 and 20 years depending on the country.