Trademarks are important for startups and SMEs. Here are five things you should know about them. Knowing these five things will help you make smarter decisions.
1. Trademark rights are established by registering the mark
Trademark rights do not appear from thin air. To get legal protection for your mark, you need to register it. Registrations are territorially limited. A French trademark registration is valid only in France. Luckily, the EU has a European Union trademark that is valid in all EU countries. Apart from that, you need to think on a country by country basis. You should register your trademark in all countries that are important to you.
In some countries, it is possible to get limited trademark rights without registration, but relying on unregistered trademarks is not wise. Enforcing them is uncertain and expensive.
Once you have registered your trademark, you should also make sure that others do not take advantage of it or inadvertently use similar brand names. Having many very similar brand names will only dilute your own brand and trademark. Having a registered trademark enables you to tackle this problem.
2. A trademark enables you to prevent others from using a similar mark
A common myth about trademarks is that once you get your trademark registered, you can use it freely. In fact, trademarks operate just the opposite. A trademark right is not a right to use the mark, but the right to prevent others from using it or a similar mark. It is possible that a registered trademark cannot be used because it infringes other earlier trademarks.
Although registration does not grant you the automatic right to use the mark, it prevents others from later acquiring trademark rights that can be used against you. In this sense, they will also secure your own use.
You can read more about this here.
3. Not all names can be trademarks
There are legal thresholds to get a trademark protected. The minimum requirement is that the trademark is “distinctive”. If a trademark is not distinctive, it cannot be registered and it does not get legal protection. Names that simply describe the product or service, or its characteristics or purpose of use are not distinctive. For example, the name “Slim” would be descriptive of nutritional supplements.
When coming up with a brand name, it is important to choose a name that is distinctive and that can legally qualify for trademark protection. Investing in creating a brand that others can use and take advantage of is not a winning strategy.
You can read more about distinctiveness here and here.
4. Trademarks can be valid forever
A trademark registration is valid for 10 years at a time. In the EU, the time starts from the application date. Other types of intellectual property typically have an expiration date. For example, copyrights are valid for 70 years after the author’s death, patents are valid for a maximum of 20 years, and designs a maximum of 25 years.
Trademarks can be renewed indefinitely. For example, The Coca-Cola Company’s first trademark Coca-Cola was registered in 1892 and it is still valid today. Other trademarks that were registered in the 19th century that are still valid include Quaker (1895), John Deere (1897), Maizena (1876), Guinness (1876), and Kodak (1891).
If renewed and cared for properly, there’s no limit on how long a trademark can last. Also, unlike tangible property like factories and computers, a trademark appreciates in value over time.
You can read more here.
5. Trademark rights can be lost for mismanagement
Although trademarks can be valid forever in theory, it is possible to lose the registration unpurposely. If a registered trademark is not used for five years (three years in some countries), others can cancel the registration for “non-use”. McDonald’s famously lost its EU trademark BIG MAC because a Scottish company filed for its cancellation and McDonald’s could not show convincing evidence that the trademark had been used in the EU.
Another way to lose a trademark is through “genericide”. If a registered trademark becomes a common generic name, it ceases to function as a trademark and the registration can be lost. Examples include “Aspirin” and “Heroin” which used to be trademarks of Bayer. Trampoline was a trademark of Griswold-Nissen. These are now common generic terms. To keep trademark rights valid, it is important to use the mark correctly (e.g. not to use it to describe the product or service or use it as a generic name) and document the use properly. Also, it is important to take action whenever the trademark is used improperly and without permission.
You can read more here.
To sum up these principles, you should do the following:
– Create a trademark that is distinctive and protectable
– Register your trademark as early as you can
– Monitor unlawful use of your trademark
– Renew your trademark every ten years to keep it valid
– Use your trademark correctly and keep records of use