Trademark Registration

INTELLECTUAL PROPERTY PROTECTION

When transacting business internationally, there is scope for a fair few complexities to arise. One of the most significant and most dangerous is the misrepresentation of your business by unscrupulous elements. This is where a registered trademark can help not just minimise the risk but completely eliminate it.

At Nazım & Co, we understand the importance of your brand and business identity and hence we offer our full support in helping you safeguard your brand and identity through our targeted trademark registration services.

Our experience in registering trademarks internationally is extensive. Our expertise in this area stems from our deep rooted understanding of the law and legal procedures. Thereby we help our clients get their trademarks registered quickly, efficiently and cost effectively.

 

WHAT IS A TRADEMARK?

By definition, “a trademark refers to a word, a phrase, a design, a symbol or a slogan that is used to distinguish a product from those of competitors”. Trademark law serves as a means to protect the public from misrepresentation of the brand identity by other vendors of similar products or services. Trademarks are granted specific to jurisdictions and in the event that a company fails to protect its identity and intellectual property actively, it may lose the exclusive right of a trademark.

Example: In a landmark case, New York based Hilton group of hotels and resorts, lost the exclusive trademark because they had not registered their trademarks in the jurisdiction before a local started a local resort named “Hiltone” and registered it as a trademark.

We help you prevent situations like these which can severely endanger the profitability and the goodwill enjoyed by the business.

 

TRADEMARK SEARCH REPORT

When you contact us for the registration of a trademark, we conduct a detailed preliminary study of the trademarks registered globally as well as in the jurisdictions you operate to identify the following

  • Similar trademarks registered
  • The logo and the differences upon which a unique trademark can be registered
  • Variations of trademarks that can be registered

Typically, one out of every three trademark registration attempts never get to completion because of the complexities involved in registering and the subsequent grant of a trademark.

At Nazım & Co, we ensure that our preliminary study identifies all possible complexities. Thus we are able to pre-empt the possibility of rejection and are able to give you viable options and advice to ensure the trademark application is approved at the very first attempt.

When you partner with Nazım & Co for your trademark registrations, we provide you with recommendations on how you can file your trademark application. Additionally, we analyse your business and provide you with additional trademark registration options and opportunities. This makes sure that when you diversify your business or enter into a new jurisdiction, your trademarks are pre-emptively protected from misuse and abuse.

Owing to our in-depth understanding of laws governing intellectual property, you can be rest assured that we can help you register your trademarks effectively and cost-efficiently.

 

THE EUROPEAN COMMUNITY TRADEMARK  (CTM)

CTM applications and the granted Community TradeMarks are enforced in all the 25 member states of the European Union. This application grants indivisible trademark presence in all of the 25 member states in a single registration procedure, centrally handled by the OHIM (Office for Harmonization in the Internal Market).

The procedure for the grant, refusal as well as expiry of a registered trademark or a trademark application happens across the region with no representation necessitated in the individual Industrial property offices of each member state.

Furthermore, as the grant of a CTM is for the entire region, the European Union is treated as a single jurisdiction and sale, transfer or lease of a CTM is not enforceable in individual member states. This limitation however does not apply to licensing, which can be executed by individual territories, be it member states or even subset jurisdictions.

The granted Community TradeMark usually comprises

  • Any signs or symbols that can be graphically represented
  • Particularly words, including personal names, designs, letters, and numerals
  • The shape of the products, their packaging, or any design as long as they are distinct from other similar products.

The grant of a CTM entails the following procedural steps:

  • Scrutiny of the application, for the completeness of the application, the fact that the CTM application is truly unique, and lastly the viability of a CTM grant.
  • Publication of the application.
  • The procedure up to registration which may comprise opposition proceedings if the application is challenged by any entity that believes it unsuitable for the applicant to be granted a CTM.

On the basis of one application, protection may presently be obtained in Austria, Benelux (Belgium, the Netherlands and Luxembourg), Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, the Slovak Republic, Slovenia, Spain, Sweden and the United Kingdom.

 

REGISTERING THE INTERNATIONAL TRADEMARK (MADRID PROTOCOL TRADEMARK)

Under the Madrid Protocol, trademarks can be registered across a single jurisdiction comprising over 85 member nations.

Individuals, groups or organisations belonging to member nations of the Madrid Protocol can apply for the registration of their trademarks in each of the other member countries through a single international application. This process is simpler and cost effective when compared to filing separate applications in each of the member nations, notwithstanding the fact that individual applications would need adequate representation on behalf of the applicant in the corresponding jurisdiction.

As the Madrid Protocol is steadily increasing in popularity as well as acceptance across geographies, the member nations party to the treaty are also continuously on the rise.

Registration of trademarks under the Madrid Protocol allows the owners to, at a later date, expand said trademarks to apply to new member jurisdictions as well. This process is referred to as “subsequent designation”.

 

REGISTERING THE US FEDERAL TRADEMARK

The US markets are no different if not more aggressively competitive for new entrants. Hence it is imperative that businesses register their trademarks in the US as well.

At Nazım & Co, we extend our total support to help you through the process of submitting your trademark application with the United States Patent and Trademark Office. In addition, we also assist you in the digitisation, adjustment of colour profiles and the integration of designs and specimens into your trademark application.