For an easier and stronger Trademark protection boosting its value.
The recommendation, which does not sound very modern, is: let’s complicate it! In other words, let us complicate it in order to simplify, to optimize it. By cooperating.
On what concerns the aspects to consider when protecting a Trademark – as this does not consist in the mere filing of the Trademark Application and surely does not end with its registration – one should give emphasis to interdisciplinary team work. Between Clients, Advertising Agents and IP Consultants. On the creation of the mark as well as on its communication.
What seemed simple…
Usually, Clients come to us with a mark ready to be applied for registration (and many times already in use) and after analysing it, we eventually find out legal hindrances to its protection or, in some cases, hindrances even to its own use – these circumstances ought to be avoided….. Preferably before incurring production expenses!
A Trademark is only a Trademark if it is capable to distinguish. So, from the outset, any expressions identifying or describing goods or services (e.g. “coffee”, or “robusta”, for “coffee”) are left out; the same understanding applies to expressions that are confusingly similar with trademarks previously protected for covering identical or alike goods or services.
One of our clients’ main concerns is their wish that the Trademark “communicates” the good/service it is meant to cover and with this in mind the Trademarks they present us with are rather “suggestive” Trademarks. So, in terms of protection, said position ends up being counterproductive:
As a matter of fact
– It complicates the Trademark registration process (with its inherent costs). And even if the aimed Trademark Registration is achieved, the exclusive right, the unique space arising from the same, shall be limited from the start. Because one does not hold the exclusive right over the subjacent suggestion reflected by the Trademark and as a result said Trademark ends up coexisting with other similar Trademarks (which in a different way convey the same suggestion). In this speedy world of social media and digital marketing, coexisting with similar Trademarks may lead to significant losses on sales. Because, for instance someone who intended to acquire cream “softSkingold” eventually buys cream “skinsmoothSun” (fictitious example).
Different functions of a Trademark
It is important to find a balance between the advertising function and the distinctive function of a Trademark. Here, the industrial property consultants, instead of being seen as the “opposite side” or the “killjoys” who block creative processes, can (must) be seen as an important help to identify and overcome potential obstacles. They contribute to more creativity and to the development of Trademarks with a higher level of self-identity: Trademarks that stand out and that result stronger (either in legal terms or market-wise).
Interdisciplinary teamwork allow for this sustained and optimized creativity. For example: choosing a strong Trademark, a fanciful or coined expression and associating it to a slogan wherein the good/service it is meant to cover is more effectively communicated. Other cases may involve strategies for acquiring distinctive character, conquering expressions or sentences, or even one colour, which a priori are not distinctive and would not be available exclusives. This M.O. normally entails a higher investment (including on teamwork) and a higher uncertainty as to the success of the protection process.
From another perspective…
From another perspective, the Trademark, alongside with the other industrial property rights, is often emphasized as an important asset to companies. A Trademark Registration can generate revenue. It can, for example, be object of a licence, of an assignment. It may also be object of pledge as a security for a loan. A wise choice and a correct use of a Trademark can boost its value. As one can verify on the Trademark rankings and on the amounts associated therewith.
Knowing better the legal context will also allow one to discover new worlds like for instance smell Trademarks, sound Trademarks, positional Trademarks, movement Trademarks, etc. Or to delineate registration strategies capable of coping with issues like industrial espionage, among others.
The importance of teamwork when communicating:
Communicating a Trademark to the point of the same becoming ultimately the name of a good/service it is meant to cover may lead to the cancellation of the Trademark registration and of the inherent exclusivity and value. Indeed, if the expression at issue eventually becomes generic, even in case of a very singular Trademark, with sustained creativity, it ceases to distinguish and to be a Trademark! Beware. And for example, using a version of a Trademark other than the one that is registered can also be fatal. Communication must be thought by an interdisciplinary team, bearing in mind the following aspects (among others).
Trademarks for the World – thinking the Trademark for Exportation
Online sale and delivery practically everywhere in the world pose increased challenges.
A Trademark meant to cover the entire world is … dangerously fearless. A coined/fanciful expression or a harmless expression in a specific language, may have a negative connotation in another language. The different alphabets, the transliterations, the sounds and the connotation resulting therefrom and how consumers will identify it are aspects to bear in mind. Also, one should consider previous rights that might constitute an obstacle not only to the registration/protection of the sought Trademark but also and not less important to its use in the different territories.
For each one of the territories of interest, it is important to carry out an individual study of the Trademark in order to ascertain whether its protection is possible and to have an availability search conducted aiming at detecting possible previous rights that might block registration of the sought Trademark.
Not being possible obtain a World Trademark in a single registration, there are some solutions that allow to streamline investment in Trademark protection in different countries/territories. One has to delineate a plan, combining availability searches, consulting local IP counsels and different routes of Trademark international protection (national Trademarks, European Union Trademarks, International Trademarks (Madrid Union)), aiming at making the most of the resources available.
When there are inescapable obstacles, alternative strategies must be developed in order to retain some identification oneness. For such, one can use transliterations, adopt different expressions for those specific territories while keeping the Trademark trade dress (colors, lettering, ornaments); associate it to striking device elements (e.g. a mascot), among other possible solutions.
Important Note: a domain name registration is not a Trademark and cannot take the place of the exclusive right arising from a Trademark registration.
Also within the context of exportation, the first contacts made with local manufacturers, clients, partners and distributors in the different territories are also an important aspect.
Frequently, clients who have not safeguarded the protection of their Trademark when going international are often taken by surprise. They eventually find out that in the territory where they manufacture or where they sent an initial order, or where they initiate contacts with local distributors, someone has registered their Trademark. Bearing in mind that industrial property rights are territorial, said anticipation becomes problematic. In some cases, in particular when there is an unauthorized Trademark registration made by an agent or a representative, the situation may be reversible. There might be the possibility to have the Trademark Registration assigned. In other cases, it will be harder or even impossible to reverse the situation. Even if we eventually succeed, this shall surely not be the efficient way to ensure the protection of the Trademark.
Ideally, The Trademark should be applied for protection/registration in the territory at issue before any local contacts are made.
It is important to consider the Trademark in several perspectives, including as an Industrial Property Right, from the early stage of its development. This comprehensiveness should also include a plan of internationalization and communication. A consistent teamwork can optimize the investment, avoid troubles and boost the value of the Trademark.
Joana Fialho Pinto is the author of the article ‘Sustained Creativity’; Industrial Property Official Agent (AOPI).
With an admitted passion for Trademarks, Joana is committed in building bridges between Law and Marketing & Advertising.
She integrates the Trademark team of the Intellectual Property firm A. G. da Cunha Ferreira, Lda.
27 February 2020