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Guidelines for European Trademark Protection

1) Decide on a national or international registration strategy
The usual procedure to acquire trademark protection is to apply for registration in one or more of the existing 34 product classes and 11 service classes. The application can be for either a national trademark registration, a Community Trademark registration or an application for an International Registration designating the countries that are parties to the Madrid Protocol. Simply put, the difference between the two international systems is that, while a Community Trademark registration is either approved or denied for all EU countries, a Madrid Protocol application can either be approved in its entirety or in specific, designated countries where no obstacles to registration exist. Depending on your business strategy, an international registration may offer significant cost savings compared with an incre- mental, country-by-country registration process.

2) Investigate other trademarks in your markets to avoid potential conflicts
Before submitting your registration, carry out a comprehensive pre-study of the markets in which you intend to operate. Survey the various product and service classes that apply to your trademark to ensure that there is no risk of infringement on competing trademarks in any of your potential national markets. In addition to minimizing the risk of future litigation or even a refusal of your registration, this pre-study will help to implement a stronger national and international registration strategy.

3) Protect the mark in the relevant geographic regions
If you choose to register a national trademark in a country in Europe, rather than using the international systems for registration, the protection obtained is limited to that country. Within a short time of filing this application, you should also decide whether you intend to apply for protection for your mark in other European countries. If you file an application abroad within six months of filing your original trademark application, you will maintain the same priority abroad (filing date) as in the original country in which the application was filed.

4) Register the mark as a domain name
Even prior to registering your trademark, it is strongly recommended to investigate the possibility to register your trademark as a domain name in each country where youplan to have a market presence. As more and more consumers interact with companies primarily online, owning this all-important communication channel under your trademark name will be critical to building your brand presence.

5) Use the ® or ™ symbol to highlight the mark
Your trademark is your exclusive property. You should use the ® symbol to draw to the attention of customers and competitors that the mark is registered and belongs to you. If the trademark is not registered in all the countries in which it is used, you may use the ™ symbol instead.

6) Use the trademark correctly
A trademark may be diluted if it is not used correctly. Always use the trademark as an adjective (not a noun), with a capital initial letter and in the singular. Do not alter, abbreviate or change the grammatical form of the mark as this may compromise the integrity of your mark and make future infringements more difficult to litigate. Thermos, nylon and gramophone are examples of marks that have lost their status as trademarks and have become part of our common lexicon.

7) Monitor your mark and react quickly to infringements
Designate someone within your company to be responsible for establishing guidelines and control systems to ensure that your trademark rights are not diluted, diminished or at risk of being cancelled due to non-use. The person responsible should continuously monitor the market and react to any potential infringements of your trademark rights, preferably in close cooperation with an experienced IP consulting firm. If you discover another registered trademark or domain name that may be confused with your mark, assess the situation and respond quickly with appropriate action. The more quickly you react against infringements the more likely you will be to avoid costly future litigation. For companies who find the task of watching published applications or registrations too time-consuming, a trademark watch agreement can also be established with an experienced IP consulting firm.

8) Renew your mark
Provided you renew your trademark every tenth year, trademark protection can in principle be extended indefinitely. Remember that domain names also must be renewed, often on a more regular basis. Establish a system to ensure that renewal fees are paid before the due date.

9) Seek assistance if necessary
If you are unsure as to whether you are using your mark correctly, seek professional assistance and advice. Zacco can assist in drawing up guidelines for correct use of your mark, and our attorneys can provide assistance if your company is accused of infringing the trademark rights of others.

10) Consider further protection when the mark has become known
Once your trademark has become known and recognised in the market, this means you have succeeded in building a brand. To safeguard the value and goodwill you have established, you should begin to consider further protection such as registration of a logo or word mark, registration of new variants of the mark, and/or expansion into additional markets and countries.

New markets, new opportunities
There is, of course, no one-size-fits all approach to registering and protecting a new trademark. Each decision will be affected by technical and legal factors such as the country, product/service class and industry in which your company operates, not to mention an often fast-changing competitive landscape. But by following these basic guidelines in a way that supports your long-term business strategy, your trademarks can serve as a powerful tool for building lasting brand recognition in the European market.

Ultimately, a company’s success in managing this task will depend on its ability to strategically plan, evaluate and adapt its trademark portfolio over time. This means making difficult choices such as whether to devote resources to actively building and utilising a trademark, or to boost revenues through a sale or licensing agreement. What- ever the decision, the process is often highly complex, demanding the skills of expert IP consultants with experience in maximizing the value of licensing contracts, litigation and trademark strategies.

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