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How to Register a Trademark: What to Do and What Not to Do When Getting Started
Blog Post / Published, May 26, 2020

How to Register a Trademark: What to Do and What Not to Do When Getting Started

overview

When you have a new brand, product, or even an existing business, it’s of the utmost importance that you learn how to protect it. It’s not something you can afford to leave to chance or the unknown. 

In this article, we'll take a look at what some companies have done in the past that can serve as examples of best practices—as well as what might be better to avoid. By the end of this post you will be properly equipped with ways to not only keep your brand from harm but also with ways that you can continue to strengthen it once all the paperwork is complete (as the journey doesn’t end just because fees are paid and documents are signed).

Even if you have an organization that reaches across the globe, we have laid out the key details you’ll need when learning how to register a trademark both locally and internationally.

Errors in Trademark Registration: Learning from Mistakes

Consider these examples of “what not to do” when taking steps to ensure your brand and its products or services are properly protected. Some are more common blunders than others but it would do you well to have the knowledge in your back pocket so all can be easily avoided:

  • 1. Always Clear Your Proposed Trademark

Imagine you’ve spent time and money creating the perfect name and logo for your brand and you’ve placed it on all your merchandise and marketing materials. Then someone, who has a conflicting trademark, has the nerve to try to stop you from using everything you’ve created and invested in. As scary as it sounds, they may have that right!

Failure to clear a proposed trademark before deploying it is arguably the most common, although ironically also the most avoidable, error made in the course of registration. It’s crucial that you check the IP register to ensure that a proposed mark is available for use. A trademark clearance search will indicate whether any identical or similar marks already exist and whether any conflicts could arise that relate to the goods or services intended to be offered under the new mark.

Even if you use your brand in the title of your business, registering your business name on a commercial register is not the same thing as registering your trademark, and may only prevent others from registering the exact same name. Also, just because you have registered your company name does not mean that you have a right to use that same name on products or services.

  • 2. Make Your Brand Distinct

A mark is not permitted to be registered as a trademark if it’s not distinctive from your competitors. A descriptive word mark is far less distinctive than a colorful graphic mark. For example, a simple adjective such as “fantastic” would not be distinctive. Few famous trademarks rely on a word or phrase alone, thus distinctive graphic marks can be seen to be far more successful in fulfilling the inherent function of a trademark.

There is also the concept of “living dangerously” to consider, as many firms have been experimenting with precarious registration tactics, such as attempting to register a brand similar to that of another established trademark. It is typically done in order to exploit potential consumer confusion but can be quite risky. In these situations, businesses need to strike the right balance across all legal and business considerations to avoid liability for infringement. Even slightly miscalculating this risk can prove disastrous for a business.

Let’s see how these types of missteps have played out for business entities in some example cases. Seeing them in action will help further clear up the “why” behind these not being recommended avenues when going about registering your trademark.

Cases to Examine and Situations to Avoid

Let’s examine several cases in which the brands that have come before you missed some key factors that should have been more carefully considered in their trademark registration. These organizations learned the hard way, but with our guide, you fortunately won’t have to struggle to understand what is necessary and what is not.

  • Hisense v Bosch Siemens HiSense

The Chinese company Hisense and the German company Bosch Siemens were parties to a protracted trademark infringement battle due to a near-identical mark being used for similar goods. The first to register its mark for the sale of home electronic goods was Hisense, registering its mark in China in 1993. Seeing this success in the Chinese market, Bosch Siemens sought to register their own “HiSense” mark in Germany and the EU, also for home electronic goods. The two signs were nearly identical. When Hisense exported home appliances into Europe and Germany, Bosch Siemens sued for infringement of their registered HiSense trademark.

The Hisense group was prominent in the home electronics market but did not match the international renown of Bosch Siemens, which may have formed part of their rationale for its attempt to take over the mark. Despite this, Hisense was unwilling to part with the brand it had sold goods under in more than 100 countries and leveraged the growing influence of the Chinese economy.

Eventually, in 2005, the two businesses reached a settlement deal, with the end result being that Bosch Siemens transferred its mark to Hisense. If Bosch Siemens’ HiSense brand had been registered for goods other than home electronics, then the Chinese Hisense may not have been successful in its counterclaim for infringement.

  • United Biscuits Ltd v ASDA Stores

ASDA, a supermarket chain in the UK, sought to “live dangerously” by registering a chocolate bar under the name Puffin, which was intended to confuse consumers with the pre-existing and well-known Penguin chocolate bar.

The similarity of the names and the branding of the two products, in conjunction with being registered for use on identical product types, meant that ASDA severely miscalculated its risk, and was liable for infringement on the Penguin brand. Potentially, if the Puffin brand had been registered and used with a different food product, this may have differentiated the brands enough to save them from liability.

Why This Matters

In any particular case, such as those mentioned above, the result can cost the “losing” party their mark, reputation, profits, and more. These examples demonstrate that it is best to err on the side of caution when registering a trademark.

We need to be careful to avoid assumptions, be aware, be diligent, and not pass over any details in the trademark registration process. It also operates as a warning to businesses to consider the market for trademarks and other intellectual property (IP) rights as global, not merely at a national or regional level.

Now that we’re aware of common things that could potentially go wrong and some areas in which other businesses have experienced confusion (or were too bold or assuming for their own good), we’re ready to move into taking the necessary steps to protect our IP assets.

Go ahead and take all the knowledge you have gathered so far, feeling confident enough to start making moves. The action items to dive into, first and foremost, go as follows…

Taking the Right Steps to Protect Your Brand

With the knowledge base you have at this point, it is time to move into taking the necessary steps to protect your brand:

  • 1. Start by searching trademark databases in the categories required. This is a skilled task that can be managed via a trademark clearance platform or outsourced to an expert, such as a representative from a trademark registration service who has many years of experience in this particular area. Again, this individual or company should know how to determine if prior trademarks might be conflicting. Results can be returned anywhere between one and several business days, so be patient. Once you’ve confirmed that your brand can indeed be registered, you can proceed to the next step.
  • 2. Submit your trademark application to the relevant IP office(s). They will examine your application, and if accepted, your application will be sent forward for publication so that anyone who wishes to object can do so.
  • 3. Once your trademark is registered, congratulations! Your trademark has become a business asset that can be licensed or sold and it will provide legal backing for the commercial value of your brand. Keep in mind that your trademark will need to be renewed periodically, usually every 10 years (it’s wise to make a note of the next renewal date and be sure to submit the required forms in good time to keep your trademark from expiring).
     

Ideally, trademarks should be filed in any territory where you sell, produce, or transport goods. If you operate globally, you’ll want to follow similar steps for international registrations while making sure to abide by local and regional laws [1].

Finding Help to Register a Trademark

As you can see, knowing how to register a trademark will not only give your business legal backing for its identity but also has a slew of other great benefits that simply cannot be ignored.

However, there are definitely a number of elements to be cautious of when going about trademark registration. We cannot stress enough that you should enlist the help of a trademark attorney for legal advice, so you have the confidence that everything is being done correctly and no detail is slipping through the cracks.

Don’t waste any time implementing your trademark registration strategy. Questel provides international registration process support to take the pressure off large-scale worldwide filing projects. Contact us today to find out more.

[1] Questel does not provide any legal services. Legal services are provided by independent IP attorneys on the basis of a separate engagement agreement between you and, if you wish to, a partner IP attorneys firm.