Trademarks are all around us. Today we all know about Google, BMW, Adidas, CHANEL, etc. However, did you know that LeBron James protected his catchphrase “JUST A KID FROM AKRON”? Or that Lucasfilm protected the famous sound of rhythmic mechanical human breathing of Star Wars hero Darth Vader?
It is needless to mention the value of these brands. It is true that value is created by a product or service, that is, the experience they provide to users. However, what preserves that value, prevents copying, but also increases it through licensing, franchises, etc. is precisely the trademark. Find out below how to register a trademark and protect your brand in 5 steps.
The text addresses the national trademark registration (for the territory of the Republic of Serbia).
1. APPEARANCE OF THE MARK
A trademark is a right that protects a mark that is used in the market to distinguish goods and services of one natural or legal person from the same or similar goods or services of another natural or legal person. Hence, two elements constitute the trademark: the appearance of the mark and the goods/services that the sign is supposed to mark.
The mark can be in various forms, such as one or more words (NIKE, HYUNDAI, ZARA, AQUA VIVA, etc.). Personal names can also be protected (NOVAK ĐOKOVIĆ – NOLE, Kylian Mbappé, etc.), and those words can be written in a regular font or be stylized. Furthermore, the logo is often the subject of registration, as well as various images, drawings, letters, numbers, etc. (Audi Circles, bunny on “BAG” spice, but also favorite cartoon characters like Superman, Spiderman, Batman, Snoopy, etc.). Even colors, if they meet the conditions, can be protected by a trademark, and the most famous examples are the purple color of “Milka” chocolate and the combination of the two colors of the Barcelona football club. Sound can also be trademarked, and a famous example is the recorded voice of Stephen Hawking speaking three sentences. Finally, three-dimensional shapes, such as the shape of the product or packaging, can be protected by a trademark, and an example of this is the whole package of “Smoki” (snacks). We can see that, different marks, but also their combinations can be protected. The condition that is crucial for one mark to be registered is that such a mark is “capable” (suitable) for distinguishing in the trade of goods/services. For example, the mark “Hairdresser” for a hairdresser is too descriptive for the service it is supposed to mark, and therefore it is not suitable enough to distinguish between hairdressers in the market in this sphere of services.
On the other hand, the law also prescribes which signs cannot be protected by a trademark. We will mention just a few examples in order to illustrate: a sign containing profanity; a three-dimensional sign that consists exclusively of ordinary, standard packaging such as e.g. bottles that are not distinctive; a sign that is descriptive e.g. “cheapest”, or refers to a quality (e.g. “we are the best”); further, a sign that is fraudulent cannot be registered, e.g. if contains the label “leather” and marks goods that are not made of leather; also, you should not choose signs that are too “ordinary”, such as an ordinary circle or triangle, because such signs are not suitable for distinguishing goods or services on the market.
2. GOODS AND SERVICES MARKED BY THE TRADEMARK
Once you have designed how you want your mark to look, the next step is to make a list of goods and/or services that you sell or provide and that you want to mark by your sign. Therefore, to register a trademark, it is necessary to determine exactly what the sign will look like, but also what it will mark.
Take CASIO watches for example. “CASIO” is a sign (mark), while the products it marks are, among others, electric clocks/watches (wall, table, pocket, and hand) and stopwatches (class 14 of the Nice Classification).
When compiling the list, you should take into account the classifications of goods/services by which the list is formed (such as Nice Classification). If, on the other hand, you prefer to additionally customize the list per your needs, that is also possible, but by taking into account the rules that are prescribed, as well as using certain tools, for which it is usually useful to have professional help. The list that will contain your products or services should be tailored to your needs, so that it includes everything that makes up your business, but also protects you from unfair competition. Therefore, care should be taken not to be too narrow and thus limit protection, but not too broad, because the wider the list, the greater the chance of overlapping with previously registered trademarks or submitted applications.
HOW SIMILAR CAN WE BE? i.e. HOW MUCH DO WE HAVE TO DIFFER?
The essence of a trademark is to make a difference in the market (the difference between products, services, brands, companies/persons, etc.). If two persons have a similar logo but are engaged in completely different businesses (which formally means that the lists of their goods/services for trademark application would be completely different), the registration for both persons could be successful. The main goal is that no one on the market from consumers i.e. customers are not misled (what they are buying and from whom they are buying). Therefore, once the appearance of the mark (name, logo, slogan, etc.) is created or designed and it is decided for which goods/services protection would be sought (trademark application filed), it is necessary to search the database of already filed or registered trademarks and see if you “overlap” with someone. The principle is simple: the more similar your marks are (in terms of how they (visually) look, how they sound, and what their meaning is), the list of goods/services should be as different as possible. And vice versa, the more different the marks are, the more similar or even the same list can be. The exception is, of course, well-known trademarks (APPLE, COCA-COLA, MCDONALDS, NIKE etc.).
Take for example the trademarks “rosa” and “AQUA VIVA”. These names represent the appearance of the mark (verbal trademarks), and both trademarks are registered, among other goods, for mineral water from class 32 of the Nice Classification. Therefore, it is allowed for both of them to be registered for identical goods, because these marks look different visually, sound differently when pronounced, and have different meanings.
Please bear in mind that the list can be narrowed (specified) during the registration process, but you cannot supplement it (by adding goods/services). Therefore, the appearance of the mark and the list of goods/services at the beginning of the process, before applying, should be determined precisely and accurately.
*SELECT THE TERRITORY
Since this blog addresses trademark registration in Serbia, we do not list the selection of the territory as a separate step, because it is understood that you opted for national registration. Nevertheless, we briefly explain the principle of territoriality in trademark law, because the choice of the territory is crucial for all those who do business outside the borders of Serbia.
A trademark is a right that protects you within the territory for which you register it. This means that if you register a trademark in Serbia, before the Intellectual Property Office of the Republic of Serbia (hereinafter: the Office), the trademark is valid for the territory of Serbia. If you sell goods or provide services only in Serbia, a national trademark for the territory of Serbia would be sufficient for you, and by registering with the Office in Serbia, you achieve adequate protection. However, for example, if you sell goods in Italy as well, it is recommended to register a trademark for this territory as well, because the trademark registered for Serbia does not provide protection in Italy (or in any other country). However, the good news is that you do not have to register in Italy before the Italian office, but international registration for most countries of the world can be conducted through the Office (by using the system provided by WIPO), on the basis of a nationally registered trademark or a submitted national application.
3. TRADEMARK (DATABASE) SEARCH
You designed the appearance of the mark, chose the list of goods/services and decided to (firstly) register the trademark for the territory of Serbia. Now it is time to check the databases for the same or similar trademarks or filed applications for the same or similar mark. This check is essential because if there are any obstacles that can be overcome (e.g. by modifying the sign, or more often by amending the list of goods/services), it is useful to do this before submitting the application. That way you save both time and money. While searching the database, i.e. the register of trademarks, please bear in mind that it is not enough just to enter, for example, the word you wish to protect. It is possible that there are numerous similar trademarks or applications, which can be a serious and even irremovable obstacle to the registration of your trademark, even though they do not appear as a result of the search. The reason can be, for example, the fact that they do not look the same visually, but they may sound the same and have the same meaning. On the other hand, you can see the same or very similar signs to yours and get scared, although there is no need for this if the list of goods/services is sufficiently different. Therefore, the essence is in the proper search of the databases, and more importantly, in the proper analysis of the obtained results.
It is particularly useful to know that the Office provides a trademark search service. If you opt for trademark (database) search by the Office, you will definitely get a proper and professional database search. However, the search and the search report only show the result of the search, without providing an analysis of it, nor a precise answer as to whether the application would be approved or not. For example, in practice, it may happen that the search report shows several third parties’ trademarks, in relation to which there is a certain degree of similarity. However, this does not automatically mean that the application cannot be accepted, because a number of factors are evaluated in the process of trademark registration, and it very often happens that the search is a good signal to make certain changes in the application. On the other hand, even if the result of the search is “empty”, i.e. the Office does not list any other trademark in it, this should not be interpreted as a preliminary decision of the Office that the application will certainly be accepted (because as we have seen, it is not enough that there are no other same or similar trademarks for the same or similar goods/services, but it is also necessary that the mark itself be eligible for registration, i.e. that it does not belong to the category of marks that cannot be protected by a trademark). Therefore, the essence is in the combination of a professional analysis of the mark, a search of databases, and a professional analysis of the results thus obtained.
4. SUBMISSION OF THE APPLICATION TO THE OFFICE
In the first three steps, we worked on the preparatory phase, which is the most important in the whole process. The next step is to submit an application to the Office. If you are a foreign natural person or a foreign legal entity and you do not have a place of residence or headquarters in Serbia, keep in mind that you must be represented before the Office by a domestic attorney at law or a representative who is registered in the register of representatives of the Office.
The date of submission of the application is highly important because from that date you have the right of priority over all other persons who submit an application later for the same or similar sign for the same or similar goods/services. Therefore, it is not only important to submit an application for trademark registration, but it is also important to do it as soon as possible, in order to prevent competitors from doing it before you. If that happens, competitors could prevent you from registering your mark or making it much more difficult for you (e.g. if they file the application or register a trademark contrary to the principle of good faith, you could be forced to initiate certain court proceedings against them).
Once the Office determines that the application is formally correct, it proceeds to the substantive examination of the trademark application. If the Office finds that the application does not meet these conditions, it informs you about it and gives you a chance to respond to the Office’s reasons (reply to the Result of the examination). If by arguments, you “convince” the Office that all conditions for registration are met, or if the Office has already determined that there are no reasons why the application should be rejected, the application is published in the Office’s Intellectual Property Gazette. Within three months from the date of this publication, a person who has previously registered a trademark or submitted an application, and believes that the published application threatens his/her right, may file an opposition.
Therefore, we see that the duration of the procedure from the moment of filing the application to the moment of registration of the trademark depends on whether there are any obstacles to the registration of the trademark according to the opinion of the Office or third parties who claim that your application threatens their previously acquired right. The shortest scenario, clearly, exists when the Office immediately determines that the conditions for trademark registration are met, publishes the application, and no one files an opposition within three months of the publication of the application. According to the Office’s statistics, this is most often within six months of submitting the application.
5. REGISTRATION OF TRADEMARK
If the Office determined that the conditions for trademark registration are met, and the aforementioned opposition was not submitted or was unsuccessful (rejected by the final decision), the process is successfully completed. The Office then invites you to pay a fee for trademark registration and validity for the following 10 years. Only after you pay the fee and provide proof of payment to the Office, the Office formally registers and enters the trademark in the E-Register, and delivers the trademark certificate to you. The completed registration is valid for the following 10 years from the moment the application is submitted. However, the trademark can be extended an unlimited number of times for 10 years by paying the prescribed fees. In this way, the trademark can last forever, as long as you extend its validity on time.
Author: Nina Radin
February 23, 2023