A trademark is a sign capable of distinguishing the goods and services of one entity from the goods and services of other entities. A word, symbol, phrase, image or a combination of those can serve as a trademark. A trademark is an object of intellectual property.

Trademark protection can be obtained through registration, namely by filing a national/regional application for registration with a local intellectual property office as well as paying the state fees. At the international level a trademark can be registered through Madrid System of World Intellectual Property Organization which enables to obtain protection in multiple separate jurisdictions.

In order to prepare an application for trademark registration the following information is required: • Image of a trademark that is a subject to registration • Name and address of the applicant (an individual person or a legal entity) • Goods and services for which trademark protection should be obtained • Country / countries of interest

In most countries trademark protection lasts 10 years starting from the date of filing the application. This term can be renewed for 10 more years the unlimited number of times upon payment of state fees.

Depending on the country of interest, registration may take up from 6 to 24 months.

A preliminary search is a crucial first step that allows to find out if any identical or confusingly similar trademark has already been applied for registration / registered by the third party. In case the existence of trademarks that are likely to block the potential registration are revealed, the further strategy may be altered. In particular, it is possible to consider the option of modifying the trademark of interest, conducting negotiations with holders of prior identical / confusingly similar marks or initiating non-use cancellation thereof. A preliminary trademark search may be conducted by anyone through free online search tools. At the same time, it is highly recommendable to address intellectual property specialists who use professional search instruments for more accurate result.

A trademark registration is carried out in respect of certain goods and / or services. All goods and services are distributed by classes under the Nice Classification, also known as the International Classification of Goods and Services (ICGS). ICGS contains 34 classes of goods (1 to 34) and 11 classes of services (35 to 45). A new edition is published every 5 years and a new version of each edition is published annually. A trademark application may be filed in one or more classes. Some countries allow one class per one application, whereas others allow multiple classes per one application. Legal protection of a trademark is limited to the goods and / or services for which it is registered.

“TM” may be used to denote that a designation is being used as a trademark regardless of whether such a designation is registered or not. Meanwhile, the symbol “®” is used for the registered trademarks only, when the fact of trademark registration can be confirmed with the respective evidence (certificate, entry into the state register, etc.).

A trademark registration grants its holder the exclusive right to use a trademark as well as to allow and forbid usage thereof by third parties. However, a trademark registration may be fully or partially cancelled by a decision of the competent authority if the trademark was not used for any 3 or 5 consecutive years (depending on the jurisdiction) after its registration without a valid reason. Non-use cancellation cases are considered after the appropriate claim is filed to the competent authority by the interested party.

The fact of trademark registration does not guarantee that the rights of the trademark holder will not be infringed. Therefore, it is expedient to conduct trademark monitoring on a regular basis, so that any unauthorized use by third parties could be revealed in due course. We provide watch services in different countries in order to reveal and prevent the potential infringement as well as advise on the possible course of actions, such as filing an opposition, sending a warning letter or submitting a claim to the competent authority.