10 errors not to do with trademark

When we talk about trademarks, there are many mistakes you should not do if you want to avoid problems. Let’s see the most common ten errors.

Error no. 1: to call a graphic for creating a trademark before having a check on trademark’s registrability from the legal point of view

When it is decided to create a trademark it happens very often that the first step is to instruct a graphic agency for the creation of the logo.
Of course, it is not wrong to get in touch with a graphic; on the contrary, it is advisable to do so, but this must happen after and not before the choice of the words composing your brand.

Risks→The risk is that you invest money in the creation of a logo that could be invalid or reversed if it does not comply with the requirements prescribed by the law for its validity.

If you want to go more in detail:
The verification of trademark’s requirements

Error no. 2: to copy the mark of someone else, worse if it is a well-known mark

Sometimes it is believed that it is a brilliant idea taking advantage of the reputation of an existing brand, so that we “create” a very similar mark which differs from the other one only for few elements of secondary importance (for example, our mark is made with another type of graphic or by adding or deleting an accent).

Risks→ Before doing as above, you should take into consideration that this kind of reckless operation put you in front of the risk to receive claims by the owner of the earlier trademark. In addition, if the earlier mark is a famous mark, you can be quite sure that its owner will probably have all the economic means to protect its rights…also to a Court!

If you want to go more in detail:
How to avoid challenges
Defend trademark from cease and desist letters or oppositions

Error no. 3: to choose descriptive marks

The law, not only in Italy but almost everywhere, provides that the mark must not be descriptive of the product (or service) that identifies or of one of its characteristics.
On the other hand, it is true that often for commercial needs we have the tendency to prefer brands which are somehow evocative of the product. In this field, there is a thin line between what is allowed and what is not.

The suggestion is to get in touch with a specialized advisor who, in front of the concrete matter, will be able to suggest the best way, by choosing a brand which is acceptable from a legal point of view.

Risks→ you risk that your brand is not registered by reason of its descriptiveness or, even if registered, is declared invalid for the same reason. From the point of view of marketing, your brand could be not sufficiently original to catch the consumer’s attention

If you want to go more in detail:
Weak trademark and descriptiveness: the case Bellissima

Error no. 4: not to verify the existence of earlier marks, potentially dangerous

Out of the case of error number 2, which implies the awareness and intention to violate the rights of others, there exists the (very common) case of the lack of a trademark search which is necessary in order to verify whether there are earlier marks which can be dangerous for the use and registration of your mark.

First of all, the verification must not be made only empirically on the market, for example by controlling the competitors on the web, but, above all, it is a search among the marks filed/registered in the Registries of the territory of interest. For example, if you wish to protect a mark in Italy, the search should be conducted among all the trademarks with effect in Italy, namely Italian marks, E.U. marks and international marks with effect in Italy.

Risks→ Also in this case, you may be attacked by the owners of earlier marks, which could prevent you the use and registration of your mark. Before making investments in advertising and launch your brand in the market, check if and to what extent it is incontestable by the legal point of view, otherwise you risk frustrating your efforts and investments….

If you want to go more in detail:
Trademark search

Error no. 5: to choose questionable trademarks with the risk that they are considered unlawful and then invalid

Sometimes we make questionable choices, beyond the bounds of good taste, and we think to create a very provocative trademark, with a strong commercial impact.
It should always be kept in mind that the law requires that the trademark is lawful, namely not contrary to the law, public order and morality.

The Court of Justice has confirmed the invalidity of the brand (due to its contrariety to public order) of a chain of Spanish restaurants named “mafia sits at the table” and has highlighted how such brand trivializes serious phenomenon of organized crime and conveys a non-educational message.

Risks→Be careful when you create trademark with a highly provocative message; whether the Examiner of trademark application considers it unlawful, it will reject the application for registration.
Furthermore, in the event you obtained the registration, your trademark could be declared invalid at a later time.

If you want to go more in detail:
Invalid or deceptive trademark

Error no. 6: understimate the importance of the list of products and services when you file a trademark application

It is very important to write an exact and complete definition of the products or services that your mark will distinguish in order to obtain an adequate protection for your needs.
So called “list of products” defines the limits of the protection of your mark and, for this reason, it must be complete and consistent with the requirements of the office that will examine your trademark application.

Remember that the rules for a proper identification of the products (and services) may vary from one State to another: for this reason, I suggest you to get in touch with a trademark attorney (or an attorney with experience in Intellectual property) who can assist you in this very delicate phase.

Risks → During the exam of your trademark application the Examiner can raise an objection against the list of product or service of your mark. Even more serious, the omission or incorrect identification of the products and services protected by your mark can cause serious deficit of protection.

If you want to go more in detail:
Nice Classification

Error no. 7: to file a national trademark application and to believe to be protected everywhere

In the field of trademarks there exists the principle of territoriality, which means that your mark will be protected only in the State where you have filed a trademark application.
Therefore, if you are the owner of an Italian trademark, the protection of your brand will be limited to the Italian territory. This means that if you export products with your brand abroad you have to be worried to protect your brand also in the State (or States) where you sell or where you are planning to sell.

During the phase of internationalization there are many options to take into consideration, both because there are solutions that allow you to obtain protection in several States with a single trademark application (typically, this is the case of the E.U. or the International trademark) and because the rules to follow may vary from State to State, both at the level of documents to be produced (sometimes notarization and legalization may be required) and at the level of prohibitions to be observed (for example, the non-registrability of the class of alcoholic beverages in Saudi Arabia).

Risks → If you do not file your trademark in the State in which you use your mark, you run the risk that someone files before you a trademark identical or similar with yours, causing many relevant problems to your position. In absence of a registration, moreover, it can also be more complicated to attack the counterfeiters of your mark.

If you want to go more in detail:
Registering a trademark in Italy
Registering a trademark in the European Union
Registering an international trademark

Error no. 8: to use your trademark abroad, especially in coutries with an high counterfeiting rate, and do not register your trademark there

We often use our brand abroad and we do not bother to register it. It is clear that there are many risks, especially in countries with an high level of counterfeiting.
It may happen that someone sees your trademark and decides to take it. Sometimes it happens that the local distributor with whom you have contacts to warn you that there exists a brand identical with yours, registered by someone without your authorization.
Other times it happens that the agent or local distributor files the trademark application in his name without having received any authorization from you.

Risks→it is not sure that it will be possible to recover your brand and, even if it happens, this will certainly involve an increase in your costs.
Moreover, do not neglect the possibility that who usurped your trademark can discredit your reputation by placing low quality products on the market.

If you want to go more in detail:
Trademark in bad faith: abuse distributor’s position

Error no. 9: to think that your mark can “protect itself by its own”

Unfortunately, the mere fact of being the owners of a trademark does not protect you, for this sole reason, from counterfeiters and violations of your trademark rights.
For a start, as a rule no one tells you if someone else files a mark identical to or similar with yours. If you want to be promptly informed, you must – also in this case through your trademark attorney or attorney specialized in trademarks – to put your trademark “under surveillance”, in order to be informed as soon as a trademark which is identical to or similar with yours has been filed.

Another bad news is that you must act in order to protect your mark from counterfeiters. Of course, the support of your consultant will be crucial to evaluate whether there are the conditions for initiating an action against someone else, and, in the affirmative, what kind of action and how many chances of success you may have.

Risks → It is a nonsense to be the owner of a trademark and not to do anything to implement the protection of a trademark. You run many risks if you remain inert; among these I refer, only by way of example, the erosion of the value of your brand caused by the proliferation of similar marks in the market, the consumers’ confusion, the lost profits caused by the presence of counterfeiters. In addition, the trademark owner who usurped your trademark rights but arrived before you, could challenge the use and the registration of your brand in that Country. He could cause indeed many problems to your position.

If you want to go more in detail:
Trademark protection defence and surveillance

Error no. 10: do not act tempestively in the event of counterfeiting

Sometimes, even if you know that your trademark has been counterfeited, you prefer to let it go and you hope that the problem will be solved by itself.
It a wrong and dangerous attitude, which can cause many unpleasant consequences.

For example, the coexistence on the foreign market of two identical trademarks (your trademark and the one counterfeiting yours) could easily create confusion in consumers. Furthermore, the existence of a trademark identical to yours can make difficult to reach commercial agreements with local distributors/agents/investors, who could refuse to share the market with a competitor using a trademark identical with theirs.

Risks → When you decide to challenge the trademark couinterfeiting your rights, you could no longer be able to do so due to expiration of the deadline, according to the law in that State.

If you want to go more in detail:
Trademark Opposition proceedings