What kind of measures is it advisable to take in order to minimize the risks of complaints to a brand?
First of all, it is essential, during the ideation of the brand, to avoid following the path already marked by others: in other words, it is forbidden to copy and imitate other owners’ trademarks! This means that there is counterfeiting even when you think to be smart and you use expedients as, for instance, to add an accent on the word that you want to imitate or to change a letter or even if you use another owner’s trademark by changing only the graphics!
Having appured that you must abandon all ambitions of imitating other owners’ trademarks, let’s try to understand how to achieve a good result.
First of all, when we choose the word that will become our trademark, we must do our best to be creative and we have to find, if possible, an ORIGINAL word. What does original mean? It means that it must be either a word invented by us (sometimes by combining several words in a creative way) or an existing word but having little or nothing to do with the products (or services) that will be distinguished by our brand or with the qualities of these products and services. For example, if we have to look for a word for restaurant services, it is better to avoid ideas like “GOOD RESTAURANT” and similar.
Using fantasy at this stage is very important for two reasons at least:
- In order to avoid that the Authority examining our trademark application refuses to register it because of the lack of distinctive capacity of the brand;
- In order to find word that, precisely because of its originality, is able to capture attention and to be remembered because fanciful
Once finished the effort of imagination and finally found the idea on which to bet, it is necessary to move us towards the second phase, namely to check that there are not earlier identical or similar trademark which can cause problems.
First of all, it is necessary to pay attention and to search not only earlier identical trademarks but also similar trademarks. The search must be performed by professionals in IP field in the relevant trademark registries. For example, if you want to file an Italian trademark, the search must be conducted among all the brands having legal effect in Italy, i.e. national brands, European Union trademarks and international trademarks designating Italy.
A complete search should also take into consideration other distinctive signs such as domain names and company names.
It is important that the search is carried out in the trademark registries because there may be trademarks that, although not used and therefore not visible on the market, are legally existing and fully valid and effective.
The professionalism of Eva Troiani’s law firm guarantees that you receive relevant results of the identity and similarity search . In addition, the firm can assist you in trademark registration and protection phase.