The Beauty of Protecting your Trademark

Building a trademark is one of the most initial steps companies take into consideration whenever they intend to start a new business, as few important measures take place to avoid any future problems.

Usually, trademarks’ owners create their own and pay a lot of money for designing new logos, printing brochures, producing, manufacturing, promoting and exporting the new products to other countries and flooding the market. Unfortunately, and after applying all these steps, it appears to trademarks’ owners that there are similar or identical trademarks in the market and that the conflicting trademark is registered in many countries!!

What shall the owner of the new trademark do in this case??!!

Such behavior would lead to losing all the money paid on the trademark and facing legal cases would make him feel helpless and in a critical position.

Thus, avoiding such problems may be clarified in the followings points:

Choosing Distinguished Trademarks:
If you look for the meaning of Kodak or Google in your dictionary, you will not find a meaning for such words. These are called “Fanciful Trademarks”. This kind of trademarks is considered the distinctive and distinguishable type when referring to creativity. The trademarks’ owners are highly recommended to use this kind of trademarks.

The second type of trademarks is “Arbitrary Trademarks”, e.g. Apple for computers. Apple has a specific meaning, but the list of goods and services related to computer field is not connected to the real meaning of an apple. This makes the word “Apple” distinguishable in the field of computers.

The Third and Forth level of trademarks types are “The Descriptive and Generic words”. Such types of trademarks are so weak. The trademarks’ owners must avoid this kind of trademarks as much as possible since it facilitates infringement acts or can be easily violated.

Researching and Investigating:
The easiest way to check if there are any similar or identical trademarks is surfing the Internet, since you can Google your new trademark, and search for any similar or identical trademarks.

Further, there are many online trademark databases such as USPTO, OHIM, WIPO and others that you can use as your search engine to help you find any similar trademarks.

Another way to examine your trademark is asking your trademark agent to conduct an official search for trademarks in the countries you are interested in.

The official search usually covers trademarks that are filed and registered in addition to pending applications. Such search will provide very accurate results of similar or identical trademarks.

Get the Maximum Protection:
After choosing, researching and investigating your brand, you may protect your trademark as well by following below points:
• Choose the Countries:
When selecting the countries you wish to seek trademark protection in, you should keep in mind the future plans since most of the trademarks’ owners stick to their countries or the region around, and eventually, they forget all about their future plans or expansion. Consequently, they lose the novelty of their trademark in other countries as their trademarks were not protected.
• Choose Class / List of Goods:
There are three ways to choose your class:
Class Heading: meaning that you have to claim as much as possible the list of goods included in the class. In this way, you can obtain high protection of your trademark.

Specify your List of Goods: meaning that you have to claim only the good(s) that you are interested in and thus you can obtain the protection for the list of goods you have chosen.

Related Class: There is a relation between some classes at NICE classification. For example, Cosmetics – Class 3 and Pharmaceuticals in Class 5. Considering the relation between the class relations; it will lead you to obtain the highest protection of the new trademark.

Maintaining Your Trademark:
To maintain your trademark protection, you should proceed with legal action against any infringement acts that may endanger your trademark, since monitoring the market for any similar or identical infringing trademarks in addition to legal action will increase your trademark strength.

By: Ahmad H. Al-Jaser
Email: aaljaser@agip.com
Conflict of Interest Department at Abu-Ghazaleh Intellectual Property (AGIP)