TRADEMARK REGISTRATION

The definition of a trademark varies slightly from one jurisdiction to another. However, its aim is to identify and distinguish the source of the goods or services of one party from those of others. A trademark can be as wide and varied as a brand name, logo, shape, sound, smell, colour, letter, number or any aspect that gives a unique and distinct image to a product or a service.

What are the benefits of registering trademarks?

There is no obligation to register a trademark. However, here are five good reasons to do so:

  • The trademark’s owner is entitled to a presumption of ownership and exclusive use of the mark for the goods or services of interest in a specific jurisdiction.
  • Registration will make it much easier to take legal actions to prevent third parties from using a similar or identical trademark.
  • Many companies carry out clearance searches of relevant trademark registers before adopting a new trademark. A registered trademark will appear in the trademark search reports ordered by others and will likely discourage them from proceeding with the registration of an identical or similar trademark.
  • Trademarks and the goodwill associated with them are valuable assets. Your property and trademarks can be sold or licensed to somebody else.
  • The mark’s owner is granted the right to put the symbol ® after the mark, which will alert third parties that the mark is registered and dissuade them from violating your rights as a trademark owner.

When should you consider registering your mark?

Many small businesses or start-up owners will not consider filing trademark applications until they have been in business for months or years. This approach is often justified by budget-related issues but is very risky. Indeed, even if a trademark can be applied for at any time, there is no guarantee it will still be available in a couple of months or years, and therefore approved for registration. Ideally, as soon as you have a trademark in mind and/or have chosen your business name and logo, you should contact a trademark specialist to do a full clearance search and proceed with the filing without delay so as to secure protection for your marks.

A strong trademark strategy will help you establish a successful brand that stands out from the competition.

What do we need to file a trademark?

The requirements will depend on the jurisdiction, but in most countries, we would need the following:

  • The full name and address of the applicant (a company or an individual)
  • The representation of the mark in jpeg format
  • The class and the goods and/or services of interest

A power of attorney or a declaration might be necessary in some jurisdictions.

What you can expect from us
  • We offer advice at the time of the creation and selection of the mark to make sure it meets the registration requirements as set by the country of interest.
  • We perform searches to ensure your mark is unique and there are no similar or identical prior trademarks used and/or registered by other brands.
  • We offer pre-filing advice to determine the details of the mark to be filed: which mark, which class(es), which products and services, under which name, etc.
  • We prepare the relevant filing form and submit to the registry on your behalf throughout Asia but also worldwide.
  • We follow-up with the duty officer and deal with objections and/or oppositions if any.
  • We monitor the filing of conflicting marks by third parties and possible infringements.
  • We monitor the renewal deadlines of your trademark portfolio and prepare and file renewal applications.
  • In case of transfer of trademark portfolio, we verify the datas of the portfolio and perform full due diligence services before the transaction takes place.

We help our clients throughout Asia with their trademark registrations.
Please contact us to obtain a customised estimate.