Any sign, that is a graphic representation, and is used to distinguish goods or services of one enterprise amongst other enterprises, can be considered as commercial sign/ trade mark (TM in brief herein after). A registered TM gives to its proprietor an exclusive right to use it, that is to say, the right to affix the TM to the goods that are to be distinct, to the services that are to provided. A TM may be affixed on the wrappings and packaging of goods, on correspondence paper, on invoices, on price lists, on advertisements of all kinds, as well as on other printed material. A TM can be used also in electronic or audiovisual media.
The trade mark proprietor is entitled to prohibit any third party from using TM without proprietor’s authorisation. In the event of infringement of TM, the proprietor has many means of legal protection. One can claim that the infringement is lifted and that it be omitted in future. Compensation for any damage suffered as a result of the unlawful use of registered TM by third, non authorized party can also be claimed. Indicatively, each proprietor may claim loss of profits suffered from illegal use of own TM from those infringing the TM law, sums and fees that the infringing party profits from unlawful use, and would have to pay to get its own TM, or fees and sums infringing party would have to pay to get a license from the licensor.
Given the rapid growth of commercial enterprises and companies, the choice of TM for your business, should be made on following basis : existence of a clear and certain distinctive feature, which does not resemble/copy one already existing and registered by another business. Depending on the scope of protection of trade mark that the entrepreneur wishes to guarantee, i.e. national, European or international level, the steps one should follow are different and are set out herein below.
It should be noted that you can register your trade mark at all three levels of protection (national, European andinternational).
One should keep in mind that the costs and fees for registration are high and there is a risk of rejection of one’s petition. Therefore, it is suggested that one registers a TM at national level and then move to establishing a TM at European / International level.
STEPS TOWARDS REGISTRATION :
Verification of existence of a similar TM or a trade mark that resemblers to one existing. is possible to confuse consumers.That is alsoa reason of rejection of application.
Identification of the products-services that you wish your TM to cover. Before submitting the application, the relevant products-services that one wishes to register must correspond to some of the class grades as per law Classification international standards.
Imprinting of the TM on the relevant application to be submitted to competent authority, special attention must be paid to the accuracy of depiction of the relevant colours (if it is in colour) and particular characteristics of the mark, as the application is binding, when submitted, re characteristics of the TM one wishes to register.
Submission of such an application to the competent authority and payment of the corresponding fee. Competent department for submission of applications for registration of national TMs is the Ministry of Development and Investment,whereas for European TMs the European Union Intellectual Property Office (EUIPO) and for international TMs, the World Intellectual Property Organisation(WIPO). The fees of the State vary, depending on the procedure and other factors, i.e. number of class grades that someone wishes to register, submission of request electronically or in person (paper request), etc.
Application is processed and assigned to an officer for review.
The TM shall be contestable for three months, within which, any person having a legitimate interest in objecting may present his/ her/ its case.
Registration of a TM by issuing a decision, if no relevant objection has been submitted.
Particular attention should be paid to electronic payment of corresponding fees. The payment process is very specific and via e-service only. However, there have been phenomena of fraud, i.e. e-mails sent to applicants with fraudulent data requesting applicants to deposit fee in accounts that are not of the state’s .
Whatever your case, our Law Firm has experienced and qualified lawyers, ready to assist with safety at every stage of the process, but also to advise you on any legal issue related to your TM.
The law firm KMD Law and Associates, is in its 18th year of operation and is a dynamic and rapidly growing law firm.