FREQUENTLY ASKED QUESTIONS

Otmore is taking the traditional way of working with intellectual property rights, IT and trademark communication to a new level by providing high-end consultancy services that guide you from the start to the finish line and beyond. We are the obvious partner, providing your company with a professional guidance in the complex world of online brand protection. By working proactively, we will put you in a strategic advantage, letting you focus on your business, assured that Otmore is protecting your company.

A trademark is a sign which is capable of serving as an indicator of commercial origin. It is quite simply way to create recognition for your costumers, and value!

1. Exclusive Right – It gives you an exclusive right to use your trademark name or logo in the fields and markets that your trademark has been registered in. For example, you can stop piracy copies and products that you haven’t approved.
2. Trademark assurance – You get some kind of approval that you´re not infringing other companies registered trademarks.
3. Increased Value – Your trademark evaluation will increase. A lot!

Yes, it is. There is several advantages a good and proactive trademark strategy can give you:

• If you are negotiating with investors this can be used advantageously in the process.
• The exclusive right to the trademark name will help customers to find you and your trademark will have a chance to increase in value over time while the business is growing.
• When the time comes and you want to sell your business and trademarks, you almost in all cases get a higher value. How much higher? Well, this depends. Otmore and our consultants can help you set up a strategy for the future

Otmore provides a service for trademark application worldwide.

You can protect:

• Word marks
• Figurative marks
• Slogans
• Colours
• 3D-trademarks
• Sound trademarks
• Smells

For just EU trademarks, you can protect any signs in particular words, including personal names, designs, letters, numerals, colours, the shape of goods or of the packaging of goods or sounds, provided that such signs are capable of:

• distinguishing the goods or services of one undertaking from those of other undertakings
• being represented on the Register of European Union trade marks in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

You can find more information here: Council Regulation (EC) No 207/2009 of 26 February 2009.

The Trademark system is built with a classification system so you can distinguish different product- and services from each other.

You probably know some trademark names that are exactly the same, this is because of the classification system. There is a possibility that you can apply and get a registration for trademarks that are exactly the same as other registered trademarks, as long as the product and services are not the same or similar.

There is different classification system in different countries, but the best known and used system is called after the city of Nice. The International Nice-classification system.

There is a total of 45 different Nice-classes. 34 product classes and 11 service classes. The Trademark classification process is not easy and you have to include parts like; future strategies, legal parts and industry Know-how.

It is not possible to add more classes after you have applied for you trademark, all changes you want to do require a new trademark application, which is both time consuming and expensive.

Otmores recommendation is that you always think five years ahead. Depending on what kind of Trademark you are going to create a classification must be made for your future products and services.  When you, hopefully, have your trademark registered, you have five years to start using the trademark in all registered product- and service classes. If you aren’t using it, there is a risk that another party starts a cancellation process of your Trademark – in, not used classes – or in worst case, the whole registration.

Registration is valid for 10 years in most countries and can be renewed every 10 years.

An individual, company or several holders combined.

A descriptive trademark name can be positive in the beginning for a start-up, but it is difficult to build a high-value trademark and also difficult to enforce it. That because it brings a high risk of confusion with other trademarks and you cannot get an exclusive right of it.

A trademark infringement means that an already registered trademark is being used by other party in an identically or confusingly similarly compared way. It means that the infringer takes the exclusive right of the trademark owner.  The result of infringing on a registered trademark may end up in court and with high costs.

For EUTM the application process is about 4 months. Assuming that no one objects against the trademark application and there is no Office Action.

Different jurisdictions have different rules when you apply for a Trademark and the authority will examine your application. You will be sent an Office action if your application doesn’t fulfil the requirements needed. For example, the process within EUIPO (EUTM) is the following:

1. Classification – The goods and services you seek protection for are reviewed to see if they have been correctly classified and their nature has been clearly indicated
2. Formalities – All the details you have entered on your application are reviewed to make sure that everything is as it should be; the signature, languages, owner and/or representative data, priority and/or seniority claims are all reviewed.
3. Absolute grounds – Your trade mark is analyzed to see whether it is distinctive but not descriptive.
4. Translation – Your trade mark application is translated so that details of it can be published in all the official languages of the European Union.

WIPO stands for -World Intellectual Property Organization and the trademark division currently has 99 members. They are the global forum for intellectual property services, policy, information and cooperation. By filing one trademark application you can cover up to 115 countries – but only if you have a registered trademark.

If you are submitting a WIPO application within 6 months after lodging an application in the EU, we will be able to request priority, which means that we get the filing date of the WIPO application for EU application. ”First to File” applies more or less in the whole world, which means that this approach is very beneficial.

In the Trademark Search Report – Light, we will search for identical and similar trademarks in international trademark databases (52 jurisdictions). The result will give you a first indication if the Trademark is possible to register and if there are any identical or similar Trademarks already registered. We will also look at the availability of the most common domain names suitable for your trademark.

How can you detect similar Trademark applications in different jurisdictions that might infringe on your Trademark? The answer is our Trademark Watch and Monitoring service. Even if a similar Trademark application will be filed, in comparison with your Trademark, the authorities in different jurisdictions will not always give you a heads-up. You have to react yourself. Our Trademark Watch and Monitoring service will do this for you. Contact us for more information.

® Registered symbol – Stands for the fact that a trademark is legally registered.
™ Trademark symbol – You can use this symbol if you have sent in an application and want to state that you use the particular sign.

Our recommendation is to use the ® sign.

A submitted trademark application has, in most regions, an objection period where an objection can be submitted stating reasons why the trademark application should not be accepted and registered.

The answer is; The Trademark Thermometer. You can describe it as a flowchart for trademarks.

Follow the steps and do it the correct way. Or as we like to call it ”The Otmore Way”.