TRADEMARK

When starting a new company, or creating a brand, one of the first things to do is choosing a name. It is fun but can also be difficult considering the regulations it must comply with to be accepted as a trademark, not to mention coming up with a name that no one else is already using. Launching a brand and investing in marketing before having the exclusive rights is a risky decision – let Otmore help you secure it!

We can assist you with the naming process, from the first idea to the final choice. Read more about our trademark services in the different sections below.

Our professional translators will analyse the trademark name that you are interested in, to highlight any potential risks that may prevent it from being registered.

Analysed languages:

1. Afrikaans                   17. Italian
2. Arabic                        18. Japanese
3. Azerbaijani               19. Korean
4. Czech                          20. Macedonian
5. Danish                       21. Malay
6. Dutch                         22. Norwegian
7. English                      23. Polish
8. Estonian                    24. Portuguese
9. Filipino                      25. Romanian
10. Finnish                      26. Russian
11. French                       27. Simplified Chinese
12. German                     28. Spanish
13. Greek                         29. Swedish
14. Hebrew                       30. Thai
15. Hindi                          31. Turkish
16. Hungarian                32. Ukrainian

Trademark Search Report Light
This report is included free of charge with all trademark applications. We will search for identical marks in international databases covering EU, USA, Canada, Norway and more than 50 other countries. The result will provide an indication of the possibility for your desired trademark to get registered. On request, we can also include the availability of suitable domain names for your trademark.

Trademark Search Report Comprehensive
This is an optional add on to the above, which also includes searches for similar marks. Depending on your needs, we will tailor-make the report to include even more specific information and details about the possibility to get your desired trademark registered in the relevant jurisdiction(s).

Examples of what can be included:

• Searches in relevant company name databases
• Searches for non-registered trademarks in relevant markets
• An analyse made by our attorney of the marks that pose a risk, including full records of the relevant marks and the attorney’s recommendation (to proceed with application or not)
• Linguistic search

Otmore can assist with trademark registrations all over the world. We will also help you set up a strategy to make sure that the registration process goes hand-in-hand with the expansion of your company.

Our Legal Department and our Trademark Strategists have decades of experience handling complex trademark strategies and registration processes. We are experts in mangaging this in the most cost-efficient way and we always work with fixed fees, so that you can follow set budgets.

Keep in mind that in some countries, it may take several years to get a trademark registration. That is why it is of the outmost importance to have a proactive strategy, to make sure that you get your registration in time.

Registrations can be made:

• Separately in each country – The registration process is handled by the respective authority in each country.
• In a region like EU or Africa – EU trademarks are handled by EUIPO and the application covers 28 countries. In Africa there are two organizations, OAPI with 17 member countries and ARIPO with 19.
• Through WIPO (The World Intellectual Property Organization) – With one single application, we can apply for your trademark in all 191 member states.

Otmore is a certified representative for EU-trademarks under EUIPO, euipo.europa.eu.

We are members of INTA (The International Trademark Association), a global not-for-profit association of brand owners and professionals dedicated to supporting trademarks and related intellectual property (IP) to foster consumer trust, economic growth, and innovation, www.inta.org.

In most jurisdictions, a registered trademark is valid for 10 years before it must be renewed. Otmore can handle trademark renewals in all jurisdictions. We will make sure that all details in your application are up to date.

Keep in mind that you must use your trademark to be able to keep the registration, should a third-party try to cancel your mark.

Due to long renewal timelines, we have seen actual cases where the owner forgot to renew its trademark. You should not be one of them! Contact us to find out how we can secure your trademark portfolio.

When a trademark application has been filed, it will be examined by the receiving authority. If an error is detected, the authority will send an Office Action, stating what has been found and the time given to remedy any deficiencies.

For EU applications, the examination process is as follows:

1. Filing date – Your application is checked so that it contains the mandatory and basic information required: a request for application, a correctly identified owner, a clear representation of the mark and a list of goods and services.
2. 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.
3. 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.
4. Absolute grounds – Your trademark is analysed to see whether it is distinctive but not descriptive.
5. Translation – Your application is translated so that details of it can be published in all the official languages of the European Union.

Otmore can assist with invalidity and revocation proceedings in all jurisdictions. Contact us for more information.

Otmore has an in-house developed Trademark Watch. It is a software that monitors applications for identical and even similar trademarks that may infringe on your trademark. This enables you to act in an early stage to prevent them from being registered.

It is important to know that most trademark authorities will not notify you if a third-party file an application that may be a violation of your exclusive rights. As the owner, you are responsible to protect your rights – or let Otmore’s Trademark Watch do it for you.

The Trademark Watch is under constant development to always be up to date with the industry’s rapid changes. As of April 2019, it includes 85 jurisdictions as well as Google Play and App Store.

Otmore will manage your trademark rights and is responsible for providing you with all correspondence, from for example the authorities, regarding your trademark. We will also make sure to renew your trademark in time.