7 steps to successful trademark registration

FORBES Latvia | Opinion Piece

Trademark registration checklist: everything you need to know

Trademark registration is the easiest way to protect your intellectual property. However, registration process can become difficult if you don’t pay attention to basic rules while preparing for registration. Mistakes made in registration process can lead to declined trademark applications and unnecessary disputes in the future. To mitigate risk of such outcome we have prepared basic checklist that you should follow if you decide to do trademark registration on your own.

1. Determine what will be your trademark
It is possible to register various types of trademarks so one of the first things you should decide is what type of trademark it will be. You can choose to register either one of the following or various trademark types.

Word trademark – one or more words, phrase, without any graphic design.

Figurative trademark -  word with a particular font or shape, logo or a logo combined with words, as well as color tone or color combination. Figurative trademarks can be registered either in black and white or in color.

Three-dimension trademark – shape of product.

Combined trademark – consists of all elements mentioned before (for example product label).

Special type of trademarks – sound, light signals etc.

2. Choose territory in which you want your trademark to be registered
Depending on the needs of your business you can choose to register your trademark either on national level, within European Union or internationally with respect to several countries. Please note that there is no such phenomena as a “world-wide” trademark registration.
Your trademark will be protected only in territories where it is registered, so before making a decision think about your business current and also future territories.
Remember - if you decide to proceed with registration on an international scale, you have to start with national application or registration first, i.e. first to apply for registration e.g. in Latvia, and then to file international application to World Intellectual Property Organization (WIPO).

3. Identify goods or services which will be covered by trademark registration
All trademarks are registered for particular goods or services that need to be grouped in classes according to Nice Classification so it is necessary to identify under which class your products or services will fall before proceeding with next registration steps.
Nice classification can be found here
Classification in Latvian language with explanatory notes is available here
A useful tool to find the right class for your goods or services is TMclass here

4. Run a trademark search
When you have decided how your trademark will look like and where you would prefer to register it, it is necessary to check if registration of your trademark won’t create conflicts with earlier rights of third parties, i.e. whether anyone else has already registered in the territory of your interest an identical or similar trademark.

You can do a basic search of already registered (applied) trademarks in the following databases free of charge:

Database of the Patent Office of the Republic of Latvia to search for conflicting trademarks in Latvia here

EUIPO database to search for conflicting trademarks in European Union here

TMview database to search for conflicting trademarks internationally here

Don’t forget that not only identical but also similar trademarks can be considered as conflicting.

If you find in the relevant territory a registered or applied trademark identical or closely similar to yours and covering the same goods or services, you should consider changing your trademark before proceeding with registration or make further investigation regarding the owner and possibly establish a contact to ask for permission to register your mark.

5. Registration of a national mark
Trademark registration often starts on a national level. To register a trademark in Latvia, you should file an application to the Patent Office of the Republic of Latvia.

Application forms in Latvian language are available here
Please note that application must be filed in Latvian. If you are a non-resident you should be represented by a professional trademark attorney (list of trademark attorneys of Latvia can be found here

6. Trademark registration in European Union and/or other countries

For trademark registration in European Union you can use online application here

For international registration you have to file application to your office of origin which will send it to the World Intellectual Property Organization (WIPO).
More information, as well as forms required for the international registration you can find here 

7. Fees

List of fees of the Patent Office of the Republic of Latvia can be found here
European Union trademark fees can be found here
Fee calculator for international registration is available here

 

by Kalīne Ozola, Associate, Latvia

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