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, regional level, EU wide 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 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 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 - http://www.wipo.int/classifications/nice/nclpub/en/fr/. Classification in Latvian language with explanatory notes is available here - http://www.lrpv.gov.lv/lv/precu-zimes/nicas-klasifikacija/klasu-virsraksti-ar-skaidrojumiem.

A useful tool to find the right class for your goods or services is TMclass here - https://euipo.europa.eu/ec2/.

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 very similar trademark.

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

Patent Office of Latvia database to search for conflicting trademarks in Latvia - http://databases.lrpv.gov.lv/databases/lv/trademark/search

EUIPO database to search for conflicting trademarks in EU - https://euipo.europa.eu/eSearch/

TMview database to search for conflicting trademarks internationally - https://www.tmdn.org/tmview/welcome

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 only, you should file an application to the Patent Office of Latvia.

Application forms in Latvian language are available here: https://www.lrpv.gov.lv/lv/precu-zimes/veidlapas

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: https://www.lrpv.gov.lv/lv/node/6556

6.       Trademark registration in EU and/or other countries

For EU registration you can use online application - https://euipo.europa.eu/ohimportal/lv/forms-and-filings

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 - http://www.wipo.int/madrid/en/how_to/file/file.html.

7.       Fees

You can find list of Latvian Patent Office’s fees here - https://www.lrpv.gov.lv/en/trademarks/fees.

EU trademark fees can be found here - https://euipo.europa.eu/ohimportal/lv/eu-trade-mark-regulation-fees

Fee calculator for international registration is available here - http://www.wipo.int/madrid/en/fees/calculator.jsp

by Brigita Tērauda, Head of IPR, Latvia

Related Lawyers

Brigita Tērauda

Head of IPR

+371 26 521 082

brigita.terauda@vilgerts.comEmail

Ineta Krodere

Senior Partner, IPR

+371 29 223 774

ineta.krodere@vilgerts.comEmail

Kalīne Ozola

Associate

+371 27 542 967

kaline.ozola@vilgerts.comEmail

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