What do the symbols ™ and ® mean?
TM stands for “trademark” and is often used to indicate that a mark is used but not yet registered. A registered mark can ans should be marked with the ® symbol, which indicates that the mark is registered in an official trademark register, and that the owner of the trademark has the right to the mark.
Different types of marks
A trademark can consist of any signs capable of being represented
Graphically, such as words, letters and numerals (word marks), figurative elements (device marks) or combinations of words and figurative elements (also device marks) . A trademark can also be the shape of a product or its spackaging, provided that it is distinctive (an example is the well known bottle for Coca Cola®). Slogans could also be become registered trademarks as well as sounds and smells. Who would not recognize the tune played by the Hemglass truck which is a registered trademark?
A good trademark is unique and different from the competitors’s marks. The mark should not be descriptive for the product or service in question. Furthermore, it should be easy to remember as well as to use and pronounce locally as well as internationally.
The registration process
Swedish Trademark Office
To obtain trademark registration it is necessary to file an application for registration of a trademark with an official trademark authority. In Sweden, this authority is the Patent and Trademark Office. The application is filed for the products and/or services for which the mark will be used. The mark is registered in one or more of the 34 product classes and in the eleven service classes that exist. If the Trademark Office does not find any registration bars, such as identical or similar trademark registrations for similar products/services, the mark will be registered. A registered trademark in Sweden gives the right to prevent others from using in this country the mark or any mark which is similar thereto in relation to products or services included in the registration.
The Community trademark and the Madrid Protocol
If it is relevant to protect the trademark abroad, the mark will have to be registered in each of the relevant countries where an exclusive right is needed. For registration in Europe, it is possible to get protection for the entire European Union through one application for the Community Trademark.
It is also possible to file an international registration (by using the Madrid Protocol), and through this registration system it is possible to obtain trademark protection in Europe and in many other countries in other parts of the world. If applications are filed within six months from the first filed application for the mark, it is possible to get protection already from the filing date of the first filed application.
The Madrid Protocol
Registrations according to the Madrid Protocol means that through one application with the World Intellectual Property Organisation (WIPO) in Geneva, it is possible to get national applications in countries in Europe as well as outside. The registration procedure and protection in an international registration is equivalent to the national procedure and protection in the relevant country. An application according to the Madrid Protocol is based either on an application or a registration in the home country (or country of incorporation for companies) alternatively a Community trademark application or registration.
The OHIM in Alicante
OHIM is an abbreviation for the Office for Harmonisation in the Internal Market and is the registration authority for Community trademarks. The office is located in Alicante in Spain. If you are an authorised trademark and design attorney, applications can be filed directly with the OHIM.
A trademark registration can be maintained indefinitely. For renewal of a registration, an official fee must be paid, usually every tenth year from registration. A trademark registration could therefore be said to be an eternal right. In most countries it is required that a registered mark is used, or else it can become vulnerable for cancellation. In Sweden, a mark which has not been used for five years, could be cancelled by a third party.
The expression “brand equity” is often used in relation to trademarks and means the monetary value that can be linked to the trademarks. When companies are acquired for large amounts, and these are not possible to connect to company assets presented in the balance sheet, this has been a case of brand equity. The acquiring company has paid large amounts for the values related to strong trademarks. In order for the marks to actually be this valuable, it is necessary that the marks are registered and legally strong.
If you start using a mark (word, expression or figurative element) without having checked whether this is registered of someone else for identical or similar products or services, there is a risk for infringement in someone else’s exclusive right. In addition to having to stop using the mark, the owner of the infringed right is i.a. entitled to compensation for the use. It is therefore advisable to carry out a trademark search regarding the availability to use and/or register the mark in question. By doing such a search, information regarding possible obstacles to use and registration, who owns these marks and in which countries becomes available and forms the basis of the risk assessment. The costs for a trademark search are minimal compared to costs for rebranding, damages, legal fees etc.
When products and trademarks are copied without the permission from the trademark owner, this is a case of counterfeiting. Unfortunately this is quite a common practice, in particular in countries where the legislation regarding intellectual property rights is not so well developed. In most industrialised counties the legislation is quite clear and offers legal remedies against counterefeiting.
Legislation The Marketing Act, The Act on the Right to Name and photo in advertising are related to the Trademark Act.
To market oneself via the Internet today, is a must for any company. A
well-chosen domain name is part of a well-chosen portfolio of intellectual property
rights along with trademarks, patents and designs. Companies' increased need
for domain names for communication, marketing, and as a part of brand
protection require better control and visibility. This applies particularly to
companies with international operations.
Domain names can be registered in a large number of TLDs (Top-Level Domains) around the world. Rules and procedures are different for each TLD. Each TLD is managed by an organization that is either commercial, nonprofit or governmental. Domain names are registered with the organization that manages the TLD and are valid for a specified period. The most common is that the domain name is renewed annually, but there are also longer periods up to 10 years.
What is a Domain Name?
For most, the domain name is usually identical or closely related to the
company's characteristics, such as brand or company name, but it can also be
individual words of a more generic nature. The domain name is used to convey
information and to communicate via Internet in the form of web pages and email.
The domain name is a letter and or number combination that is registered for a
specific TLD for which it is awarded the right to determine the Internet
traffic such as web and email - for example, zacco.com.
"Zacco" is the domain name (also called second level domain) and "com" is the top level domain. Since there can only exist one unique domain name under a TLD some domain names have come to be highly valuable. This has led to a widespread speculation market and lots of domain name registrations have no other purpose than to be an investment much like real estate often making it hard to find useful available domain names.
There are several types of TLDs. One is called the unrestricted generic top-level domain (gTLD). Examples of an unrestricted gTLD is .com, .net, .org & .info. There are however since 2012 hundreds of other gTLDs available on the market such as .email, .nyc, .guru etc. There are also new gTLDs using many different language characters sets for the benefit of most languages in the world. The characteristics of unrestricted gTLDs are that they are available for everyone to register and that they are basically governed by a common set of rules. The framework includes a dispute resolution policy such as the UDRP which stipulates under which circumstances for instance one can recover “stolen” domain names from a domain name registrant. There are also restricted or community based gTLDs which have a specific purpose on the market. It can either be a branded gTLD belonging to a certain company for their specific needs or a gTLD for a specific group of identified users such as .museum, which is intended for accredited museums only.
Another type of
top-level domain is the country code TLD (ccTLD). Examples of ccTLDs are .se,
.de, .no, .uk, .it etc. There is basically a TLD for every country in the
world. Regulations and laws that control domain names under each ccTLD vary
greatly. Some ccTLDs have unrestricted access to registration and have joined the
same set of rules which are also used for unrestricted gTLDs. In Sweden for
example for .se there is a locally adapted regulation similar to that of the
gTLD but with some differences. Some countries have very restricted
registration rules often requiring local presence in the specific country. It
could be anything from a local address to a fully registered legal entity in
DNS (Domain Name System)
The system of
computers/servers through which a domain name is connected to the Internet. The
servers function as road signs which direct Internet traffic and are also
called “dns” (domain name servers) or simply “name servers”. Usually each
domain name must have at least two name servers for redundant functioning if
one of them fails.
Domain Name Strategy and Policy
It is important that a company registering several domain names also develop a strategy and policy for its implementation and maintenance, if not only to control the portfolio administratively and technically. Lack of such control could be very costly if it leads to a shutdown of a domain name and its related traffic to web sites and/or email either temporarily or in the worst cases permanently. A domain name strategy should also be linked to a trade mark strategy, taking into account the extensive speculative and/or piracy market and how best to protect intellectual property rights online using domain name registrations. At creating and implementing such a strategy including registration and renewal of domain names Zacco will ensure the attention and quality needed to ensure efficient long term stability.
Contact persons at Zacco:
Patent and Design related matters, Michael Byström, 08-59887240
Legal and Trademark matters, Malin Thunberg McCann, 08-59887318
Domain Name matters, Isaac Keren, 031-7258135