A trademark is a valuable asset of your company. A properly registered trademark for your sign protects it for a period of 10 years against the risks of parasitism, copying, and the use of an identical or similar sign to yours. Naturally, this applies within the limits of legal regulations and established trademark case law.
A trademark is not merely a small R in a circle ® used as decoration and to give your business a touch of importance; it is strategic protection granted to your sign, which forms the cornerstone of your business – your brand name, your logo, or your mission statement (slogan).
Why do we speak of strategic protection? Because a registered trademark and the rights to the sign are the factors that concern:
- Every entrepreneur, who wants to operate locally but also go beyond national borders with their business and expand abroad (finding out whether someone else is already using your logo or name, or getting ahead of another entrepreneur, can be quite crucial when expanding, wouldn't you say)
- Every buyer (potential buyer), who is interested in acquiring your company and is legally aware, will first conduct due diligence (a legal review) of your company and its important assets (yes, including the trademark and the legitimacy of using the signs you use to promote your business)
- Every investor, who wants to enter your company, whether by acquiring an ownership interest in it (i.e. acquiring a business share) or by establishing a joint venture – the facts must be clear: is the sign protected by a trademark or not, and are you infringing another entrepreneur's rights by using a sign for which you do not own a trademark?
In this article, you will learn:
- What the steps in the registration process are and their sequence
- How to classify what you need to protect by registering a trademark
- For which territory you can register a trademark
- Preparing and filing the application
- The trademark registration process, opposition proceedings, and trademark validity
If you want to know even more, click on the relevant point:
- Register a trademark: How to protect your name, logo, or product or service brand?
- Common mistakes that cause entrepreneurs to lose their brand
What are the important steps in the trademark registration process
The trademark registration process would neither be effective nor complete with registration alone unless you carried out all the steps, actions, and measures that are crucial to success in the process.
From our perspective, none of them can be omitted or skipped – ensuring that the sign is suitable, conducting searches among signs and trademarks, correctly selecting the goods and services and classifying the protection, flawlessly preparing the application, filing it, paying the applicable fee, and monitoring the entire process – these are the steps that must be kept in mind for approximately 4.5 to 6 months (i.e. for the duration of the trademark registration process).
Search among registered trademarks: Is your brand still available?
Before we prepare and file the application for you, you need to verify whether the sign you have chosen, which is to constitute the trademark, is actually eligible for registration. It must meet not only the requirements under the applicable legislation (e.g. the requirements under the Trademark Act or the EU TM Directive on trademarks and implementing regulations), but it is equally important that the sign in question has not already been registered by another entrepreneur (trademark owner).
For these reasons, at the SKYLEX Law Office we conduct what is known as a search and assess the registrability and risks of your sign for the purposes of potential trademark registration. We focus in particular on identical or similar signs that have a registered trademark, namely those:
- for similar products or services to yours,
- and assess the risks with regard to the territory of registration.
This step is not mandatory, but it is essential. Without it, you will file an application and risk having your sign refused registration, irretrievably spending money on an application that will not secure trademark registration for you, and, even worse, you may potentially have to prepare for rebranding, if you file an application for an identical sign for identical products – because the owner of the earlier trademark will be notified of your application.
Why conduct a search?
Because this allows you to avoid rejection of the application and/or identify the risks associated with the application you are about to file. If your brand conflicted with an earlier trademark, its owner could file an opposition and prevent registration of the trademark you prefer. This will save you both time and money.
What will be protected and in which territory will you protect your sign?
For every trademark, regardless of the authority with which it is registered, two factors determine its scope:
- the territorial aspect – meaning the specific territory for which protection is created by trademark registration
- the classification aspect – the specific classes, and then the specific goods and services, for which the trademark will be registered.
Why is this important?
Let's take an example: SKYLEX is a registered trademark for the legal services segment and is an EU trademark (EU TM). It follows that the SKYLEX trademark protects the territory of the 27 member states of the European Union and, within the classification, protects legal services. However, if another entrepreneur decided to use the sign SKYLEX for cosmetics, they could do so, including in the territory of the EU (although in our case there are also effective tools to prevent such registration).
You need to determine two things:
- The territory you want to protect:Decide where the protection should apply:
- Slovakia:National application to the Industrial Property Office of the Slovak Republic
- The entire EU: Application to the EUIPO for all member states
- The world:International registration through WIPO (the so-called Madrid System)
- Classification – categorization: which specific products or services you want to protect, which we will classify together in accordance with the international classification.
For more on this topic, see the section: In which territory is your trademark valid and how much does it cost in the article Register a trademark: How to protect your name, logo, or product or service brand? There you will learn how to use the reimbursement scheme to cover part of the trademark application fee.
Application: Official filing
If we have gone through (i) which countries you want covered by the trademark registration, (ii) what the key goods and services for your business are, (iii) the next step is to prepare the application. We will prepare the trademark registration application for you for any registration office you choose. We will also handle the filing process and monitor the registration on your behalf.
Your task is to pay the fee associated with the application.
Application review and publication
After filing the application to register the trademark for the designation you have chosen, the relevant registration office will review your application.
If everything is in order from both a formal and substantive perspective, the application will publish it in its official gazette. The Office will first verify the formal requirements and then whether your mark meets the statutory conditions (e.g. whether it is not too generic and has distinctive character)
A mandatory period runs from the date of publication three-month, during which holders of earlier rights may file oppositions against the registration in accordance with the applicable legislation.
A question many clients ask one month after filing an application for their designation: “Do we already have a registered trademark?”
Our repeated answer: “There is no way for us to circumvent the statutory three-month period.”
Registration and validity
If all procedures laid down by law have been followed, the application is substantively and formally correct, and no one successfully files an opposition, the Office will register your trademark in the register.
What does this mean for you?
- You become the owner of:You obtain a trademark and can start using the ® symbol.
- Validity:Protection lasts 10 years from the date of filing the application.
- Renewal:You can extend the validity indefinitely, always for another 10 years; you only need to request it and pay the fee.
Trademark registration is not merely a fashionable accessory for your brand, but an effective asset for the growth of your company. So protect what is yours. Register your trademark with us.
If you are looking for a way to harness the potential of your brand and turn it into a successful asset, do not hesitate to contact us.
JUDr. Zuzana Skýpalová: skypalova@skylex.sk
Or book a consultation at https://cal.com/skylex
Article authors: JUDr. Zuzana Skýpalová, Nina Balažovjechová
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Trademark registration
- how to apply for a national trademark (Slovak)
- how to apply for registration of a European Union trademark (EU TM) before the EUIPO
- how to apply for registration of an international trademark (WIPO)
- how to register a trademark in only certain countries
- how to expand a trademark to include territories, goods and/or services
- how to obtain a refund of part of the fee paid, Grant SME Fund
- what are the fees for registering a trademark in Slovakia, with the EUIPO, with WIPO, and for expansion
- what is the procedure before and after filing a trademark application
- what is the purpose of a trademark
- why it is important to search for a sign in relation to trademarks
- what if someone has filed an opposition against the registration of your trademark
- what if someone has registered a trademark for a sign that belongs to you
- what are the classes for trademarks
- how long is my trademark valid and how can I extend its validity
