- Is my trademark protected just because I am using it in my business?
Usually no, because the Baltics and Belarus are “first-to-file” countries. This means that a trademark is protected only after successful registration. As an exception to the rule, the law allows a challenge to a trademark on the basis of prior use of a well-known mark, even if not registered. Nevertheless, as a general rule: for safe and reliable trademark protection, register the mark.
- Useful fact: in Latvia a new trademark can also be challenged on the basis of a name previously used in trade in good faith, provided that use of the same name by someone else could mislead consumers.
- What are the benefits of registering a trademark?
A registered trademark gives a clear and enforceable right to prevent other persons from using the same mark in trade. If you use a certain mark to designate your business, your goods or services, it is worthwhile having this mark registered as a trademark. In this way you can prevent other persons from starting to use the same mark. Moreover, you can also prevent other persons from using a mark that is confusingly similar to your mark if it could mislead potential consumers. Finally, when registered, a trademark becomes a clear business asset: it is your intangible property, you can license the right to use your mark to other persons (eg, business partners or distributors) and its value can be measured if you decide to sell your business ‒ it can even be sold separately from the business.
- How difficult is it to register a trademark and how long does it take?
The tricky part is to decide which mark exactly you need to register and in what form: your logo as a figurative mark? The name of your company or product as a word mark? Or both word and logo? And are you sure that the mark does not infringe any other person’s rights – have you done a trademark search? The next challenging step is to prepare a comprehensive list of goods and services for which registration will be valid: the trademark may be registered only with respect to certain goods or services for which it will be used in practice. It is advisable to involve a trademark attorney in this selection process. However, if that is not possible, patent agencies have a lot of free information materials, and they also offer consultations.
Registering a trademark is very easy and straightforward. In the Baltics, it can be done by filing an electronic application on the webpage of each country’s patent agency. If you already know what you want to register, and what goods or services the mark will cover, registration takes less than an hour. In Belarus, there is no procedure for filing an electronic application. Instead, the application should be filed in paper form with the local patent agency.
After filing an application for trademark registration, patent agencies conduct their examination. The patent office will then decide whether to register the trademark or not. The decision will be published and the applicant can oppose a negative decision while any third parties can oppose a positive decision. The final step is registration of the trademark and obtaining a trademark certificate. In practice the overall time taken for the trademark registration procedure may be around 15 months from filing the application.
- What if I want my trademark to be protected in different countries?
Trademark rights have a territorial character: this means that protection will be in force only in the country or region where the trademark is applied for. Luckily, international or regional registration is available. If you want your mark to be protected throughout the European Union, the best option is to go straight for a European Union trade mark, which is registered by the European Union Intellectual Property Office (EUIPO). The result would be a single registration valid everywhere in the European Union. On the other hand, if you are interested in countries outside the European Union, an international registration administered by the World Intellectual Property Office (WIPO) would be the right choice. However, in the case of international registration the first step would still be a national application or registration in a specific country, since this serves as an entry point for international registration within the so-called Madrid system (under the Madrid Agreement or Madrid Protocol).
- What are the costs of registering a trademark? Are any hidden costs involved?
If a trademark is applied for only for one class of goods and services (under the international Nice classification), registration costs EUR 145 in Estonia, EUR 185 in Latvia, EUR 180 in Lithuania, and approx EUR 580 in Belarus. For each following class an additional fee applies – EUR 45 in Estonia, EUR 30 in Latvia, EUR 40 in Lithuania, and EUR 50 in Belarus.
If you manage to do everything yourself or by using the free resources offered by the respective patent agencies, there are no other hidden costs. However, if you choose prior consultation and advice from a trademark attorney, and perhaps a prior search of earlier trademarks (which is really advisable), additional costs will arise. These costs may vary depending on the service provider, but generally should not exceed EUR 500 for the whole package.
- Useful fact: In Latvia, Estonia, and Belarus foreign applicants may act before the local patent office only via a local trademark attorney. This also applies to Lithuania for non-EU applicants.
The official fee for registration of a European Union trademark in one class of goods and services is EUR 850. An additional fee of EUR 50 applies for a second class and EUR 150 for a third and each following class. Of course, assistance from a trademark attorney is an optional choice.
An international application through the Madrid System is the most expensive, but the actual cost depends on the mark, its complexity, the number of classes ‒ but mainly on the number of countries where you want your mark to be protected. The World Intellectual Property Office webpage offers a convenient calculator where you can check the potential costs.
- What can and cannot be registered as a trademark?
A typical trademark would be either a specific word or combination of words, a logo, or a combination of a word and a logo. A mark must be distinctive, which excludes a mere description of goods and services. For example, the word mark “the best chairs” is not likely to be accepted for a furniture store. The law also indicates other grounds for refusing an application to register a mark ‒ for example, the official heraldic signs of a country are not registrable. On the other hand, in the Baltics trademark law in some cases allows registration of such innovative marks as sound and even smell marks.
- May I register a trademark which is similar to another company’s trademark ‒ especially if our products are very different?
If your trademark is similar to another company’s trademark, caution is required. If the products or services you want to describe with this mark are similar to the goods or services of another company, then it is not advisable to register a similar mark. Even if you succeed , the other company may object to your mark either right after registration, or later, for example, by challenging the trademark. And then a lengthy process may start where you will have to argue whether your mark is indeed similar and confusion for consumers may arise. Therefore, unless there are good arguments why confusion is unlikely, it is better to choose a more distinctive mark.
If the products or services are very different, normally it would be acceptable to have a similar mark. However, if the previous mark is well known, then a similar mark cannot be used even for dissimilar products or services, because consumers may be confused. For example, imagine the “Coca-Cola” brand used for glue! Somebody did actually try to do just that ‒ and the courts found that such use would be confusing.
- How long will my trademark registration be valid?
Legal protection of Latvian, Lithuanian and Belarusian national trademarks or a European Union trade mark is valid for 10 years from filing the application (not from the registration date!). Legal protection of an Estonian national trademark and a trademark registered under the Madrid system is valid for 10 years from registration. The term of legal protection of a trademark may be renewed for 10 years at a time. It may be prolonged for another 10-year period, and so on, without limit.
- OK, I have a trademark registration now. What are my rights? Do I also have any obligations to maintain the registration?
Trademark registration gives you the exclusive right to use your mark for the goods and services for which it is registered. This means that you may prohibit other persons from using this mark or a similar mark for the same or similar products or services. If your mark has become well known, you can even prohibit its use for dissimilar products or services. Another right is to license the trademark, for example, if you are considering operating a franchise. A right to a registered trademark is like any legal property right, only the object of the right is intangible. But, similarly to other property rights, it can also be disposed of: for example, you can sell your trademark to another person. The only basic obligation to maintain the registration is to actually use the mark in practice for all registered goods and services. If you do not start to use the mark within 5 years of registration (3 years in Belarus) or at any time do not use the mark for 5 consecutive years (3 years in Belarus) without good reason, the registration may be challenged by any interested person: the law does not support registering and keeping dormant marks. And, of course, you have a duty to apply to extend the protection period before the expiry of each 10-year period, and to pay the renewal fee.
- Oh, wait, I see that another company is using a mark similar to my trademark: what exactly should I do?
You should act immediately! As a first step it makes sense to check if the mark is being used for the same or similar goods or services. If these are in fact not similar, you can object only if your mark is well-known. Then, if you indeed have grounds to object, then the first step normally is to send a ‘cease and desist’ letter to the infringer. Often this is sufficient. However, if the other company denies infringing your trademark rights, the only option is to turn to the courts or other appropriate institutions for a remedy.
- Useful fact: in Estonia you should turn to the Estonian Intellectual Property Board of Appeal, while in Belarus you can file administrative proceedings against the infringer or apply to the civil court.
Generally in court you can request not only that the opponent stops using your mark, but can also claim compensation of damage. You can also obtain interim measures by which the opponent would be prohibited from using the mark until the final judgment. As with any litigation, in such case it is worth carrying out a cost-benefit analysis to determine whether it is worth filing a claim.
- Useful fact: in Belarus you may claim compensation of up to approx EUR 500,000 as an alternative to damages compensation.