Clients often approach us with requests for having their brand registered globally, and for all goods and services. However, is it realistically possible to own a “worldwide trademark” for all goods and services? As you can probably guess, it is not. It is nonetheless possible to get close to this goal, yet only if you have sufficient capital and patience.
New ideas or start-ups sometimes involve unrealistic ideas about the future expansion of the product or services the entrepreneur intends to offer. While it is great to think ahead and choose an appropriate strategy for such an expansion right from the start, including addressing the issue of branding, it is sometimes necessary to slow down and admit that one may at times have unrealistic requirements.
A typical example is a trademark – the marketing foundation of any business. The mark, brand, or designation of the product or service offered by the entrepreneur and known to the public.
So, what strategy should be chosen for trademark protection, and is it necessary to also consider other types of rights?
Trademark and its scope
The basis of a trademark is its expression, the goods or services it designates, and the territory for which protection is sought. In other words, it is necessary to decide (i) what brand I am applying for, (ii) for what list of goods and services, and (iii) where I will be doing business under that brand.
All of the above constitute the scope of the trademark. And the scope needs to be considered very carefully at the beginning, because once a trademark application is filed, its scope (except for applications in other countries) cannot be extended, it can only be limited.
Goods and services
The trademark system uses what is known as Nice classification, which divides goods and services into classes 1 - 45. Applicants can choose from a wide range of goods and services to be identified and protected by a registered trademark.
In this context, it should be pointed out that it is unrealistic (and, indeed, inappropriate) to file a trademark application for all goods and services. There can hardly be a mark used for all conceivable human activities (though some may come close). Furthermore, when selecting goods and/or services, it is necessary to think five years ahead, as the owner must start using the trademark within five years from the date of registration; otherwise, there is a risk of cancellation of the trademark. It is also worth noting that the more classes of goods and services, the higher the administrative fees for registration.
When making a choice, it is therefore necessary to think rather extensively and to apply also for potential goods and services, but not too broadly, so that the mark does not become an easy target for cancellation.
Territory
At the outset, it must be said that there is no such thing as a global or worldwide trademark. However, you can apply in multiple countries around the world. You can choose either international registration, or national applications in each country. In practice, we have already arranged for our clients applications in more than 120 countries around the world at the same time. With 193 UN member states, this is more than 60% of the world’s countries!
When deciding in which territory to register a trademark, it is again necessary to think several years ahead. For example, if the entrepreneur knows that they will offer their goods/services in more than three EU member states, it is reasonable to file an EU application. If you know at the start of your business that you will want to expand outside the EU, for example to the UK or the US, then it is a good idea to make parallel trademark application filings there. Thus, you will avoid speculators seeing your trademark application in the EU register (or elsewhere) and filing the same application in another territory (typically in the US) and waiting to see if you approach them with a “buyout” offer. Unfortunately, there are no other options (apart from rebranding, or a lengthy dispute with an uncertain outcome). And of course, the more countries, the higher the costs. For this reason, it is necessary to make the right decision as to which countries are important for protection.
Likewise, it is definitely important to think about domains and register them where you intend to take your business. It has also happened more than once that an entrepreneur has only applied for a trademark and someone else has registered the domain.
All this may sound complicated, but with us you will not get lost. We will work closely with you to develop an appropriate application strategy to protect your brand where necessary and within the scope of the correctly chosen list of goods and services.
