Think strategically before applying to register a trade mark

If you want to protect your sign as a trade mark, you need to ask yourself some important strategic questions before filing a trade mark application – including how willing you are to defend your own trade mark.

Protecting strategically – brand management in a company is a top priority. Photo: iStock
Protecting strategically – brand management in a company is a top priority. Photo: iStock

Managing a trade mark is much more than simply filling in a form and paying a fee. Brand management is a top priority. The scope of the trade mark, as well as where and how it will be used are important questions to ask, which is why you should appoint someone in your company who is responsible for managing the brand. Their tasks should be clearly defined: who designs new trade marks, who researches older ones, and who checks after registration whether third parties are infringing the company trade mark right? Finally, it’s also a question of who in the company makes the decisions about the use of the brand.


Subsequent registration is possible

The geographical scope and extent to which you defend your rights is essentially determined by your budget. In contrast to patent and design law, novelty is not a prerequisite for protection under trade mark law. This means that, theoretically, a trade mark can be registered for protection even after it has been launched on the market. Plus, it can be registered in different countries at different times. However, it’s important to note that if there are two similar trade marks in the same market, then the right to the trade mark is granted to the party who holds the earlier right (known as the right of priority).


Sports shoe manufacturer waited too long

If you wait too long to register your trade mark, you run the risk of a competitor beating you to it. The Swiss sports shoe manufacturer Künzli lost its trade mark containing five stripes, which they had built up over decades, in its largest sales market Germany. Its competitor K-Swiss had registered the trade mark containing the five stripes first. As a result, Künzli was forced to rebrand. Extending trade mark protection geographically is therefore a very important issue that needs to be well thought out from the start.


Registering for later use

Registering a trade mark abroad for later use is not recommended, however. Such a strategy would be costly and risky. Application fees have to be paid in every single country in which you file the trade mark, while there is also an obligation under trade mark law to use a registered trade mark. Anyone who does not use their trade mark for the goods and services registered after the grace period has expired (which varies from country to country but is usually five years), risks losing the monopoly right to it again if someone files an action on the grounds of non-use of the trade mark.


You have to defend your protected trade mark yourself

By registering a trade mark, the owner receives a monopoly right. This means that they can prohibit others from using, importing, exporting or advertising identical or similar signs to identify similar goods or services. However, it’s not the task of the state to monitor or enforce the monopoly rights of private individuals. Owners can decide themselves whether or to what extent they wish to take action against third parties who infringe their IP right. This is often called offensive or defensive use of an IP right.


Defensive use – securing your capacity to act

We talk of defensive use when a registration is made primarily to prevent someone else from registering the same or a similar right. The aim of this strategy is principally to protect yourself against third parties being able to hinder your own company’s capacity to act (known as freedom to operate). The advantage of this strategy is the low administrative and financial effort necessary to keep the IP right in force. Apart from the renewal fees, no further costs are involved.


Offensive use – even in court if need be

In the case of offensive use, the owners of an IP right take action against infringers by issuing warnings and, if necessary, taking them to court. This strategy requires significantly more effort. The trade mark owner has to regularly check the register for IP rights registered by their competitors. It’s advisable to involve specialists if weighing up the risks of litigation. Monitoring the trade mark register, taking specialist advice and conducting legal action requires a significantly higher financial commitment if the outcome is uncertain. On the other hand, the monopoly right is retained. Deciding which strategy to pursue is the decision of the owner of the IP right.


What applies to the acquisition of IP rights also applies to the choice of IP protection strategy – it’s not mandatory to enforce an IP right, but consciously deciding on a strategy is.


Trade mark protection in Switzerland: the answers to your questions.


Info on trade mark protection

  • The choice of strategy depends on how great your willingness is to defend your trade mark.
  • You must defend your protected trade mark yourself.
  • You can apply to register the trade mark at a later date.
  • One person should be responsible for trade mark protection in an SME.
  • Applying to register a trade mark for later use isn’t worth it because you actually have to use the trade mark.
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