Trademarks are the face of a company regarding their products and services. Customers rely on trademarks when making purchasing decisions – associating a brand with a certain quality. People often confuse trademarks with patents and copyrights. While copyright protects the expression of ideas and patents protect inventions, trademarks are words, designs or symbols that identify and distinguish goods from one source to another.
One of the best methods of protecting the brand/trademark used in both online and offline environments, is the registration of the brand/trademark at the State Office for Inventions and Trademarks nationally, and for a wider protection, the trademark/brand can be registered at the European Union Intellectual Property Office (EUIPO), or at the World Intellectual Property Organization (WIPO), internationally. The registration of the brand at one of these offices confers an intellectual property right on the products or services offered by you. According to the Cambridge Dictionary, intellectual property is someone’s idea, invention, creation, that can be protected by law from getting copied by someone else. Under Romanian law, trademark protection can be applied to any of a brand’s creations, for example – logos, words, sounds, personal names, designs, numbers, letters, colors, figurative elements, product shape, or a combination of the above creations.
- Registering a domain name as a trademark. Nowadays, registering a domain name as a trademark is one of the most important aspects, especially when the business is at the beggining, being an advantage against intellectual property rights issues and problems over your trademark. The registration of the domain name as a registered trademark can be done at national levels, european, but also internationally, depending on the preferences and it is reccommended to be registered by a person who is specialized in intellectual property, such as an IP counsel or an intellectual property lawyer. Protection is granted for a period of 10 years, with the possibility of extension.
- Immediate cessation of infringement of intellectual property rights. This may be done by notifying the entities or individuals using the name or logo of the previously held trademark or by filing an opposition at the office where the trademark was registered, using an intellectual property law firm or agency.
How is trademark infringement different on social media and the internet?
Trademark infringement can be both an online and offline infringement. Certain types of misuse are unique to social networks and the Internet, including the registration of domain names, especially well-known ones, in order to sell them for a profit, electronic deception, and brandjacking, in order to acquire the equity of that enterprise or individual. They have many options on the internet and social networks to benefit from the goodwill of established brands and can often do so anonymously. Trademark owners are struggling to mitigate the damage resulting from the infringement, without knowing who the perpetrator is. Courts will sometimes help obtain the identity of an offender, but initiating the process can be costly and difficult. In a case of brandjacking, imposters may not use the trademark in connection with the sale of goods – while the damage to the company’s reputation is the same, unauthorized use may not constitute a trademark infringement. Adopting a strong brand, vigilantly monitoring the use and enforcement of trademark rights are key to protecting an online company’s brand and reputation.
Online brand protection strategies
Choose a strong brand
Your trademark is often the first interaction a person has with your trademark. If properly chosen, it should also protect against infringement of intellectual property rights. Therefore, the process of choosing a strong sign should be carefully thought out from the beginning. Trademarks can be divided into several categories, based on their power. Generic words describe a general product or service. An example of this would be “Headphones” for a headphone brand. Generic words or expressions may not function as trademarks and will never obtain any form of registration from the State Offices, where the registration is sought. Descriptive trademarks “describe” a product or service. For example, “Very hot peppers” for a brand of hot peppers would be a descriptive sign. These types of trademarks have very little protection, as they are not truly unique trademarks. Arbitrary trademarks are commonly used, but not in conjunction with the goods or services provided. An example of an arbitrary brand would be Domino’s (well-known pizzerias in the United States). While arbitrary brands are much stronger than generic ones, but also more suggestive, they have the disadvantage of educating consumers about the goods and/or services actually offered under the trademark until the brand is better established.
Fancy and arbitrary trademarks offer the strongest level of protection against infringement. The downside is that they often require more advertising and marketing to create customer recognition. On the contrary, suggestive marks inherently describe an aspect of goods or services. However, they can leave you vulnerable to violations. Carefully consider what type of brand is best for your business.
Consider European or international registration
Unfortunately, the national protection you have as a trademark owner in Romania does not apply in other countries. Trademarks are taken into consideration by country, and any trademark litigation outside of Romania will probably not be protected by your trademark. If your trademark reaches another country, whether you manufacture products in China or sell towels in Brazil, we recommend you learn how to protect your brand internationally. When an individual or a company wants to register their trademark at the European Office, it consists just of a single registration procedure which confers the trademark owner an exclusive right in all 28 Member States of the European Union. The process of applying for trademark protection in other countries is not as difficult as it seems in most cases. Although there is no application to grant you trademark rights in every country, a treaty called the Madrid Protocol has made the process much easier for international registration. If you want to register in one – or more – of the 90 member countries, you can simply fill out a single application in one language. While the process is streamlined, the Madrid Protocol does not guarantee the approval of any application. Each country will review your application and determine whether to approve it or not. It is important to note that not all countries are associated with the Madrid Protocol. To register in a third country, you will need to do this through its specific trademark office.
Your trademark protections are only available if you continue to use the trademark. Consistent use of the trademark is essential, which means that you use the same words, design or logo as you originally registered. Using your trademark inconsistently weakens its protections and could be a disadvantage in a trademark dispute. The more the brand is used, and the more it is known among consumers, the better the protection against potential problems, because there will be more evidence to challenge similar brands that appear later, or it will be possible to prove the previous rights held when someone files an opposition against the trademark owned.
Your trademark will never expire if the trademark is renewed and the use of the goods and services listed in your original application continues. Social media provides companies with a platform to build brand recognition and loyalty. A brand is a critical piece in establishing a brand identity. However, there are a number of risks and pitfalls. On social networks, mistakes can be spread and amplified quickly. Deterioration of a company’s brand can occur at a heart rate on social networks. Before the advent of social networking, companies had the luxury of time to fix mistakes before their earned reputation was undermined by a post that went viral.
Monitor your trademark
Monitoring can quickly identify potential threats to your brand, and the faster the problem is identified, the easier it will be to resolve. Online brand monitoring can be done through certain social media management tools, such as “SocialMention” by which you are notified if someone uses the brand name, a brand similar to yours, or a similar illegal brand, which leads to a prevention of further problems. Another way in which the brand can be monitored is by contracting with a company/firm/agency specialized in intellectual property, which deals with online and offline brand monitoring. To prevent such inconveniences, there are trademark monitoring services that periodically check the Official Bulletin of Industrial Property. For example, TAS Agency offers you services for monitoring trademarks and geographical indications registered with OSIM on the basis of a monthly or annual subscription. The Agency draws up monthly reports on the monitored trademarks and will draw up (if necessary) oppositions and appeals within the legal deadline for applications for registration with OSIM of similar or identical subsequent trademarks and geographical indications.
Why do you need a brand monitoring service? Because the image of the company is permanently protected, you will be informed when a trademark registration application similar or identical to yours will be filed, you will be constantly updated with the latest regulations and legislative news, you will receive information about the period in which the mark is expiring.
Starting a business means you manage an endless list of priorities. Knowing how to protect your trademark should be at the top of the list. Once you have chosen a strong trademark, completed a comprehensive trademark search and registered it with one of the relevant offices, you can use your trademark with peace of mind and the legal support of a registered trademark.
Sources: https://www.uspto.gov/page/abouttrademark–infringement; https://www.kppblaw.com/; https://www.gerbenlaw.com/blog/how–to–protect–your–trademark–6–definedstrategies/; https://euipo.europa.eu/; https://agentiatas.ro/.
