** In the global marketplace, all of the goods and services that you can find are categorised by ‘classes’. This classification is the result of international agreement: The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

But the global market nowadays is very competitive and saturated that practically every product or service it might seem to be already sold or provided, as it also seems that the market offers always less chances of new sales or provision of services. However new ideas, R&D (Research and Development) and IP (Intellectual Property) rights could still make a difference.

Particularly, it is essential to consider that a trademark is a distinctive identification of your company that allows to differentiate your goods and services from those of your potential competitors in the marketplace. So when you register your trademark, you place your brand in the market in a unique way that hampers competitors to generate confusion in the general public and consumers about who is selling or producing what.

A trademark can therefore be defined as a unique sign used in business to distinguish the goods and services of one undertaking from others, while providing to the registered trademark owner an exclusive right and specific related legal protection.

Starting from the fact that it is possible to register a trademark at all levels (Nationally, European and International level) or extending the registration at an upper level (i.e. from European to International), it is important to highlight that at EU level the legislative framework that regulates the registration of a CTM (Community Trade Mark) is contained in three Community regulations, namely: Council Regulation No 207/2009 of 26 February 2009; Commission Regulation No 2868/95 of 13 December1995 implementing Regulation 40/94; Commission Regulation No 2869/95 of 13 December1995; and Regulation No 216/96 laying down the rules of procedure of the Boards of Appeal.

But the most important question to answer is ‘why is important to protect your trade mark?’. The answer to this question is somehow simple and straightforward: the trademark of a product or service can be synonymous of a  brand and can also be considered the image of a company. Therefore it becomes an asset with a real value that can potentially increase. If you do not “apply” for protection others may benefit from your investments. The only way of obtaining the full right over a trademark is by registering it.

Many are the example in the global marketplace of successful marks that reach the general public through a distinctive sign. Those brands establish their position in the market through their registered trademark and the consumers sometimes even relate the quality of products or their competitiveness simply by the mark that confirms the reputation of a brand.

However trademarks shall not be confused with designs. The essential function that they perform is different: a design is essentially intended to determine the shape of a product (mostly, to decorate a product). A trade mark is also applied to the product. The main function of a trade mark is to identify a particular trade origin in connection with specific goods and/or services.

As many are on the other hand the examples of well-known lawsuits that have allowed brands and firms to protect their IP rights to avoid confusion in the general public and maintain the exclusive rights. Just to cite some of the most famous cases, among others:

– McDONALD’S vs. MACJOY FASTFOOD case – 14 March 1991: the respondent MacJoy Fastfood Corporation, a domestic corporation engaged in the sale of fast food products in Cebu City (Philippines), filed with the then Bureau of Patents, Trademarks and Technology Transfer (BPTT), now the Intellectual Property Office (IPO), an application, there identified as Application Serial No. 75274, for the registration of the trademark “MACJOY & DEVICE” for fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks under classes 29 and 30 of the International Classification of Goods. Petitioner McDonald’s Corporation, a corporation duly organized and existing under the laws of the State of Delaware, USA, filed a verified Notice of Opposition  against the respondent’s application claiming that the  trademark “MACJOY & DEVICE” so resembles its corporate logo, otherwise known as the Golden Arches or “M” design, and its marks “McDonalds,” McChicken,” “MacFries,” “BigMac,” “McDo,” “McSpaghetti,” “McSnack,” and “Mc,” (hereinafter collectively known as the MCDONALD’S marks) such that when used on identical or related goods, the trademark applied for  would confuse or deceive purchasers into believing that the goods originate from the same source or origin.  Likewise, the petitioner alleged that the respondent’s use and adoption in bad faith of the “MACJOY & DEVICE” mark would falsely tend to suggest a connection or affiliation with petitioner’s restaurant services and food products, thus, constituting a fraud upon the general public. In that occasion the Court ruled that “By reason of the respondent’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark, it chose the word “MACJOY,” the only logical conclusion deducible therefrom is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALD’s marks, which, as applied to petitioner’s restaurant business and food products, is undoubtedly beyond question”. Therefore the Philippine Supreme Court upheld the right of McDonald’s over its registered and internationally-recognized trademarks. As a result, the owners of MacJoy was forced to change its trademark into “MyJoy”.

But different result for McDONALD’S had the lawsuit known and McCHINA case (Frank Yu Kwan Yuen v. McDonald’s Corporation, McDonald’s Restaurants Limited CH/2001/APP No. 183): in 2001, McDonald’s Corporation in fact lost a nine-year legal action against Frank Yuen, owner of McChina Wok Away, a small chain of Chinese takeaway outlets in London. Justice David Neuberger ruled the McChina name would not cause any confusion among customers and that McDonald’s had no right to the prefix Mc.

And many other IP infringement famous cases could be cited (i.e. “Google Trademark Keywords” or the “Napster case” among others).

But this only confirms the importance of registering a trademark to have official exclusive rights and related protection. The application for registration is in fact always the first step as in all IP (Intellectual Property) rights. This application is a step-by-step process that will grant the official confirmation of registration only after the competent offices have ascertained that all related legal requirements are satisfied. This is also the reason why it is important to file your application with the competent offices through qualified and experienced professionals.

In recent years in fact it has been registered an increasing and worrying number of unsolicited mails from companies requesting payments for trademark and design services such as publication, registration or entry in business directories. Some of those mails are to be considered fraudulent schemes to mislead the recipient. Even European and International competent Authorities have published related warnings to increase awareness.

So that once selected and engaged the competent professionals for your trademark registration at preferred level, and ascertained through them that there are not “relative or absolute grounds for refusal” and  that all legal requirements may be satisfied, there are many benefits and advantages of eventually obtaining the registration of your mark (upon certain conditions and final official confirmation of the competent offices).

Some of – but not limited to – the examples of the mentioned advantages are that:

– A registered trademark confers on its proprietor an exclusive right therein;

– The proprietor is entitled to prevent all third parties, who do not have his consent, from using in the course of trade the same or similar signs for identical or related goods and/or services as those protected by the registered trademark;

– If registered at EU level, a Community Trademark (CTM) will have equal effect throughout the European Union;

– If any future enlargement of the European Union takes place, a registered CTM registered or applied for will automatically extend to the new Member State(s).

– Rights to execute franchises agreements and for the consent of use of the registered mark to third parties.

Please do not hesitate to contact us for further information or assistance:


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