Why Trademarks Matter to SMEs

The process starts with filing a trademark application with a trademark office. A trademark agent can support you in this process.

Consider registering your trademark in the markets you plan to operate. You may be able to use the WIPO Madrid System to register your trademark in multiple countries or regions.

The trademark office examines your application to make sure it complies with administrative and legal requirements and whether it conflicts with prior registered trademarks.

In many countries, the public gets the chance to oppose a trademark registration for a limited amount of time. This can happen before or after a trademark is granted. If opposed, you will need to argue why your mark still qualifies for registration.

If your application is successful, and in some cases when the opposition period has ended, the trademark is registered.

A registered trademark can be renewed indefinitely, as long as you are still using it. To renew it, you will need to pay a fee and prove that it is being used.

The actual costs of trademark protection vary significantly from country to country and may include:

• professional fees for drafting and prosecuting your application
• official fees paid to each trademark office, typically due at the time of application and registration
• translation costs, if filing abroad
• renewal fees.

It is up to you, as the trademark owner, to monitor if others are using your trademark. If you think your trademark is being used without your permission, here are some steps you can take:

• seek expert advice – an IP lawyer would give you information on the options to initiate action against counterfeiting and infringement and will provide you with advice on how to enforce your rights;
• if you found the use on an online platform, consider using their dispute procedures. Many will take down the infringing products after some investigation. These can be easy to use and cost-effective. If there is no established process, contact the service provider directly;
• send a letter asking them to stop using your trademark (known as a “cease and desist letter”). If you send a letter, make sure to follow up. If you don’t, you may lose your ability to stop them from using your mark;
• try to settle your disputes via available alternative dispute resolution mechanisms, including WIPO’s arbitration and mediation and domain name services;
• initiate relevant proceedings before a court or administrative authority.