About importance of a lawyer or expert agent in industrial property, in the process of creating a trademark involvement.
Surely, when we consider creating a trademark in the last thing we think is that we may need the assistance of a lawyer and much less an industrial property agent, is still very unknown.
What may come to mind is that we will need a design, a good internet positioning, an advertising campaign, a media strategy… and, obviously, we will not be wrong, but we will be incomplete.
The lawyer or agent brings a clear added value that is fundamental in this process and afterwards. Your intervention is necessary to outline the strategy and guarantee and defend the important investment in business development, the steps described in the previous paragraph. But how?.
1º. Performing a feasibility study and peaceful enjoyment of the sign chosen to be our brand.
At this point, it is ruled out that the mark may be rejected for lack of distinctiveness or any other absolute ground for refusal, and it is also ruled out that identical or similar marks to a degree of confusion exist on the market which could prevent us not only from registering but also from using them. Imagine the very serious problem of developing and positioning a brand, with the cost that this entails and, later on, discovering that it cannot be registered or exploited or even claim compensation for its exploitation.
2º. Performing the trademark application according to the expectations or commercial strategy of our business.
An expert lawyer can advise us and more accurately determine what we are interested in protecting as a trademark, with a correct and complete description of products and/or services and with an appropriate territorial scope. Without the registration of the trademark, exclusive rights over it are not acquired in Spain and, third parties competitors could go ahead and register what had been our identifying sign in the market until that moment, making it impossible for them to continue in their exploitation, with the damage that this causes.
3º. Giving the registry a proper follow-up and monitoring, from your application to the date of your next renewal at 10 years.
Many industrial property offices, including the Spanish and European Union offices, do not automatically reject trademark applications on the ground that there are already registered earlier marks, but instead transfer the defence of their rights to the owners of the marks themselves, who must carry out a task of monitoring new applications and opposing them if they could harm their interests. A professional has the necessary tools to detect these potentially damaging requests and alert us in time to take action against them.
With the three previous steps (feasibility – registration – surveillance) we are guaranteed:
Invest much more securely in the development of a viable, non-rejectionable and peaceful brand.
We protect the brand properly in relation to the products and services we offer and the territorial reach that our business needs.
We can defend the trademark by detecting applications from third parties that infringe our rights, preventing their registration and, fundamentally, avoiding the dilution of our trademark.
Perhaps, what often leads us to exclude the lawyer or agent from the process of creating and registering our trademark, is the erroneous belief of cost savings. However, the opposite is true. Normally, the cost of a lawyer or agent in this process is proportionally much lower than the cost of developing the brand itself, the advertising campaign or internet positioning and other media, as well as expenses on merchandising, labels, etc. However, their participation guarantees and protects the investment.
“Trademark is the heart of our business, the first action we must take is to protect it.”
Rodrigo Ahijon Lana