Trademarks 

It’s important to understand that a trademark is composed by signs, expressions and/or drawings that can be graphically represented, allowing the company to distinguish itself from the remaining. Owning a trademark gives the owner the exclusive use of that graphical representation, as well as protection against imitations or counterfeit products.

You should register your trademark for one very simple reason: if you don’t register it, there is a chance that someone else might do it for you, thereby keeping the monopoly of your trademark and stopping you from using, producing or marketing it. Therefore, registering your trademark will reinforce your intellectual property’s legal protection and prevent others from using it without your prior consent. After the registration, you can use the (r) symbol, allowing others to know that your trademark has been officially registered.

The registration process should always take place before you start to produce, sell, or disclose your product or service. This will ensure the exclusivity of your asset and prevent competitors from getting a head start and register a trademark in your place. As such, early protection assured by a timely registration is critical to the success of your business.

There is no registration that can protect your trademark on a global level. As such, it is important to register your trademark in the countries that you have targeted for expansion. This will ensure maximum protection in your points of export or commercial interest.

There are indeed some precautions that should be taken before proceeding to register a trademark or logotype:

● Online Trademark Search: an online search will let you know, at an early stage, if there are other trademarks similar to the one you have created, so that you can decide whether or not to proceed with the registration of your trademark.

● Technical Trademark Search: very often, an online search is not sufficient to determine the feasibility of a trademark registration. For that reason, Inventa works with a team of experts that offer you a research and consultancy service. This service not only confirms the true feasibility of your trademark registration, but also detects potential legal conflicts or other situations that may involve other types of intervention. This includes the negotiation for purchasing an already registered trademark that could be of your interest.

Inventa offers you a full and integrated intellectual property service provided by highly-specialized teams. These teams have experience in the registration and management of trademarks, patents, industrial designs, copyright, and domain names. We can, therefore, carry out a follow-up on all research processes prior to a trademark application, as well as a permanent monitoring of the market, patent portfolio management, and the internationalization and protection of your industrial property rights.

Being an international company with a network of contacts on a global scale, Inventa provides these services to thousands of clients all over the world. We ensure them total protection of their assets and a permanent defense of their interests and rights. At all times, we rely on the support of specialized teams and state-of-art technological systems, which ensure you the maximum degree of protection for your business.

The international classes are used for registering trademarks as determined by the Nice Classification. They constitute an administrative system that allows goods or services to be grouped into sets (classes) which are more or less similar.

Imagine that your company produces potato chips, sandals, shirts, and owns a restaurant and you want to register your trademark “XYZ” to identify these goods/services.

In that case, your trademark “XYZ” will be registered in the following international classes:

Class 29 - french fries.

Class 25 - sandals; shirts.

Class 43 - services for providing food and drink.

The international classes for registration of trademarks are useful to the administrative institutions that deal with trademark proceedings, because trademarks are put together into groups of goods or services with some sort of affinity.

The identification of these classes is essential when applying to register a trademark, as it is required by the PTOs (Patent and Trademark Offices) responsible for trademark registration.

Several PTOs worldwide have adopted the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The agreement established a Nice system with 45 classes, which group sets of goods and services together.

Of the 45 existing classes, classes 1 to 34 correspond to goods; classes 35 to 45 correspond to services.

Thus, an entity that requires a trademark will necessarily have to indicate the classes corresponding to the goods and/or services it wishes to protect.

You can consult the complete Nice Classification list here.

Considering that approximately 150 PTOs around the world apply the Nice Classification, determining the classes at an early stage becomes a critical step in order to proceed with the trademark application.

The Nice classes influence the costs of registering trademarks, since the official fees vary according to the number of classes. Our consulting service will, in that sense, be useful for the proper identification of relevant classes and of the costs expected when registering a trademark.

In addition, since this classification is used by many countries around the world, something which not only facilitates the internationalization of your trademark, but also reduces any translation costs related to your protected goods and/or services.

Some countries provide in their legislation that each international class of goods or services corresponds to one trademark. This makes it necessary to submit a different trademark application for each international class identified. These jurisdictions are therefore known as mono-class systems.

Other jurisdictions state that a trademark may be registered in more than one class through a single application, thus forming a multi-class system.