Portfolio building

Trade mark registrations may be maintained indefinitely provided that they are being used as registered. They do not expire – unlike patents – therefore wide international protection makes financial sense. Thus, for many companies, their trade mark portfolio will tend to cover all countries of interest (if possible) whereas the countries selected for patent protection can be much more limited.

Another advantage of trade marks is that registrations are not invalidated by the applicant making use of the mark before application. Thus, an international portfolio can be built up over a period of time.

In the UK, the registration process is quite rapid and if no oppositions are filed, it is likely that registration can be achieved before the end of the six-month convention term. However, valid applications may be filed long after this convention term.

In many jurisdictions, a distinction is made between a word mark and other forms of graphical or stylized representation. A US registration may specifically state that the mark is represented in standard characters – which may be understood as a word mark. Furthermore, a registration for the mark in standard uppercase characters can be infringed by use in any other form of characters therefore word marks of this type are seen as being particularly strong.

In the UK and Europe, a registration can be removed if the mark is not being used in the form in which it is registered. The actual use may have stylized letters, coloured letters and may include a graphic of some sort. There is thus an incentive to register in the exact form in which the mark is used. Rather than agonizing over which is the best approach – do both. Furthermore, if the stylized mark changes, new applications should be filed in the relevant countries.