Questions to ask before you proceed with your Trademark Application


An ideal situation: You think ahead and you put your graphic designer to work with your lawyer in an attempt to satisfy both legal and graphical requirements. You make a thorough search for any lookalikes and other similar designs. The clearance looks good. You proceed with a TM application before even putting it in use for your selected services or goods to be offered (in jurisdictions that accommodate this).

What actually happens: Your company logo, product name or slogan, that you presently use more than ever, has eventually taken its rightful place in the market. Everyone is taking notice of your brand and your brand is intrinsically connected with all the above, through extensive use.

The problem: Others may ‘ride this wave’ with you by copying you and taking advantage of the value you have created for your brand.

The solution: Although late to the party, you decide to proceed with the obvious: you submit a Trademark application!

Below, we provide you with the 3 most crucial questions that every trademark applicant should consider before proceeding:

1)      Ownership – Who will own the TMs?

Considerations here will vary depending on the nature of the owner. A change of ownership will be possible down the line, but remember that costs will have to be taken into account.

2)      Jurisdiction – Where should you file?

Not every jurisdiction is relevant and of course not every country in the world is ideal. The primary place of business, as well as the intended ones, should take priority.

3)      Goods and services – What are you going to offer?

Every trademark is filed according to a specific list as contextualised by the NCL, the international Nice Classification system which consists of 45 classes. You can find it here.

Michael Kyprianou & Co LLC. has a leading Intellectual Property practice with a team of experienced lawyers who are able to advise and assist clients in relation to both contentious and non-contentious IP matters. If you need any advice in relation to Intellectual Property Rights, please contact Agis Charalambous, at telephone +357 22447777 or email agis.charalambous@kyprianou.com