Trademarks: own it or lose it

It might sound obvious but trademarks are important. Trademarks protect the present and future territory in which you intend to trade. It can mean the difference between having a business or not. It is that serious but is often overlooked or put at the bottom of the pile when it comes to assessing priorities.

Trademarks fall into one or more of 45 defined classes. 34 classes relate to goods and 11 relate to services. For example, one of the most contested and congested classes is 25 relating to clothing, footwear headgear. So many brands with similar or same names competing to gain territory. It can create some division and heat.

The business doomsday scenario is that a business spends its time and focus on product development, distribution, retail, marketing and opening opportunities. Then later comes to the realisation that another company has secured conflicting territory in the particular trademark registry (country). At that point it is a fight or flight situation. Either you fight to gain some territory with an uncertain outcome or you run and lose the market. The risks are high and the loss of all of the sunk costs going into the particular market is real.

The unfortunate thing is that the scenario is not uncommon and, even worse, it is avoidable.

As a business is developing from startup or just developing a new additional line of products and/or service, the trademark work should run in parallel. A trademark lawyer should be your partner to determine clearance for the proposed territory and then develop a strategy for gaining as much present and future territory knowing the nuances between countries.

If you register in Switzerland and create that territory, you could be ring fenced in Switzerland thereby throwing away future trade and value. An exit strategy based solely on business in one jurisdiction will have a lower value than a broader multi-jurisdiction or global business. It is just math.

Once you have the territory secured, you need to watch and care for it as you grow and become valuable. Others may try to register territory that is confusingly similar and compete with you. This is where you need to ensure your trademark lawyer has alert systems in place to watch out for new applications. In all countries, there is a window of time where you can oppose trademark applications. If you miss the window then there are other more expensive routes of address through the legal system. However, once again, acting early and being on top of your portfolio can save you money and angst later.

With trademarks: (1) be early, (2) be clear on the strategy and (3) keep a look out as your business grows and you become valuable.

July 2023

Note: The information in this article is provided for general informational purposes only. No information contained in this post should be construed as legal advice from Pachmann AG or the individual author, nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this article should act or refrain from acting on the basis of any information included in, or accessible through, this article without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s jurisdiction.