Our solutions / Applying for and registering protection

Trademark

Marks, name and slogans are an important part of companies’ intangible assets and brand. They can be protected by trademark registrations. Registration gives the right to prevent others from using and registering similar marks and reduce the legal risks associated with the use of the mark. If the mark is not registered, it is often freely available for others to use or register.

A company’s trademarks, name and slogans are an important part of the company’s intangible assets and brand.

Benefits of trademark registrations

The proprietor of a trademark registration has the right to prevent others from using similar marks that cover similar products or services. The right to prevent covers using the mark as a label, for example, on the goods or on its packaging, in advertising, marketing and invoicing material. The right to prevent does not only cover identical marks but also confusingly similar marks. The similarity of the marks is assessed on the basis of the overall impressions given by the marks.

What kind of marks can be registered?

Any sign which enables the distribution chain of the products (goods and services) and consumers to distinguish them from similar products marketed by other undertakings, may in principle be registered as a trademark. A trademark can consist, for example, of a word, logo, slogan or graphic symbol, or even the appearance of a product.

Conditions for protection

A mark must be distinctive to be registrable. The purpose of distinctiveness is to ensure that a trademark can identify the products and services of its proprietor and to distinguish them from the products and services of other operators. In order to be distinctive, the mark must not describe the product offered or its characteristics. In addition to distinctiveness, the mark must not be confusingly similar with earlier protected similar marks or company names that cover similar goods or services.

Registration authorities and registration procedure

In Finland, the trademark is registered with an application to the Finnish Patent and Registration Office and in the EU to the European Union Intellectual Property Office (EUIPO). EUIPO and PRH will investigate whether the mark is distinctive. The PRH will also examine whether the mark can be confused with previously protected marks and company names. The application process takes about a month in Finland and about five months in the EU if the registration authorities do not find obstacles to the registration of the sign and owner of earlier similar marks do not object the registration of the mark.

We register designs all around the world

In addition to PRH and EUIPO, we act as our representatives for our clients in Sweden and the United Kingdom, and in the so-called international trademark applications in accordance with Madrid Protocol system. In other countries, we use associated firms to register marks.

Our trademark registration service

Before preparing and submitting the trademark application, we will together with our client discuss and review the objectives of the protection, where the mark shall be protected, for which goods and services and in what form it is advisable to register the marks.

Preparation and submitting of an application for a trademark

Once the mark to be protected and the goods and services have been decided, we will prepare and submit the application to the registration authorities. If the application concerns Finland, the EU, Sweden, the United Kingdom or is an international application under the Madrid Protocol, we draft and file the trademark application ourselves. If the application concerns other countries, we will use associated firms to draft and submit the application. We will after that report and invoice our client.

The registration procedure

During the application procedure, we will report notifications and decisions from the registration authority and advise our client on how to respond to them. We will prepare and submit necessary responses to the registration authority. If the registration authority does not find obstacles to the registration, the mark shall be published after which owner of earlier similar marks may file oppose registration of the mark by submitting an opposition to the registration authority. In Finland, the claim may be based on the lack of distinctive character of the mark or is confusingly similar with earlier protected trademarks or company names. In the EU, the oppositions may be based on confusingly similar with earlier protected trademarks. We take care of the different stages of the opposition procedure.

Services after registration

At the end of the application process, the registration authority will issue a registration certificate, which we will forward to the client. Trademark registration needs to be renewed every 10 years for the protection to remain in force. We will keep record of the renewal deadlines and remind our client when renewal is due.

Pricing examples

The price of an application for a trademark depends significantly on the number of trademark classes in which the mark is to be protected, since the fees of the authorities depend on the number of classes. The number of classes does not affect our package prices for preparing and submitting an application and for handling basic parts of the registration procedure. Our package prices include all consultation and application activities, with the exception of the measures that are needed if the registration authority finds obstacles to registration or oppositions are submitted against the application.