The importance of the bureaucratic aspects involved in corporate brand protection are difficult to assess if one is not an expert in the field.
We can only talk about performance, SEO or marketing if there is an awareness that there is a potential risk behind one’s brand.
For this reason, I wanted to interview Alessandro Vercellotti, the Digital Lawyer, to talk to us clearly about brand protection actions. I asked him some specific questions so that they may be helpful to you if you want to secure your brand’s exclusive rights but still have doubts about it.
Not all brands, however, possess the attributes to be registered. Find out more by reading the article!
What are the legal procedures that can protect a company’s trademark?
The only means of protection for a trademark is registration.
But let’s go in order!
First, one must have a brand to protect.
Then you have to do a good feasibility analysis to understand whether that brand is registrable or not.
On average, 21% of the trademarks they request my law firm to protect cannot be registered because there are already equal or similar trademarks registered.
We then go on to define the classes of goods related to the protection sought.
Finally, after the fees are paid, filing is done and the institutional registration process is opened.
If there are no problems, after a few months, one’s trademark is registered.
What is Brand Protection?
The concept of Brand Protection is very broad, but in general we can say that it consists of the protection of a brand from the legal point of view.
The registration of a trademark is valid for 10 years and can be renewed before it expires.
However, registering a trademark does not prevent others from using it more or less consciously.
Taking legal action with constant and wide-ranging monitoring for infringement is the only way to truly protect our trademark.
As a reminder, beyond affixing the R for registered or indicating that a brand is registered, there are no preventive actions to protect the brand and therefore any action must be reactive to a violation.
What are the requirements for trademark validity?
There are three requirements under the regulations for registration:
- Lawfulness
- Novelty
- Distinctive capacity
Each of these characteristics is essential, but the one that is most difficult to “comply with” in practice is distinctive capacity.
In fact, often the trademarks that one wants to register are composed of words that are too generic and therefore lack that trademark’s ability to differentiate.
Often consulting with an IP expert serves precisely to clarify these concepts and to help people understand the legal importance of a truly distinctive trademark.
What are the risks that could undermine brand value?
Poor attention to our brand is the biggest problem there can be.
This can occur, broadly speaking, in two cases:
Failure to use the brand
Failure to counteract actions to the detriment of the brand.
The first case might seem absurd, but from experience I can say that it happens much more often than we think.
So many brands are registered with a view to launching a business, product, or service that perhaps then never happen.
While it is true that a trademark registration is valid for 10 years, if the trademark is not used that registration loses value.
The second case occurs when other, unauthorized parties use our trademark or a similar trademark. If action is never taken to suppress and discourage these activities we may have the so-called “vulgarization” of the trademark resulting in the loss of all rights to it.
What practical tips can you suggest to protect the brand online?
To effectively protect one’s brand, as mentioned above, the first step is to register nationally, Europe-wide or internationally.
But this is not enough and a serious mechanism for monitoring one’s brand must be put in place.
The techniques can be various but I can say that an audit at trademark registration bodies such as Euipo to check the filings of other brands is something that is absolutely necessary.
The analysis of the various filings should also be done i relations to brands that are similar or even assimilated to the one we have registered.
Then I recommend periodically checking registered domains, accounts on various social networks, and also doing incognito browsing searches of keywords similar to our brand name.
As soon as we find something that does not convince us and could hurt our brand, we need to act diligently to avoid reputational damage, customer diversion or even just loss of traffic.