Bringing value to your business – registering your brand as a trade mark

Obtaining registration of your brand as a trade mark

Your brand is arguably the most valuable asset of your business. It is the sign that you use in commerce to tell consumers that the products and/or services offered under your brand belong to you or are at least provided with your approval. But is your brand registered as a trade mark?  

It is with registration of your brand as a trade mark that you will have the exclusive right to use it for the products and/or services you offer under it. Until registration as a trade mark, you may not be able to stop your competitors from using signs identical or similar to your brand. This is true even if you have a registered company name that uses your brand name, as company names and trade marks exist for distinct purposes (e.g., in Portugal registration of your company name is a requirement to create your company and registration of your brand as a trade mark is a way to ensure consumers connect your products and/or services to your brand no other).   

Importantly, investors are more likely to invest in your brand if you have it registered as a trade mark. This is because they know that by registration (a) you can stop third parties from using your brand without your authority for products and/or services of a lesser quality than those offered by your brand; and (b) you have control over which manufacturers, suppliers, distributors and service providers can use your brand (e.g., license of brand).  

Bringing value to your brand does not stop at obtaining registration of it as a trade mark. It also involves taking steps after registration, such as:

• stopping third parties from wrongfully using your brand for products and/or services similar to those offered under your brand in the countries and regions you have trade mark registration rights;

• opposing trade mark applications for trade mark applications filed at local trade mark offices (e.g., Portugal’s Trade Mark Office, EUIPO);

• use the ® symbol next to your brand to show to others it is registered as a trade mark; and

• inform customs authorities that you are the registered owner of your brand and that they are allowed to identify and seize counterfeit products imported in the country/region you have registered trade mark rights.

The above are only some examples of the measures you can adopt to ensure your brand over time attains reputation in the market you operate and increases in value over time.

But is my brand registrable as a trade mark?

That will depend on whether your brand is sufficiently distinctive and not descriptive of the products and/or services it covers.

Your brand will be considered sufficiently distinctive if it is able to distinguish the products and/or services it covers from those of other trade marks. For example, when Portugal’s Trade Mark Office receives your trade mark application it will analyze it to determine whether there are any other prior trade mark applications or registrations in Portugal or the European Union for signs that are either identical or similar to your brand and are for products and/or services identical or closely related to those covered by your brand. If Portugal’s Trade Mark Office identifies a conflicting trade mark, you may not be able to obtain registration of your brand as a trade mark for all or some of the products and/or services your brand covers. This means that:

• you may not have the right to exclusive use of your brand for all or some of the products and/or services your brand covers; and

• There may be a risk you will be committing trade mark infringement by using your brand in commerce if the conflicting trade mark identified by Portugal’s Trade Mark Office is used in commerce for products and/or services covered by your brand.   

Also, for your brand to be registered as a trade mark it must not be descriptive of the products and/or services it identifies. This means that if your brand describes the kind, quality, quantity, intended purpose, value, geographical origin or the time your products were manufactured or your services were delivered, as well as other characteristics of your products and/or services, it is unlikely that it will be registered as a trade mark. This is because it would be unfair for you to have a monopoly over a word or term that other traders of your industry would require to use to describe a characteristic of their products and/or services.

It is for this reason that prior to obtaining registration of your brand, you should conduct trade mark searches to determine the risks associated with you seeking registration of your brand as a trade mark. For example, not conducting these searches can result in you suffering financial losses if you are not able to sell products already manufactured by you bearing your brand because someone else has a prior registered right to the use of your brand for identical or similar products.