Legal help with trademark protection

What does trademark protection cover?

A registered trademark allows its owner to prevent others from using identical or confusingly similar signs for related goods or services.

The protection is limited to the goods and services included in the registration and to a particular geographic territory:

• a national registration with PRV protects the trademark in Sweden
• an EU trademark registered with EUIPO covers the European Union
• an international registration through WIPO may cover selected countries.

A trademark may acquire protection through established use in some circumstances, but that protection can be more difficult to prove. Registration provides clearer evidence of the owner’s rights and the scope of protection.

What can be registered as a trademark?

A trademark may consist of words, names, letters, numbers, symbols, logos, slogans, shapes, sounds, or other qualifying signs. To be registered, the mark must have distinctive character.

A mark that merely describes the relevant goods or services may be refused. The same applies to common terms that other businesses need to use when marketing their products.

An application may also face objections if the mark is confusingly similar to an earlier trademark or is affected by another ground for refusal.

Search before filing the application

Before filing, you should investigate whether identical or similar trademarks already exist. A search for rights applicable in Sweden should cover more than the national PRV database because EU trademarks and international registrations designating Sweden are also effective here.

The review should consider:

• the visual, phonetic, and conceptual similarity between the marks
• whether they cover identical or related goods and services
• the territories covered by the earlier rights
• company names and other rights that may create an obstacle
• whether the proposed mark is sufficiently distinctive.

A search cannot guarantee registration, but it may identify risks before you invest further in the name, design, or launch.

Select the appropriate goods and services

The application must identify the goods and services for which protection is requested. They are organized into 45 international trademark classes.

Your selection should reflect both the current business and realistic plans for using the mark. A narrow specification may leave important activities unprotected. An unnecessarily broad specification may increase costs and make the application more complex.

Goods, services, or classes generally cannot be added to an application after it has been filed. Extending the scope of protection will normally require a new application.

National, EU, or international protection

The appropriate filing strategy depends on where the business uses or plans to use the trademark.

A Swedish registration may be suitable for a business focused primarily on Sweden. An EU trademark provides unified protection throughout the European Union, although an earlier right in one member state may affect the entire application.

For markets outside the EU, an international application through WIPO’s Madrid System may be appropriate. The international application is based on an existing national or regional application or registration and allows the applicant to request protection in selected participating countries.

Objections and infringement

After a trademark is registered and published, owners of earlier rights may object to the registration. An objection may be based on a likelihood of confusion with an earlier mark.

If someone uses a sign that may infringe your rights, the circumstances should be investigated before action is taken. The appropriate response may involve:

• preserving evidence of the use
• assessing the likelihood of confusion
• sending a formal demand
• negotiating permitted use or a license
• seeking an order to stop the use
• pursuing compensation or court proceedings.

Trademark owners must monitor and enforce their own rights. PRV does not continuously monitor the market for unauthorized use or later applications on behalf of the owner.

Duration, renewal, and use

A Swedish trademark registration is valid for ten years and may be renewed for additional ten-year periods. Protection can continue indefinitely if the registration is renewed and the applicable requirements remain satisfied.

The registration should also be managed after approval. Changes in ownership, licenses, and other relevant information may need to be recorded. A registered trademark that is not used may be vulnerable to revocation under certain circumstances.