Anyone who wants to protect a trade mark must apply for and register it with the relevant trade mark office. Today, it is apparently possible to apply for and register a trade mark yourself with a search window, supposedly without any problems, at the click of a mouse. At first glance, such offers may seem tempting, since prior research to evaluate the competition and the availability under trademark law is regularly dispensed with.
This procedure involves a risk that should not be underestimated. Research forms the stable foundation of a brand. Only a professionally conducted research allows an adequate formulation of the classes of goods and services. This classification requires specific expertise and is very important, as incorrect or missing classes or terms can lead to the desired goods and services not being covered by trade mark protection at all. As a result, the trade mark must be re-applied for, which means that the entire registration fees must be paid again. In view of a possible international extension of trademark protection from Switzerland to the EU, for example, it is also important to register the basic trademark correctly in Switzerland. Otherwise, the international fees will have to be paid several times. Therefore, a thorough availability search is necessary in advance for the correct class definition.
In addition, depending on the search results, the trademark category (such as word, figurative or shape mark) and the choice of classes and terms must be adapted in such a way that possible trademark collisions leading to costly opposition or lawsuit proceedings are avoided from the outset. The research carried out at the beginning also helps to distinguish oneself sufficiently from the competition and to avoid lawyer fodder.
Last but not least, sufficient research also enables the intended products and services to be protected in a tailormade manner by one’s own trademark. This is extremely important, as the trademark is subject to a duty of use. If the trademark protection is not specific enough to the product, the proof of the effective use of the trademark cannot be provided, which means that the trademark protection is lost.
Failure to carry out research and the resulting registration can lead to misinvestment and considerable procedural costs on the basis of incorrect product classes and misjudgement under trademark law. Ideally, trademark research serves to precisely determine trademark monitoring.
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