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A trademark can protect the name and logo of a franchise, its products and its services. Anticipating brand protection is crucial in order to avoid legal disputes and business loss over prior trademarks, while planning ahead with trademark protection is even more important when looking to expand abroad. Michel Nassar, attorney-at-law and of counsel at SAAS Lawyers, tells us how to protect our most valued asset
One common mistake is to only register a trademark in the countries where the franchise was launched or has an ongoing activity. New entrepreneurs could be inclined to register within the fewest countries possible, in order to save costs. The advice, however, is to consider a broader protection for your brand. Franchises should register their trademarks at least in all countries where they expect to do business, even if it will only be in the longer term. It is recommended to also register trademarks where the brand has market exposure. This is often the case with neighboring countries or those sharing a common language – for example, in the MENA market.
Anticipate your trademark registration
A trademark availability search is a must in order to avoid a legal dispute over a trademark prior right. We highly recommend our clients to proceed with a trademark availability search and a market search before even committing to a brand name, as it can be a roadblock for the expansion of a franchise.
It is advised to hand this due diligence to a legal counsel who will proceed in an extensive manner with identical, but also, with similar signs, on registrars’ databases and for prior use without registration. In some cases, you might want to reconsider your brand name and/or logo, according to the result of the search.
The trademark registration
1. The sign and the class
Trademark protects ownership of a sign under a certain class or category. A trademark sign is capable of distinguishing the goods or services of one enterprise from those of other enterprises. Such signs can be a word or a combination of words, letters and numerals. As noted by the World Intellectual Property Organization, it can also be: “Drawings; symbols; three-dimensional features, such as the shape and packaging of goods; non-visible signs, such as sounds or fragrances; or color shades used as distinguishing features – the possibilities are almost limitless.”
When applying for a trademark registration, it is often advised to be assisted by a legal counsel for the written description of the sign, particularly for the most complex signs.
2. The cost of the registration
Depending on countries, the fees can range from under USD 300 to up to USD 1000 per country. As registration in several countries can be costly, it is highly recommended to ask your legal counsel for an estimation of the fees at the early stages of your franchise development, so that the costs can be taken into consideration in the budget.
Before and after the trademark registration
In addition to registering trademarks, any work or business (between the partners of the franchise or with third parties) related to the franchise brand should be protected with carefully drafted Non-Disclosure Agreements or Confidentiality Clauses.
It is also important to keep the duration of the registration in mind, as it can vary between 10 to 20 years, depending on the country.
• Determine markets to protect
• Anticipate registration with previous trademark search
• Register trademarks for your brands and products
• Secure the legal background
of your activity