Six Key Factors of a Successful Trademark Filing Strategy

Choosing the Right Territories:

When defining the territorial scope of a trademark filing strategy, the following questions should be considered:

• In which countries are the products currently sold?
• Which markets are targeted for expansion over the next three to five years?
• Are there jurisdictions where maintaining future market access is strategically important?
• In which countries is the trademark applied to the products during the manufacturing process?

After securing protection in the key markets, the trademark portfolio can be expanded step by step as business activities evolve.

When planning a phased expansion, the right of priority should also be taken into account. Within six months of the initial filing, applicants may claim the filing date of that application for subsequent trademark applications in other countries. The timing of the initial application should therefore be planned strategically to make best use of this window.

Taking the Company's Brand Hierarchy into Account

Before filing a trademark application, it is essential to clearly define the role the new trademark will play within the existing brand hierarchy. Will it serve as a house mark, an umbrella brand or a product brand?

The filing strategy should reflect the trademark's intended function and strategic significance. While house marks often require broad and early protection, both in terms of the relevant goods and services and the jurisdictions covered, a more limited scope of protection may be sufficient for a product brand.

Choosing the Right Type of Trademark

Another important consideration is the type of trademark to be filed. Should a word mark, a figurative mark or a combined word and figurative mark be sought? Word marks generally offer broader protection, as they protect the sign regardless of its visual presentation. Combined marks, on the other hand, may be easier to register, particularly where the verbal element is descriptive or has limited inherent distinctiveness. The choice of trademark type should therefore be considered at an early stage when developing the filing strategy.

Defining the Goods and Services Specification Carefully

In addition to choosing the right territories and trademark type, drafting the specification of goods and services is a strategically important step. An overly broad specification may increase the risk of non-use challenges, while a specification that is too narrow may leave gaps in protection. The specification should therefore reflect the company's current and planned business activities and be tailored to the practice of the relevant trademark office.

Considering Search Results 

Trademark searches for identical and similar trademark rights are a key element of any trademark filing strategy. They help identify potential conflicts at an early stage and provide a basis for determining the most appropriate course of action.

For example, where an earlier trademark right exists in a Member State of the European Union, an International Registration designating selected EU Member States may be a more suitable alternative to filing an EU Trade Mark application. This approach can help mitigate risks in a targeted manner while still securing the level of trademark protection required for the business.

Where conflicts are identified, other possible courses of action include modifying the sign, narrowing the specification of goods and services or entering into a coexistence agreement with the owner of the earlier right.

Using the Budget Strategically 

Available budget resources should be taken into account from the outset, ideally during the brand development phase. The objective is not to maximise the number of trademark applications filed, but to build a focused trademark portfolio that provides long-term and sustainable protection for the brand.

Conclusion

A successful trademark filing strategy is built on the careful balancing of several key factors, including the relevant territories, the trademark's role within the brand hierarchy, the type of trademark, the specification of goods and services, the outcome of trademark searches and the available budget. Considering these factors at an early stage lays the foundation for targeted, commercially sound and effective trademark protection.

Importantly, the strategic work does not end with registration. Ongoing monitoring for conflicting new filings and the consistent use of registered trademarks are equally essential components of sustainable brand protection.

authors: Gudrun Irsa-Klingspiegl, Birgit Kapeller-Hirsch