The 3 biggest mistakes you should avoid when registering a trademark

13 March 2024

Registering a trademark is a crucial step for entrepreneurs and companies to protect their goods and services and stand out from the competition. To help you make the process as smooth as possible, we highlight the three biggest mistakes you should avoid when registering a trademark.

Mistake no. 1: Insufficient research before filing a trademark application

One of the most common and serious mistakes is insufficient research before registering a trademark. It is crucial that you ensure that your trademark or a very similar sign is not already registered or in use. Otherwise, you risk legal disputes that could lead to the rejection of your application or force you to change your already established trademark.

Preventive strategy:

• Carry out a comprehensive research in the relevant trademark registers;
• Consider using a professional trademark research service that can help you identify potential conflicting trademarks.

Mistake no. 2: Imprecise or incomplete application

Another mistake is filing an imprecise or incomplete application. This can result in the application being rejected or the trademark protection not being as extensive as you need it to be. Common problems include unclear or imprecise descriptions of goods or services and the lack of important documents or information.

Preventive strategy:

• Be precise when describing your goods and services;
• Make sure you provide all the necessary information and documentation;
• Use the correct classifications according to the Nice Agreement to classify your goods and services;
• When applying for a Swiss trade mark, consult the classification aid of the Swiss Federal Institute of Intellectual Property (IPI) (link: https//wdl.ige.ch/wdl);
• Consider consulting a trade mark specialist to ensure that your application is complete and correct.

Mistake no. 3: Ignoring geographical differences

Trademark law is territorial, which means that the trademark is only protected in the countries where the trademark is registered. A common mistake is to ignore the geographical differences and the need to register trademarks in different countries or regions.

Preventive strategy:

• Think about the countries or regions in which you want to protect your trademark. Here you should think carefully about the target markets in which you want to offer your products and/or services in the next 5 years;
• Inform yourself about the respective requirements and processes for trademark registration in these countries;
• Use international registration systems such as the Madrid system for the international registration of trademarks;
• Get professional support to ensure that you take into account the specifics of each market.

Keep in mind that the trademark registration process can be complex and often requires specific legal knowledge. Working with a trademark specialist is not only an investment in the protection of your trademark, but also a safeguard against costly mistakes. Our specialists at VISCHER have the necessary expertise and experience to guide you through the entire process and make your trademark a strong and protected asset of your business. We also have an established worldwide network of IP specialists who can be consulted if necessary.

We hope this blog has provided you with helpful insights and invite you to get in touch with our specialists to clarify your individual questions and successfully establish your trademark. Your success is our concern and we are ready to support you along the way.

Authors: Mirjam Frick, Jacqueline Burri, Monika Llanderrozas (Team Leader), Marcia Eigenmann and Ariane Niemeyer