5 Mistakes to avoid when filing a trademark application

Mistakes made when filing a trademark application can result in no trademark being registered or the registered trademark not covering all or the wrong goods and services. Poor wording of the goods and services will also lead to objections during the trademark application process, with the Swiss Federal Institute of Intellectual Property requesting the trademark applicant to adjust the wording.

There is also a risk that the trademark will be cancelled after registration at the request of a third party due to a trademark conflict. The following are five mistakes to avoid:

1. not conducting a similarity search before filing a trademark application

The existence of a similar earlier trademark is not examined in the trademark application procedure in many countries, including Switzerland. Therefore, if a similarity search is not performed before filing a new trademark application, the trademark owner runs the risk that his trademark may be cancelled by a third party in opposition proceedings after registration.

2. the list of goods and services is not drawn up by a specialist

The goods and services for which a trademark is to be used and which are indicated in the trademark application must be adapted to the Nice Classification system. It is therefore advantageous if this process is carried out by someone who knows the Nice Classification in detail and knows exactly which goods and services are classified in which of the 45 classes.

The goods and services must also be formulated according to the Nice Classification system. The correct formulation of the goods and services can lead to a faster and less complicated registration, in that the Trademark Office will not issue any objections due to defective formulations in the trademark application procedure.

Since after registration of a Swiss trademark, the list of goods and services can only be limited, but not extended, it should be carefully prepared.

3. trademark monitoring is not set up after registration of the trademark

In Switzerland, it is the trademark owner’s responsibility to monitor the trademark register after registering his trademark to ensure that third parties do not register a similar trademark.

If this is not done, there is a risk that third parties will register similar trademarks. If these trademarks remain registered for a longer period of time, it is no longer possible to successfully take action against them after some time. The trademark rights therefore expire after some time.

4. after registration of the trademark it is not used on the market

After registration of a national Swiss trademark, the trademark owner has 5 years to start using his trademark on the market. If the use is not started within this period of time, third parties can request the cancellation of the trademark at the Swiss Federal Institute of Intellectual Property.

5. you do not enforce your rights

There is no trademark police! It is up to you to make sure that none of your competitors infringes your trademark rights over a longer period of time. If a third party uses a confusingly similar sign or registers a confusingly similar trademark and no action is taken against it, the trademark rights are forfeited after a certain point in time. After that, it is no longer possible to successfully take action against it. It is therefore important to involve a trademark specialist immediately upon discovery of a potential trademark infringement in order to evaluate the best course of action.