The trade mark trap and how to avoid it

The letter instructs him to change the trade mark and remove it from all his products. The lawyer argues that Mr Smart’s trade mark is too similar to his client’s. His client registered his trade mark first and is active in the same class of goods (i.e. in the same industry) as Mr Smart. Smart doesn’t stand much chance of surviving unscathed.

The problem is that Mr Smart didn’t arrange a trade mark search before registering his own mark. “In a professional search, experts clarify whether a similar trade mark has already been registered in the Swiss trade mark register,” explains Matthias Käch, a Senior IP Coach and trade mark expert at the Swiss Federal Institute of Intellectual Property (IPI). When a trade mark application is filed, the IPI does not automatically check whether an identical or similar sign has already been filed or registered. It’s up to the applicant to find that out.

The cost of a professional search depends on the type of trade mark and whether it is to be used in other countries as well as in Switzerland. After the search, the expert will normally analyse the results and make a recommendation to the client. “At CHF 500, a search is more expensive than just registering a trade mark, but it’s an investment in the future,” says Matthias Käch. Some entrepreneurs, like Mr Smart, prefer to skimp on costs, but that’s a much costlier option if a dispute arises. If they then have to surrender their trade mark, that means relabelling all points of contact with customers, such as posters, packaging, business cards and websites.

It may seem as if there are lots of David versus Goliath cases, but there are good reasons for that. Matthias Käch explains: “As the proprietor of a trade mark, I need to defend my sign. As a business owner, I regularly check whether new trade marks can harm me, if I have the means to do so.” Lawyers and agencies use tools to search for trade marks worldwide. “If trade mark owners don’t put up a fight, they weaken their trade mark and it gets harder to take action against third parties,” says the expert.

Trade marks identify companies and their products. Over the course of time, they can become valuable assets, standing for the quality and value of the product. They’re an investment in the future. So test the waters before jumping in. Do a search, and you’ll stay afloat.