Four easy ways to strengthen your trademark portfolio

Trademarks owned by a company constitute a trademark portfolio. In order to get the most out of trademarks, it is advisable to periodically review the contents of your portfolio. Managing your trademark portfolio regularly also may bring about savings. Find below a few pieces of advice on how to strengthen your trademark portfolio.

Register all relevant trademarks

Even though many companies have some trademark registrations, often only some of the trademarks that are used are registered. Sometimes, for example, a company may have protected its business name as a trademark, but the same has not been done with respect to the names of the products sold by the company. Considering that trademark registrations are inexpensive and provide protection for ten years at a time, registration is worthwhile.

Note the geographical coverage

Trademark protection is territorial in that a registration in one country or one territory provides protection only in that territory. Therefore, if a company is entering a new market, you may want to consider extending your trademark protection to that market. EU trademark is a cost-effective tool, as it provides protection throughout the EU through a single registration. However, if also non-EU countries, such as Norway, Switzerland or the United Kingdom, are important for the company, it is worth extending protection to these countries as well.

Register for all relevant goods

Another special feature of trademarks is that they confer the exclusive right to use the mark only in relation to the goods and services for which the mark is registered. If the company’s business evolves from the time of registration of the trademark, or if, for example, the company begins to provide a new product, it is advisable to review the classification of the trademarks to ensure that it still covers all the goods and services offered by the company.

Specify the classification

Sometimes the classification of a trademark may be so inaccurate that it does not cover all of the goods and services for which the registration was intended. An example of often inaccurate classifications are registrations for so-called class headings. Whereas in the past the registration for a class heading was considered to cover all goods contained in that class, this is no longer the case with the 2019 reform of the Finnish Trademarks Act. At present, a class heading is considered to cover only those goods which fall under the class heading according to its literal meaning. Therefore, if a trademark is registered for a class heading, it is advisable to specify the classification in order to strengthen the protection conferred by the trademark.

Noora Arkia

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