To register or not to register (a trademark), this is the question…

To register or not to register (a trademark), this is the question…

Adi Marcus, Adv.
September 21, 2020

Registering a trademark is a relatively simple procedure, but it is a significant step in starting a new business, so it is important to do it correctly, as soon as practical, and using an experienced lawyer. Incorrect, or late, registration may create issues later on, which will render the protection ineffective and may cause additional expenses that could have been easily avoided.

A trademark is used to link a name or mark to a product or manufacturer of the product and may even apply to services provided by a particular business. The mark enables the consumer to distinguish and differentiate between similar products in the market, to gather information about the features and quality of the product through the link to the manufacturer with which it is identified and often constitutes a decisive factor in consumer choice. A trademark is in fact an asset of the business, just like any other asset. However, unlike other assets, which may devalue due to market fluctuations, the advantage of trademarks and patents is that they are solid assets that retain their value, and continue to have profit potential for the business even in times of economic crisis.

Many mistakenly believe that registering a trademark in the early stages of starting a business is unnecessary because if the business is not yet established, there is no high probability that others will try to copy it, or its products. However, this approach is incorrect and may be disastrous. Firstly, as mentioned, trademarks are an asset as any other asset. Thus, registering a trademark actually produces economic value for the business. Moreover, early registration provides preliminary protection for the mark, prevents use by competitors and may prevent issues at a later stage if it turns out that there is a problem with the registration of the requested mark. For example, a business may discover at a later stage, when it comes to registering the mark, that it cannot be registered due to the existence of a previously registered mark or because a competitor has begun to use it by such time. In such cases, the business may well discover that it has no protection, despite the fact that it started using the mark before its competitors and will have no choice but to rebrand its products, at a significant financial expense, in order to replace the product name with a registrable name. In addition, it is important to remember that the trademark registration procedure is a procedure that may take many months and for this reason it is advisable to start the procedure as early as possible, so that the mark is already registered by the time the business starts to gain momentum.

Registration of a trademark in Israel provides protection only in Israel and a business wishing to operate worldwide must also consider registering a trademark in other jurisdictions. In the past, the process of registering an international trademark was long and tedious and required the submission of separate applications around the world. However, since Israel's entry into the Madrid Convention in 2010, the procedure has become much simpler and an application for registration of an international trademark can be submitted at the same time as filing for a mark in Israel, via the Israeli Registrar of Trademarks. However, registering an international trademark involves additional costs, may be more complicated (due to the existence of a greater number of registered marks that may conflict with the mark sought) and therefore one should carefully consider whether this is necessary.

Finally, it is important to carefully consider which mark to list. Whether to register the name, logo or slogan and in what language? Is it to be in colored or in black and white? For which products and in which classifications? The choices has financial significance (both when registering and when renewing and maintaining the marks). Appropriate legal advice, and proper mapping of business needs may assist in funneling the required protection and avoiding unnecessary expenses.