Authors: Inga Lukauskiene, Associated Partner, Attorney-at-Law, Patent Attorney at METIDA
A lot of attention has been paid on how to determine the value of a trademark, however, how much exactly the protection of the exclusive rights over the trademark costs is often forgotten.
Probably a lot of the patent attorneys are told by their clients (after they get a cost estimate), that trademark registration will be cheaper if they do everything by themselves. This is unsurprising, as the system is being constantly improved and the application procedures are not complicated. In fact, a trademark application fee is €69 and another €69 have to be paid to the Lithuanian State Patent Bureau (SPB) after the decision to register the trademark is issued. After the trademark registration is published you will shortly receive the registration certificate confirming your exclusive rights over the trademark.
However, not everything is as simple as it seems. If you have submitted your application without checking whether your trademark meets all the requirements, you are likely to get the first results quite promptly, as the SPB’s examiners may decide to refuse the application. But this decision does not have to be the final one, as you can request for the repeated examination explaining that the refusal to register your trademark lacked supporting arguments. Finally, you can always appeal against the final decision if it does not satisfy you. Yet, lodging an appeal or preparing an answer to the examiner requires not only the factual information, but also juridical experience and knowledge, therefore, in this matter you will probably need a lawyer.
If you successfully completed this stage and your trademark, despite some obstacles, has been registered and published, the process has not ended yet. Probably most of you are aware that the SPB only conducts an examination on absolute grounds, i.e. an incomplete examination, and does not investigate whether thetrademark in question is not identical or similar to the earlier trademarks, juridical persons’ names or whether it does not infringe other IP rights. This is your duty.
Surely, not everyone is experienced and has time or even technical possibilities to conduct this examination on their own. Even more experience is needed when deciding on what is considered to be infringement. Thus, if you have skipped this stage, you should not be surprised if instead of the trademark certificate, you receive a notice of opposition. And the story does not end here. If you want to protect your trademark, you have to submit the response to the opposition, as well as the final response when an opponent replies to your first comments. It is possible that the opposition will be examined at the oral hearing rather than on the basis of written submissions, hence, you will be required to participate in it. Needless to say, you can do this on your own, but you will probably end up yearning for help from a professional.
Nonetheless, even if you have completed this stage successfully, i.e. the opposition against your trademark has been rejected and you have finally received your trademark’s registration certificate, you may be astonished to find out that all these problems might have been escaped if in the initial stage of registering your trademark you had paid €200-300 extra. This would have spared you €300-700 or even more, i.e. a possible amount spent on convincing the examiners that their decision to withdraw your trademark’s registration lacked argumentative justification. The same amount of money would have been saved if you did not have to prove that your trademark registration did not infringe the rights of the third parties and, hence, the opposition against your trademark had to be rejected.
Thus, you might question yourself why you should register your trademark at all? If it costs so much and you can use the mark without registering it at the SPB (or as the Community trademark? You will probably get an answer to this question considerably later, i.e. when you figure out that one of your competitors has started using a similar trademark and seeks to forbid you to use yours. Trademark is not the object of copyright (unless it were an original graphic drawing), thus it gains a full protection only after its registration. You can certainly try to defend the rights over your unregistered trademark under the Law on Competition of the Republic of Lithuania. Yet, this law is applied only if the parties are competitors to each other and if the competitor uses the trademark unfairly or takes advantage of your trademark’s reputation. Nevertheless, these cases are not always possible to win.
Thus, how much does the trademark cost? Probably not much, if you paid enough attention and money in the initial stage of registration. But, if your beloved trademark got stuck in the registration process or, you figured out that it is similar to an earlier trademark, it may cost you a lot of money.