1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Sweden. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Any 搒ign?that can graphically be reproduced and is capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, certain three-dimensional shapes, colors, sounds, and smells, is registrable.
4. Can a trademark be registered for retail and like services?
No.
5. How are domain names protected?
Through a company named NIC-SE.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes several months. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a Swedish trademark attorney. A foreign company must appoint a Swedish Attorney when filing in Sweden.
8. What information must be provided before filing?
Before filing, an applicant should provide 12 specimens of the mark having a size of not more than 8 x 8 centimeters, unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered.
9. Is local registration the only option, or are there international alternatives?
A Swedish application only has effect in Sweden. International and Community registrations are also available (see Guides on the Madrid Agreement and Protocol and the Community Trade Mark.)
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay extra class fees.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Swedish application, the filing date of the home application can be claimed as the priority date in Sweden. A Community or International registration can be based on a Swedish registration or application (see Guides on the Community Trade Mark and the Madrid Agreement and Protocol). Similarly, if an applicant抯 home country is a member of the World Trade Organization it should be possible to claim the home filing date. Consult a Swedish trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after five years may cure nonuse, provided that in the interim no third party has filed an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form would not affect the enforceability of the applicant抯 registration. However, if the difference is significant, a new application may be necessary, because it is not possible to amend a registration substantially. A Swedish trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Yes. Marks that are not sufficiently distinctive to be registrable can acquire the necessary distinctiveness through use, but generally the use must be in Sweden. If the mark is recognized in the trade in question, it is even possible to oppose applications or apply for the cancellation of registrations of the same or similar marks for the same or similar products/services, the use of which commenced or the registration of which occurred after the mark became recognized. However, proving use can be costly.
15. For an application to be valid, are there any particular requirements that must be met?
Yes. It simplifies the procedure if a Swedish trademark attorney is appointed. If the applicant抯 home country is not a member of the Paris Convention and requires applicants to file a copy of the home registration as part of its trademark registration procedure, a copy of the home registration must be filed during the process of the Swedish application.
16. What information is first published about an application/ registration and when is it published?
The application number, filing date/registration date, specification of goods/services, including case number, name and the name and address of the applicant are first published. Publication occurs after examination on absolute and relative grounds.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness. A search is also conducted for prior conflicting marks that can be cited against the application. Examination of prior rights will be abolished when the new Trademark Act enters into force, which will probably be within the next two years.
18. What response to official objections is required?
It is likely that the applicant will receive at least one official objection that will have to be answered within a given period. The applicant must either amend the application to meet the objections or persuade the Trade Marks Office that the objections are unfounded. The applicant also may have to provide evidence that the mark has acquired distinctiveness through use in Sweden, and/or limit the goods or services of the application. The applicant may have to enter into agreements with owners of existing marks, confirming that registration of the mark will not affect their rights, in return for their consent to the registration.
19. How long is the registration process?
For an uncomplicated application, the registration process takes approximately 12 to 18 months.
20. What rights does an application confer?
The application can be cited or used to oppose a subsequent conflicting application.
21. What is the legal effect of a registration?
The registrant can stop others from using an identical or similar trademark for the same or similar products/services. Marks or goods/services are considered 搒imilar?where there is a likelihood of confusion. Damages and/or an injunction against further infringement are the available remedies. The court may order removal of the infringing mark or destruction of the articles on which it appears.
22. Can an application be opposed or cancelled by third parties?
Yes. Opposition is possible strictly within the two months following registration of the application. Anyone may oppose on the basis that the mark is inherently unregistrable, but trademark owners with conflicting prior rights may also oppose on the basis of those rights. Cancellation is also possible and must be initiated before a court.
23. Can an application or registration be assigned?
Yes.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Recordation is not compulsory, but it does entitle the assignee to invoke the rights arising from registration.
26. Can an application or registration be licensed?
Yes. A license can be exclusive or nonexclusive, with or without limit of term, for all or some of the registered goods/services, or for all or part of Sweden. Consult a Swedish trademark attorney.
27. Does a license have to be recorded?
There is no legal requirement to record. Licenses that are likely to result in deceptive use of the mark will not be recorded.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Sweden.
29. How long does a registration last?
The term of registration is ten years from the date of registration, and is renewable for ten-year periods.
30. What is required to renew a registration?
A written application for renewal and payment of the renewal fee is required to renew a registration.
31. Is it necessary to indicate a trademark registration on goods or services?
Marking is optional. Although 揜egistrerat Varum鋜ke?or ?have no legal effect, marking can counter possible accusations that the mark has become generic and that the registration is, therefore, invalid.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes. The web address is www.prv.se. Information is also available in English. |
