Trade mark rights

What is a trade mark?

A trade mark is a mark used to differentiate different goods or services from each other. There are different kinds of trade marks. The most common consist of words or symbols, or combinations of the two.

Business operators can use trade marks to distinguish and accentuate their goods or services on the market. Trade marks also serve an important function for consumers by making it easier to identify goods or services.

Provisions concerning trade marks are primarily found in the Trade Marks Act. Many trade mark provisions are drafted in the same way throughout the EU. There are also a number of international conventions in the area of trade marks.

What is the significance of the new Trade Marks Act?

A new Trade Marks Act entered into force on 1 July 2011. At the same time, the 1960 Trade Marks Act and the 1960 Collective Marks Act were repealed. The new Act regulates how trade mark rights are obtained, what they mean and how they can cease to apply. It also contains rules on how trade mark rights are protected. The new Act has the following effects:

• The rules concerning applications to register trade marks are simpler and clearer
• It is easier to cancel trade mark registrations when the proprietor no longer has an interest in the trade mark
• The rules concerning trade marks are generally more modern and are adapted to current international provisions, particularly within the EU. The new Act is more in line with the EU Trade Marks Directive
• Sweden accedes to the Singapore Treaty on the Law of Trademarks, which aims to simplify administrative procedures for trade marks at global level

How to obtain an exclusive right to a trade mark

A common way to obtain an exclusive right to a trade mark is to register the trade mark. A fee must be paid for registration. An examination whether there are any impediments to registration is conducted during the registration process. If there are, the application may be rejected.

There are different kinds of registration which are valid in Sweden. Registration in the Swedish trade mark register is carried out at the Swedish Patent and Registration Office. This kind of registration applies throughout Sweden. Anyone who wishes to protect a trade mark throughout the EU can register it as a Community Trade Mark with the Office for Harmonisation in the Internal Market (OHIM) in Alicante. Anyone who already has a registered trade mark or has applied for registration can also apply for international registration of the trade mark at the World Intellectual Property Organisation (WIPO) in Geneva. The trade mark can thereby be protected in other countries.

Another way to obtain an exclusive right to a trade mark is through establishment on the market. A trade mark is considered to be established on the market if it has been used so extensively that it has become known here in the country, among a substantial part of the group it targets, as a symbol for the goods or services for which it is used. An exclusive right based solely on establishment on the market applies only within the area in which the trade mark is established.

What does an exclusive right to a trade mark mean?

An exclusive right to a trade mark means that no one else may use an identical mark for the same kind of goods or services. Protection also extends to the use of similar marks for similar goods or services, if there is a risk of confusion. Beyond this basic protection there is more comprehensive protection for trade marks that are known.

The exclusive right only protects the use of a trade mark in the course of trade; private use is therefore not covered by the exclusive right.

Normally, the exclusive right to use a trade mark for certain goods only applies when that goods is put on the market for the first time. Once that occurs, the proprietor of the trade mark loses the right to prevent someone else from using the trade mark in future sales of that particular goods.

Trade marks can be sold, purchased and pledged. The proprietor of a trade mark can also give someone else the right to use the mark (a license), for example in a specific geographical area.

When do trade mark rights cease?

A trade mark registration lasts for ten years, but a registration can be renewed an unlimited number of times. A fee must be paid to renew a registration. The exclusive right to a trade mark is therefore not limited in time, but can, in principle, last indefinitely.

However, the exclusive right to a trade mark can cease in various ways. The proprietor of a trade mark can request that the registration be cancelled. The right to an trade mark that has been established on the market ceases when it is no longer so known that it is considered to be established on the market.

Anyone who wishes to have another proprietor's trade mark registration cancelled can bring legal action before a general court or apply to the Swedish Patent and Registration Office for administrative cancellation.

How does administrative cancellation work?

Anyone who wishes to have a registration cancelled can choose between bringing legal action before a court, or requesting administrative cancellation by the Swedish Patent and Registration Office.

The Swedish Patent and Registration Office can decide on administrative cancellation if the proprietor of the registered trade mark either agrees to the cancellation of the registration or fails to contact the agency. If the proprietor of the trade mark does not wish the registration to be cancelled, the matter can be transferred to a general court. It then becomes a regular cancellation case.

The aim of administrative cancellation is that it should be simple and inexpensive to cancel a registration in which the proprietor no longer has an interest.

How are trade marks protected?

The rules on the protection of trade marks are sanctioned. There are, for example, provisions on criminal liability and liability for damages for anyone who infringes someone else's exclusive right to a trade mark. Further information about the rules on enforcement is available on the Swedish Government website.

Want to know more?

Practical guidance on how to apply for the registration of a trade mark is available on the Swedish Patent and Registration Office website: www.prv.se. The site also offers advice on what to consider when choosing a trade mark.