Check your trademark before applying – avoid costly mistakes
When entering new markets, it’s essential to secure trademark rights in the countries you plan to export to. Without registration, others may beat you to it – or already hold rights that could block your brand.
Before investing in a launch and building your brand, you should check whether the name or trademark is both available and suitable. A name that works well at home may have an unfortunate meaning in another language – or already be registered abroad. Many only discover this too late, and end up in costly disputes.
A Norwegian company experienced this in Germany, where a nearly identical name had already been registered. The result was a rejected application and an expensive rebranding process.
To avoid such pitfalls, we recommend conducting preliminary searches and applying for registration in the relevant countries as early as possible. This way, you can build your brand securely and sustainably, without fearing disputes or demands to change your trademark.
Preliminary Search
At Håmsø, we offer preliminary searches both in Norway and internationally. Such a check can save you time, money, and a lot of headaches—especially if you’re aiming to expand beyond your home borders.
With the right strategy and thorough preliminary research, you lay a solid foundation for growth and a protected brand. We assess each case individually and recommend the strategy that best suits your business and market plans.
Other Common Pitfalls
A common reason for refusal of international applications is that the goods and services list is not tailored to the national regulations of each country. This often results in time-consuming and costly additional rounds in each individual market.
If you have international ambitions, it’s often worthwhile to start with a Norwegian base application prepared with expansion in mind. This allows the goods and services list to be tailored from the outset, ensuring it works in the markets you aim to enter.
With our help in drafting a comprehensive goods and services list from the start, you’ll have a solid foundation that not only makes the process smoother and more predictable but can also save you significant costs in the long run.
Timing Your International Application
As a general rule, we recommend registering your trademark in the countries where you expect activity within a three to five-year timeframe. This way, you stay ahead and avoid others securing the rights before you.
If you have ambitions for international expansion but have not yet applied in Norway, we usually recommend starting with a Norwegian base application and then filing internationally within six months. This gives you priority from the Norwegian filing date, meaning your international applications are treated as if they were submitted on the same day as the Norwegian one.
This gives you an advantage by preserving your original place in the queue. As a result, no one else can step in and secure the rights to the same trademark during the period between the Norwegian application and the international filings. Priority thus acts as a “first right,” preventing competitors from stealing your idea or blocking your entry into new markets.
Three different ways to register your trademark abroad
EU trademark – one application system for all EU member states
The EU has a shared trademark register that applies across all member states. An EU trademark (EUTM) therefore provides broad protection through a single application and can be a highly effective solution if Europe is a key market for you.
An EU application is independent of a Norwegian base registration, and we can assist you with applying directly to the EUIPO. This makes it a good and cost-effective option if you don’t require protection outside the EU.
If, on the other hand, you plan to expand into markets outside Europe, or into European countries that are not part of the EU, the Madrid Protocol is usually the best solution.
Håmsø helps you assess whether an EU trademark is the right solution for you – and we ensure your application is handled correctly from start to finish.
Madrid Protocol – flexible registration in over 100 countries
With the Madrid Protocol, you can apply for international trademark registration through a single application to the international office WIPO in Geneva, designating over 100 countries. You choose which markets are relevant and pay fees accordingly. The application is then examined by the authorities in the countries you have selected.
The system offers great flexibility and can be more cost-effective than applying country by country. At the same time, it’s important to have a clear strategy to ensure you select the markets most relevant to your business.
We help you find the most cost-effective route to international protection and manage the submission and follow-up process, so you avoid unnecessary detours and extra costs.
National trademark applications
A national trademark application is submitted directly to the national registration authorities through local agents. Such applications are suitable if you only want to protect your trademark in one country, or if that country is not a member of the Madrid Protocol.
Håmsø has an extensive network of professional partners who assist in securing your trademark rights abroad.
How we help you
At Håmsø Patentbyrå, you get a partner who supports you throughout the entire process – from preliminary searches and strategy to filing applications. We also assist with monitoring, oppositions, and other formal requirements along the way, and we’ll send you a reminder when it’s time to renew your trademark.
We offer 30 minutes of free consultation to new clients. Feel free to tell us which trademark you are considering registering, and we’ll provide an initial assessment of its registrability.
With us on your side, you can confidently grow your brand – even beyond Norway’s borders. Want to learn more about trademarks? Visit our page about trademarks..
Not sure where to start? Get in touch for a no-obligation chat – it could save you both time and money down the line.