Home News E-Commerce and the protection of business through trademark registration

E-Commerce and the protection of business through trademark registration

June 5, 2020

Online marketing experts have determined that sales made through e-commerce have increased by 20 to 50% during the quarantine caused by COVID-19.

It is important to highlight that the pandemic has caused an acceleration of digital transformation, ergo all digitalization processes including online sales will be positively affected towards a new paradigm.

It is estimated that much of this increase in online sales will be sustained in the long term, so the e-commerce will become a structural part of any business, at the expense of conventional (offline) commerce.

It goes without saying that e-commerce sales eliminate any kind of frontiers, so new players come into play. In this sense, the entrepreneur is aware that the online channel expands the target customers with respect to offline commerce.

Therefore, it is worth noting that trademark rights may be affected in three ways.

First of all, the fact of offering goods or services outside the country where the ownership of a trademark is held, may lead to the infringement of priority rights of third parties.

Secondly, it is important to emphasize that the protection of a distinctive sign is acquired with its registration, i.e. if a trademark is not duly registered in those countries where the good or service is being marketed, it will not be possible to prevent third parties from offering an identical product or service without due consent, under an identical or highly similar denomination.

In the worst case scenario, the third party could take the lead in registering the trademark, and would then have priority rights and be able to prevent sales in that country if it could not be proved that the trademark registration was fraudulent.

The registration of a trademark, confers on its owner the right to prevent a third party from using an identical or similar sign on the market, for identical or similar goods and services.

Owing a trademark is a differential and valuable fact for the company and its goods, especially taking into account the importance of e-commerce nowadays, which is expected to become a key channel for maximizing economic benefits.

We offer the service of preliminary investigations, in order to help the client to make the best decision when it comes to expanding the online channel, through registration feasibility reports (in all those countries where the client has commercial interests), as well as in the management of domain names. It should be noted that these feasibility reports help to rule out any prior trademarks.

Likewise, we advise the client on the best business strategy, either by recommending to proceed with the filing of the trademark application, when the report is favourable, or by suggesting a partial or total renaming of the sign in order to mitigate those obstacles that would prevent the registration of the distinctive sign.

The process concludes with the registration of the trademark, with the consequent benefit for the owner, i.e. an exclusive use of the sign in the market.

To sum up, one must bear in mind that it is necessary to have the trademark registered in those markets where goods and services are offered.

Article by Xavier Badia.

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