Global Retail Branding
My toolbox for launching a
Consumer Brand Worldwide
3 August 2022

Who am I?
• Trademark lawyer, Sweden
• Westerberg & Partners
• Private practice at three different law firms
and inhouse legal counsel.
• I help various clients, in various industries,
including the fashion industry, food industry,
restaurant industry, steel industry, recycling
and space industry etc.
• I do have start-up clients, both in tech and
in the retail business.

Agenda
1. Short introduction to trademarks as business assets
2. 10 rules in launching a global trademark
3. Other updates related to trademarks and branding
4. Trademark information for start-ups

INTRODUCTION

What is a trademark and what is
branding?
What is a trademark?
• Indicator of origin (words, designs, letters, numerals, colours,
the shape of goods, the packaging of goods, sounds)
• Set your products apart from the products of competitors
• Guarantee of consistent quality
What is branding?
• The process of making and building a brand of a trademark
(reputation and goodwill)
• Marketing activities and storytelling in order for the trademark
to become associated with positive characteristics (style,
elegance, trustworthiness, security, innovation etc)

The IP Management hierarchy (Davis J.L. Harrison)
15 years ago…
Today 
Trademarks now and then

Trademark registration = Business asset
• Your trademark will help your business grow.
• Business angels and Investment funds will verify that your
trademark is registered.
• Also for collaborations and even launching your brand online,
the registered trademark right is important
• Licensing and franchise will require trademark registration

10 rules in launching a global
trademark

Rule # 1 – Choose a ”good” trademark
• ”Kill your darlings” – the trademark needs to be distinctive
• Fanciful textcombinations differing from normal language
• Nonsense words in relation to the goods/services
• Not difficult to memorize

Rule # 2 - Conduct clearance/freedom to operate search
before you finally choose your trademark
• Online search, identity searches in trademark databases etc.
https://www.tmdn.org/tmview/#/tmview
• Particularly important in retail.
• Large company vs start-up
• Depending on the business model and level in IP management hierarchy
• Linguistic check

Rule # 3 – Consider the possible (trademark) rights
of others not only for your main brand

Rule # 4 – Register your trademark on the most
important markets
• The process from local to global is much faster now
• Start building a fundament of trademark protection early and consider future
products when doing so
• EU (+UK), US and China (also remember that Switzerland and Norway are not
EU countries)
• Some online platforms require that you have registered your trademark
• Some online platforms offer brand protection functions for the protection of
registered trademarks

Rule # 5 – Register .com
• Your website is often the heart of your communication
• This, in combination with social media channels, is where you can amplify your
marketing message
• On your website, you can provide your one-way story-telling without disruption

TAKE THE SAID ACTIONS BEFORE COMMUNICATING
TO OTHERS

Rule # 6 – Use your trademark as registered
• Or at least have a strategy for it
• Need to use your trademark as registered (also need to make
sure that others, for instance franchise partners, use your
trademark as registered).
• Keep an archive (marketing and legal to work closely in this)

Rule # 7 – Monitor your trademark
• Many companies believe that they are all set when they have filed and
registered their trademark
• Never sit back and relax – need to monitor
• Watching services to continously scan the registries for newly filed trademark
applications
• Online brand protection services – online take-down

Rule # 9 – Integrate your trademark into your business
• Never let the trademarks/legal team work in silo
• Trademarks team should work closely with management, production,
marketing, communications etc.
• There are situations when the marketing team wants to do something
provocative.
• In border line cases it is important to inform the communications team so
that they are well prepared for how to handle black-mail or social media
scrutiny.

Rule # 10 – Keep your company’s tone of voice
also in legal matters

Tone of voice…

Tone of voice – keep in mind
• Know your market (politics, public opinion, social media)
• Keep balance in all your communication
• Prepare communication in advance in case of foreseen threats

Other important comments and tools
related to trademarks and branding

How to handle an unreasonable giant
• A challenge to defend against a giant - financial muscles.
• Followers on social media (Tuesday Bassen)
• Opposition strategy vs enforcement strategy
• Consider to file another version of the trademark in case the trademark owner
seems unreasonable.

China
• Will you ever offer your products or services there?
• Trademark squatters (peaked a couple of years ago)
• The Chinese trademarks office has taken measures to help trademark owners
• We have seen that it is easier nowadays to successfully act against a trademark
squatter in China
• Subclasses
• Consider Chinese trademark version and to have a local Chinese attorney watch for
similar marks
• It is relevant to go beyond your regular filing strategy to defeat trademark squatters
in China
• But: Keep an eye on the budget!

Metaverse and NFT:s (Non-Fungible Tokens)
• The virtual worlds are here to stay
• Will your company be there?
• Use requirement
• Uncertainty as to classification
• Indication that 12th edition of the Nice classification
will include ”downloadable digital files authenticated
by non-fungible tokens” as from Jan 1, 2023
• It is still not confirmed that the Chinese trademarks
office will accept this wording for NFT:s
• Nike’s recent EU and US applications; see EU
registration below.

Metaverse and NFT:s

Sustainability

Trademark information for start-ups

Tools for start-ups
Identity trademark searches
https://www.tmdn.org/tmview/#/tmview
SME (small and medium-sized enterprises) fund
For EU based companies EUIPO is offering SME funding for IP scans and IP
registrations, including trademarks, EUR 1500
https://euipo.europa.eu/ohimportal/en/online-services/sme-fund
Will continue 2023
IP Self Diagnostic electronic form
WIPO – IP diagnostic
https://www.wipo.int/ipdiagnostics-assessment/

Your IP journey could start like this
1. IP scan (self assessment via WIPO website)
2. Book a meeting with an advisor (there is no ”one size fits all” why
customization is necessary)
3. IP strategy
4. Protect your IP
5. Monitor and update IP and trademark strategy to reach commercial
goals

Did I reach my goal?
”The trademark can be the core business asset in your
company - if treated correctly. It can help your business
grow.”

Questions?

We focus on what we do best
We protect rights and resolve disputes.
Thank you!
annalena.nordin@westerberg.com