Lets take it from the beginning, in 2021, e-commerce platforms Jetshop and Storm Commerce merged with a clear agenda.
- With flexible, modular SaaS services in an open ecosystem, and with multiple local delivery partners, the merged companies would challenge the global players and win more customers, both in B2C and B2B, who want to accelerate their digital transformation. We knew early in the process that we needed a new common name to gather our services under, says Michael Hallberg, CCO at Norce AB. Choosing Fondia as a partner in that work was natural as we had worked with them for a number of years already. During that time, they have shown that they really understand our business and that they are easy to work with.
The road to a unique trademark
In the fall of 2021, three trademarks were identified and selected. Fondia helped by looking at whether there were previous trademark applications and/or trademark registrations that risked preventing both use and registration of the three proposed trademarks, a so-called trademark clearance. One of those options was NORCE.
-A trademark clearance is done to prevent infringement of older trademark registrations and opposition to the upcoming trademark application. This is an important step as the general rule in most countries is that the first person to register a trademark is the one who has the rights to it. In some countries, it is possible to obtain an exclusive right to a trademark through intensive use of the mark, but this requires a high level of market awareness of the trademark in question, which in turn requires a large amount of evidence. "It is significantly more expensive and time-consuming to try to enforce the right to a trademark based on use rather than being proactive and simply register your trademark," says Hanna Kaspers.
After Norce AB decided to proceed with NORCE, Fondia assisted them in analyzing the most cost- and time-efficient application strategy. The analysis took into account which countries to apply for trademark registration in and when to enter each country. Fondia helped Norce AB to file trademark applications in the EU, Norway, UK, Switzerland and USA.
- What's important to remember is that after Brexit, the UK requires a separate trademark application and that Norway and Switzerland are not part of the EU. An EU trademark registration is a very good option for companies that have plans to offer their services in several EU countries. An EU trademark registration is valid in all EU countries and makes it easy to start using the trademark step by step in the EU without having to file new applications as soon as you cross a new border, says Mathilde Lecomte, also a lawyer and expert in intellectual property.
Monitoring the trademark
It can be easy to think that you have done your homework when the trademark registration is done, but after that it is important to actively monitor your trademark to keep track of whether someone applies for an identical or similar trademark. This is something that Norce AB does.
-Fondia offers trademark watch, which means that we continuously review published trademark applications to see if they run the risk of being confusingly similar to NORCE. We inform Norce about relevant watch hits and help them analyze their chances of success in the event of an opposition. If Norce wishes to oppose a trademark application, we help with the entire opposition process with the aim to hinder the application in question of being approved for registration, says Hanna Kaspers.
Norce AB itself also sees the monitoring work as important for the continued strategy.
- When we discover operators using identical or similar trademarks to NORCE, we contact Fondia. Fondia is then our representative and sends a warning letter to the company in question. Should we want to sue for trademark infringement, Fondia helps us with that as well. It feels safe!" says Michael Hallberg, CCO at Norce.