Registering trademark is a crucial step to protect your business identity and differentiate it from competitors. Whether you want to register a trademark in Egypt or internationally, the registration process requires precision and good planning to avoid mistakes that may lead to rejection of the application or loss of legal rights. In this article, we will review the common mistakes that many people make when registering trademarks, with practical tips to avoid them, as well as real-life examples of companies that have faced challenges in this process.
Part One: Failure to Conduct Preliminary Trademark Research
One of the biggest mistakes business owners make when registering trademark is filing an application without conducting comprehensive research to ensure no similar trademark already exists. Some may believe that simply choosing a unique name or logo is sufficient for protection, but reality proves otherwise.
When submitting a trademark application, the relevant authorities (such as the Egyptian Patent Office or the World Intellectual Property Organization “WIPO” for international registration) examine the application to verify that the trademark does not closely resemble any pre-registered marks. If substantial similarity is found, the application will be rejected, resulting in wasted time and money.
In 2018, Egypt rejected an application to register “Max” for clothing due to its similarity to the global brand “Max” owned by “Max Mara.”
A startup in the UAE attempted to register “Starbun” for beverages, but the application was rejected because the name resembled “Starbucks.”
Search Local Databases: In Egypt, you can use the Egyptian Trademark Office database via the Egyptian Patent Office website.
International Search: If you plan to expand globally, use Madrid Monitor by WIPO to search for internationally registered trademarks.
Consult a Specialized Lawyer: Some trademarks may not be identical but are phonetically or visually similar, requiring legal expertise to assess risks.
| Search Type | Source | Approximate Cost |
|---|---|---|
| Local Search (Egypt) | Egyptian Patent Office | 500 – 1500 EGP |
| International Search | WIPO Database (Madrid Monitor) | Free |
| GCC Countries Search | GCC Trademark Office | Varies by Country |
Q: What happens if a trademark is rejected due to similarity?
A: You can modify the trademark or choose a new name and reapply, but this delays legal protection and increases costs.
Q: Can I rely on search engines like Google instead of official databases?
A: No, because some trademarks may be registered but not commercially used, so official databases must be checked.
In the next part, we will discuss the mistake of choosing a generic or descriptive trademark and how to avoid it to ensure strong protection for your brand.
(To be continued…)
The following parts will cover: choosing generic/descriptive marks, incorrect classification selection, neglecting legal renewals, and international registration mistakes.
One of the most common mistakes that leads to trademark application rejections is selecting names or logos that are too generic or descriptive. Some companies believe that using common terms or words that directly describe their product will make the trademark more memorable. However, the law doesn’t adequately protect such marks.
According to intellectual property laws in Egypt and internationally, trademarks are classified based on their distinctiveness:
Fanciful or Inventive Marks (Strong Marks)
Completely unique with no direct connection to the product/service
Example: “Kodak” for cameras (a made-up word with no dictionary meaning)
These receive the strongest legal protection
Suggestive Marks
Indirectly hint at product qualities without explicit description
Example: “Microsoft” (combining “micro” and “soft” for software)
Good level of protection
Descriptive or Generic Marks (Weak Marks)
Directly describe the product/service
Example: “Fast Internet” for a telecom company
Typically rejected as they don’t distinguish one brand from another
Common words used by everyone in an industry cannot be monopolized
The purpose of a trademark is brand distinction, not product description
For trademark registration in Egypt, the law requires marks to be “distinctive” and not identical/similar to existing marks
Global Example:
Apple tried to trademark “Pod” for iPods, but courts rejected it because “Pod” means “container” – a generic term
Local Example (Egypt):
“Vegetable Market” was rejected for an online grocery store because the name was purely descriptive
| Mark Type | Example | Registrability |
|---|---|---|
| Fanciful/Made-up | “Google” – “Zoom” | ✔️ (Strongest) |
| Suggestive | “Netflix” (Net + Flicks) | ✔️ (Good) |
| Descriptive | “Ahmad’s Sweets” | ✖️ (Weak/Rejected) |
Avoid Direct Descriptions
Instead of “Fast Pizza Restaurant,” try creative combinations like “Pizzono”
Use Non-Dictionary Words
Like “Expedia” (from “Experience” + “Expedition”) for travel services
Test Distinctiveness
Ask potential customers: “Does this name represent a specific product without explanation?” If yes, it’s likely too descriptive
Q: Can I register a mark containing a generic word if I add distinctive elements?
A: Yes, like “Coffee World” for a café, where the overall composition is unique despite containing a generic word (“coffee”)
Q: What if my descriptive mark has been used for years?
A: Some offices may allow registration if you prove the mark has acquired “secondary meaning” through long-term use (like “Fanta” which became associated with the drink despite originating from “Fantasy”)
In Part Three, we’ll examine the mistake of incorrect classification selection during registration and how to choose categories precisely to avoid legal gaps.
(To be continued…)
Part Three: Selecting Incorrect Trademark Classes During Registration
One of the most critical mistakes businesses make when registering trademarks in Egypt or internationally is choosing inappropriate classes or failing to cover all current and future business activities. A trademark doesn’t provide absolute protection for your name or logo—it only protects them within the specific classes you register. This oversight can cost you legal rights or lead to expensive disputes. registering trademark
Globally, trademarks are divided into 45 classes under the Nice International Classification system:
Classes 1-34 cover physical goods (food, pharmaceuticals, electronics)
Classes 35-45 cover services (advertising, education, restaurants)
Inadequate Protection: Competitors may register your mark in classes you’ll need later
Application Rejection: If the class doesn’t match your business, authorities may deem it non-serious
Legal Disputes: Like Apple vs. Apple Corps (music company) because Apple didn’t initially register in music-related classes registering trademark
When Tesla registered its mark for electric cars, it neglected Class 25 (clothing)
Another company registered “Tesla” for apparel, forcing Elon Musk to buy back the rights for millions
“Kari” registered in Class 29 (food products) for ready meals
They failed to register in Class 39 (delivery services), allowing competitors to use similar names for delivery registering trademark
For a café, register in:
Class 30 (coffee/tea)
Class 43 (restaurant services)
Class 35 (online marketing)
Some classes overlap (like Class 9 for software and Class 42 for development services)—you may need both. registering trademark
| Business Type | Core Classes | Potential Additional Classes |
|---|---|---|
| Clothing | 25 (Apparel) | 35 (E-commerce) |
| Software | 9 (Computer Programs) | 42 (Tech Services) |
| Restaurants | 43 (Food Services) | 30 (Food Products) |
Q: Can I add new classes after registration?
A: No—you must file a new application for each additional class, so it’s best to cover all needs initially. registering trademark
Q: What’s the cost of multi-class registration in Egypt?
A: Each class costs about 2,000-3,000 EGP separately. Internationally, costs vary by country under the Madrid System. registering trademark
In Part Four, we’ll discuss the mistake of neglecting trademark renewal and how to avoid losing legal protection. registering trademark
(To be continued…)
Part Four: Neglecting Trademark Renewal and Losing Legal Protection
Trademark registration – whether in Egypt or internationally – isn’t a one-time process. One of the most costly mistakes businesses make is failing to track renewal deadlines, resulting in cancellation of trademark rights and opening the door for others to exploit your brand identity.
In Egypt and most jurisdictions worldwide, trademark protection lasts for 10 years, renewable for subsequent 10-year periods. However, owners must file renewal applications during specified windows:
Final year before expiration (between years 9-10)
Grace period (6 months post-expiration in Egypt, with late fees)
Your mark becomes public domain, free for anyone to use
Competitors may register your brand, forcing expensive legal battles to reclaim rights
In 2021, Coca-Cola lost rights to its “Dasani” trademark in the European Union due to failure to renew registration, allowing any European company to use the name for water products.
A local restaurant chain attempted to renew its trademark two years after expiration. The Egyptian Trademark Office rejected the request as the mark had already entered public domain.
Set digital calendar reminders (Google Calendar) 1 year before expiration
Many law firms offer renewal alert services as part of registration packages
In Egypt: File with the Egyptian Trademark Office, submitting:
Renewal application form
Original registration certificate copy
Fees (~5,000 EGP per class)
Internationally: Madrid System registrations can be renewed through WIPO
| Jurisdiction | Protection Term | Ideal Renewal Window | Grace Period |
|---|---|---|---|
| Egypt | 10 years | Years 9-10 | 6 months (with penalty) |
| Saudi Arabia | 10 years | Year 10 | None |
| UAE | 10 years | Years 9-10 | 3 months |
| United States | 10 years | Years 9-10 | 6 months |
Q: Can I renew after the grace period expires?
A: No – the trademark cancels automatically and requires completely new registration, risking loss of the name to competitors. registering trademark
Q: What documents are needed for Egyptian renewals?
A: 1) Original/copy of registration certificate 2) Renewal application form 3) Fee payment 4) Sometimes proof of use (product photos/advertisements) registering trademark
Q: Can I renew more than 1 year early?
A: Typically no – most jurisdictions (including Egypt) only accept renewals during the final year. registering trademark
In the fifth and final part, we’ll examine common pitfalls in international trademark registration and how to strategically plan global expansion. registering trademark
(To be continued…)
Part Five: Common Pitfalls in International Trademark Registration and Strategic Expansion
When considering international trademark registration, you encounter a system far more complex than domestic filing. Many Egyptian and Arab companies stumble at this stage due to either inexperience or hasty decision-making. In this final installment, we examine the most common mistakes in global brand expansion and how to build an effective protection strategy. registering trademark
Many believe the Madrid International System is the only path to global registration, when in reality other options may be more suitable:
Direct National Filing (Ideal when targeting 1-3 specific countries)
EUIPO System (Single registration covering all EU member states)
GCC System (Unified registration across 6 Gulf countries)
An Egyptian fashion startup registered through Madrid covering 50 countries when they only needed 3 key markets. Result? Thousands wasted on unnecessary jurisdictions when direct national filings would have sufficed.
Consult IP specialists to analyze the optimal registration approach based on:
Target markets
Available budget
Future expansion plans
A trademark acceptable in Egypt might be rejected or considered offensive abroad due to:
Linguistic meanings in local languages
Sensitive religious or cultural symbols
Country-specific legal restrictions
Egyptian chocolate brand “Janna” faced rejection in Israel due to religious connotations of the word meaning “paradise”
Mitsubishi’s “Pajero” vehicle failed in Spanish markets where the term carries vulgar slang meaning
Conduct thorough research on:
Name/logo interpretations in each target market
Religious and cultural sensitivities
Local customs and traditions
Engage native translators to vet all meanings
Registering only the classes used domestically, while international operations may require additional protections.
Registered in transportation services (Class 39) for Saudi expansion
Failed to register in electronic payments (Class 36), allowing competitors to use similar names for payment services registering trademark
Add 1-2 supplemental classes per market based on:
Local market characteristics
Future business plans
Related activities (e.g., payment systems for apps)
You must have a registration basis (home country registration) before using the Madrid System. registering trademark
Attempting international registration before completing domestic procedures leads to:
International application rejection
Loss of priority date
Wasted resources
Complete registration in Egypt first
Wait 6 months (priority period)
Use Egyptian registration as basis for Madrid application
Some countries (like the U.S.) require actual commercial use within 3-5 years of registration, or the mark becomes vulnerable to cancellation. registering trademark
“Zadna” food company registered in the U.S. but never entered the market. After 5 years, their mark was cancelled and registered by an American competitor. registering trademark
Develop realistic market entry plans
Only register in countries where you:
Have concrete plans to operate within 3-5 years
Possess adequate resources for market entry
| System | Advantages | Drawbacks | Estimated Cost |
|---|---|---|---|
| Madrid (WIPO) | Covers 130+ countries | Administrative complexity | 3,000−10,000 |
| EUIPO | Single EU registration | Excludes UK post-Brexit | €1,500-€4,000 |
| Direct National | Flexible per-need approach | Separate procedures per country | Varies by country |
Q: How many countries can I cover via Madrid?
A: You can select any of 130+ member countries, but focus on core markets first. registering trademark
Q: What’s the most cost-effective international approach?
A: For 3 countries or fewer, direct national filings often prove cheaper than Madrid. registering trademark
Q: How do I verify global trademark conflicts?
A: Use TMview to search trademarks across 70 national offices worldwide. registering trademark
Begin with domestic registration in Egypt
Precisely identify target markets (avoid “spray-and-pray” approach)
Select the optimal registration system (Madrid, regional, or direct)
Verify cultural/legal compatibility in each market
Plan for actual use in all registered jurisdictions
This concludes our five-part series on major trademark registration mistakes. Remember: your trademark is among your most valuable business assets—protect it strategically with proper planning and expert guidance. registering trademark
Final Summary: Key Lessons for Successful Trademark Registration
This comprehensive series has outlined the 5 most critical mistakes in trademark registration with practical solutions to avoid them:
Preliminary Research: Always verify potential conflicts with existing marks (use both local and international databases)
Distinctiveness: Avoid generic/descriptive terms (opt for inventive or suggestive marks)
Proper Classification: Carefully select relevant Nice International Classes for current and future business activities
Monitoring: Establish a renewal tracking system (10-year protection terms require proactive management)
Global Expansion: Strategize international registration (conduct cultural compatibility checks and choose appropriate filing systems)
Final Advice: Invest in specialized IP legal consultation – the initial expert consultation cost is far lower than losing your trademark rights or facing expensive litigation.
By following these principles, you can build robust legal protection for your trademark in Egypt and globally, safeguarding your business identity while maintaining sustainable competitive advantage.
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
ContentsCommon mistakes when registering trademark and how to avoid themCommon mistakes when registering trademarkWhy is Preliminary Research Essential?Examples of Trademark Rejections Due to SimilarityHow to
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