Basic steps registration – Trademark
The actual steps taken by a trademark office to register a mark vary from country to country but, broadly speaking, all trademark offices follow a similar procedure:
a. Application
A duly filled in trademark application form, along with the prescribed minimum documents is submitted to the national trademark office, which is set up and functions in accordance with the provisions of the national trademark law.
b. Formal examination
Trademark office examines the application to make sure that it complies with the administrative requirements or formalities such as whether the application fee has been paid and the application form is properly filled in.
c. Substantive examination
- All trademark offices are required, under their respective trademark law, to examine whether a proposed mark complies with the requirements of all the absolute grounds under which certain types of marks are always refused registration. These grounds vary from one country to another.
- In addition, in many countries, the applicable trademark law requires the office to verify if the proposed mark is in conflict with an existing mark on the register in the relevant class(es) of goods and/or services. This is known as examination on relative grounds. The principal factors
considered by the trademark examiner or attorney in determining whether there would be a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.
- To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between a proposed mark and a registered mark, the trademark examiner will refuse registration on the ground of likelihood of confusion. If a conflict exists between a proposed mark and a mark in an earlier filed pending application, the trademark examiner or attorney will notify the applicant of the potential conflict. If the mark in the earlier‐filed application gets registered, the registration of the later‐filed conflicting mark will be refused on the ground of likelihood of confusion.
- The registration of a mark may also be refused, depending on the exact provisions of the relevant trademark law and guidelines for the trademark examiner or attorney, if it is considered to be, for example, in conflict with a well‐known mark or is a generic term, descriptive, deceptive as to the nature of the goods or place of its origin, primarily merely a surname, or ornamental.
d. Publication and opposition
In many countries, the proposed mark is published in an official gazette or journal so that any third party may oppose its registration within a specified period of time. In other countries, a proposed mark is published also or only after it has been accepted for registration, with
the possibility of subsequently filing a petition, within a specified period of time, to cancel the registration. If the mark is not opposed or if the oppositions are unsuccessful, the mark is then registered.
e. Registration
Once it has been decided that there are no grounds for refusal, the trademark is registered, and a registration certificate is issued that is generally valid for 10 years.
f. Renewal
A registered mark may be renewed indefinitely by paying the required renewal fees. However, a registration may be cancelled for some or all the goods or services if the mark has not been used for a certain period of time as specified in the relevant trademark law.
More Reference 3‐1: Trademark search
Millions of trademarks are in use all over the world. A lot of new marks are registered everyday around the world. Therefore, it is becoming more and more difficult to find a new mark, especially a word mark, which is not identical with, or similar to, an existing mark in use on identical or related products. So, before using or planning to register a mark, you should clear
a proposed mark by doing or getting done a proper trademark search.
More Reference 3‐2: Trademark renewal
1. If the appearance of a trademark has changed, it should be re‐registered in its new version.
2. There is no restriction on modifying or adapting marks, but a business world have to consult with the trademark office concerned or a competent trademark professional in order to determine the cost and procedure involved in registering the change.
3. The modification of a trademark should suit the nature of the product and not simply be done for the sake of a modern look, as there is always a risk of confusing loyal consumers.
4. Nowadays, a number of variants of a trademark are ofter created right from the start, for example, for use in different media. In response to such needs, in recent years, many trademark offices have permitted registration of variants of a trademark in a single registration.
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