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Trade Mark Basics
A trade mark can be in a number of forms but the most common are words and logos. The important points about a trade mark are that it should be distinctive (not descriptive) and not deceptive (implying qualities that are not actually in the goods or services). The more the proposed trade mark is like the goods or services it covers the more likely it will be refused.
A trade mark registration can take between six and thirty six months depending on the country. If there are objections from the Examining Office or third party opposition it could take many more months or years.
In most countries the normal registration period for a trade mark is 10 years but it can be renewed indefinitely.
Most countries require a Power of Attorney with various levels of authentication ranging from simply signed through to notorised and legalised by the country’s embassy.
If a logo is being registered prints of the mark are usually requested and some documents may have to be translated into the local language.
Registration Process
There are essentially five stages to a trade mark registration.
Search– Check whether the trade mark is the same or similar to an existing mark
Filing– The trade mark application is completed and lodged with the local Intellectual Property Office (Examining Office). An Examiner is appointed to look at the application. At this point the Examiner may raise some objections (also called Office Actions). Depending on the objection some additional costs maybe incurred at this point.
Publication– Once any objections the Examiner raises have been dealt with the mark is published in a journal and/or newspaper to allow third parties to oppose the proposed mark.
Opposition – If a third party does oppose the registration then either the third parties points have to be argued against or the application is abandoned. Responding to opposition from third parties does involve additional costs. Generally up to 10% of applications have either an objection by the Examiner or are opposed. Some countries are more prone to Examiners objecting than others, the US Examiners are particularly inclined to raise objections.
Registration- When any opposition has been satisfied the mark is registered and a certificate is issued.
Prior to the start of the process all documentation should be in place or there maybe late fees charged by the Examining Office.
Terms Explained
Word Mark– this is literally a word or phrase to distinguish the product/service from others on the market
Logo (also called a device) – a picture/design possibly combined with a word or phrase
Class- a group of products/services (see Trade Mark Classifications). Important to note that some countries do not use the class system or have not adopted all of the classifications.
Examining Office– the intellectual property office of the country concerned.
Power of Attorney– document that gives the right of one person to act on another’s behalf. In this case to register a trade mark in another country.
Certified – a solicitor or Notary Public confirms in a signed statement the authenticity of a signature
Notorised – A Notary Public adds their seal to confirm the authenticity of a signature
Legalised– This involves the Foreign and Commonwealth office confirming the authenticity of the Solicitor/Notary Publics signature/seal and adding an apostille or a Legalisation Certificate to the document. The legalisation process may stop at this stage depending on the country but may continue to the Embassy/Consulate of the country involved for them to add their authentication.
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