The process of registering a trademark varies depending on the Intellectual Property Office of the country you seek registration in. For example, the registration process for a community trademark will differ in comparison to registering in a single country or under the Madrid system for international marks. Owners that seek registration for their mark are advised to seek the assistance of a professional firm to guide them throughout the entire trademark search and registration process.
Process of registering a trademark
The trademark registration process is the next step after designing your ideal mark and conducting a thorough search to ensure the mark is unique, available and distinguishable from competitors. In order to achieve complete legal protection against third party infringement or cases of “passing off”, you will need to seek registration in the applicable countries where the trademark has commercial presence.
Prior to completing the registration application, it is vital to ensure your mark meets all the necessary requirements. If not, you risk the Intellectual Property Office rejecting your registration application and you will lose your application fee.
Provided your mark is capable of graphical representation and is available for registration, the owner, or professional representative, can then initiate the registration process. It is typically advised that a trademark owner seeks the assistance of an intellectual property attorney or professional consultancy firm that specialize in intellectual property, to guide them through the registration process. By taking advantage of a professional consultancy firm’s experience of trademark registration processes in countries across the globe, you can ensure the process will be completed successfully and in a timely and professional manner.
The official application procedure will vary according to the registry and number of countries you seek registration in, however, it will involve submitting the necessary application form, with a full representation of the trademark and payment of the registration fee.
Where the mark is to be registered as a CTM – across all 27 EU member states – it will be registered with the OHIM agency. This involves one single trademark search and one registration application. In a similar way, where the mark is to be registered with a number of international countries, it is registered under the Madrid System as administered by the WIPO agency, and this too is a single registration application. However, it is stipulated that in order to register your mark in a number of global countries under WIPO, the mark owner must first obtain registration rights in their country of domicile.
Once an application has been submitted to the relevant IPO, it is decided by the registry whether the trademark owner will receive the exclusive rights to the mark. This decision is heavily influenced by the originality and availability of the mark. Once approval has been granted by the relevant registries, the trademark will be published in the appropriate gazette. This step is to provide an appropriate period of time for objections to be voiced against the registration of the mark. In the case where objections are made, there will be an investigation to ascertain the validity of the objections. Should the registration of the mark then be denied there will be an opportunity to appeal the objection.
If during the publication of the mark (usually 3 months) there have been no objections made, a certificate of registration will then be issued to the mark owner; giving them exclusive rights of ownership and use over the trademark.
For further guidance, please see our How to Register a Trademark step by step page.