The trademark application procedure can be a complex and time consuming process, varying in requirements according to the country or countries in which the mark is to be registered. It is advisable for all individuals, businesses and legal entities to seek the support and guidance from a professional consultancy firm or licensed attorney to facilitate the whole trademark application procedure.
Trademark application procedure explained
The application procedure to register a mark, although may vary according to the national intellectual property registry of the country or countries you seek registration in, the basic principles still apply. The following steps give a general overview of the application process:
- The owner or representative of the owner will apply for trademark registration to the appropriate national registry or international agency. The trademark application procedure consists of submitting a completed application form with a representation of the mark.
- The application will then be examined by an examining officer of the intellectual property registry to ensure the mark complies with the relevant trademark laws and requirements. Such requirements which must be met include; the trademark being available, unique and distinguishable from other third party trademarks. It must also be capable of graphical representation and not be of a descriptive or offensive nature. Furthermore the mark cannot be confusingly similar to that of other marks in use.
- Once it has been approved by the examining officer, the next stage in the application procedure is to publish the trademark in the Official Gazette to allow for objections against the trademark’s registration to be heard.
- If there are opposing parties to the mark being registered, a case will be held before the Trademark Trial and Appeal Board. It is at this state that the trademark’s validity for registration is determined.
- In the instance where the mark has no opposition from third parties or where the trademark wins the right to register as per the decision of the Trademark Trial and Appeal Board, the mark will be registered.
- In the instance where the mark is refused registration, there will be an opportunity to appeal the decision of refusal. This appeal is typically conducted by 3-5 appeal examiners who will come to an “appeal decision” with regards to trademarks right for registration. It is this decision which will determine whether the mark can or cannot be officially registered.
- Where the mark is approved registration, generally speaking – the registered trademark will then be published in the trademark gazette to allow any opposition to be heard. Where oppositions are voiced on grounds of invalidation or revocation, an appeal examination will be held. The decision of the appeal examiners is final.
- Trademark holders, who have been refused registration at this stage, can appeal against the appeal examiners decisions at the intellectual property High Court.