The registration process

The selection of a trade mark can be a challenging exercise and conflicts may occur between the Marketing Department and the IP Department – marketing always win; trade mark agents get to say “I told you so”! But if trade mark registration is considered desirable, there are some pitfalls to avoid:

• Anything that may be seen as descriptive or deceptive;
• Excluded emblems – government – military – royal etc;
• Anything conflicting with exiting registrations.

Do not become overcommitted to a mark if there is a problem – move on. Don’t organize a clearance search at the last minute with fingers crossed – the “can you just confirm we are ok to use this” phone call.

Like patents, a first application is filed somewhere which then initiates a six-month convention term (under the Paris Convention) during which similar applications may be filed elsewhere with a claim to priority. An international application can also be filed in this way under the Madrid Protocol. 

In the EU and the UK, applications are examined promptly after filing and can be rejected on absolute grounds if descriptive or excluded for example. Examiners may cite earlier registrations that have a similar mark for similar goods but cannot reject the application on these relative grounds. If the application is maintained, the owners of the earlier registrations are notified of the potential conflict and the application is advertised.

Advertisement of an accepted application initiates a two-month/three-month opposition period during which third parties, including those notified, may file an opposition. To avoid oppositions, avoid conflicting with existing registrations.

Thus, the Registrar in the UK may be considered as taking a very light touch in terms of rejecting applications and will rely on third party oppositions. This approach is not the same in all countries. An extreme case is China where examiners will reject applications even when the parties involved do not consider themselves to be in commercial conflict. A new applicant may be forced to file many applications for non-use revocation in order to clear a path to achieve registration. The approach taken in other countries will be somewhere between these extremes.

An advantage of the Madrid protocol is that further designations may be made at any time. Renewal fees are also paid centrally to the international bureau. Renewal payments are required every ten years usually, but not always, based on the anniversary of filing.