Trademark rights are territorial in nature, meaning that when you file for a trademark registration, it is effective only in the country where you applied. If you wish your mark to be protected in other countries, you must file in each such country.
There are two notable exceptions. It is possible to file an application to register a Community Trademark (CTM) by filing a single application to receive coverage in all the European Community member countries. It is also possible to file an application for an International Registration with the World Intellectual Property Organization (WIPO). There are certain limitations with these types of registrations which are spelt out in the FAQs.
When filing an application to register a trademark you must specify the goods and/or services for which the trademark is used. For this purpose, goods and services are divided into classes. For example, if you want to register a mark for watches you will apply in class 14. Please visit our 'Know your class' section for more details.
Applications initially are checked for certain formalities, and then proceed to an examination stage. Examiners will check for identical and similar marks (not in all countries)
decide whether the mark is distinctive
ascertain that the law does not otherwise prohibit the regitration of your mark (eg: scandalous material)
The time it takes for review and examination of an application varies greatly from country to country. In many countries, it takes about 8 months to one year.
Once an application is approved, it is published in an official publication usually referred to as a gazette for opposition. The period of opposition is 1 to 3 months, depending on the country. During this time, anyone with a similar mark can file an objection which, if not amicably settled, results in a hearing with evidence submitted before the designated tribunal of the government registry. If no opposition if filed, the application proceeds to registration. It may however be noted that in many countries there is no procedure for opposition.
What happens if you do not register your trademark, and you find out that someone is using an identical or similar mark? Without a trademark registration, you cannot file for trademark infringement. You do have some protection in common law countries in the form of an action for "passing off." This is a costly and difficult legal action to pursue, where the accusing party has to show reputation in his mark; misrepresentation on the part of the defendant; and damages. This remedy is not available in civil law jurisdictions such as Latin American countries.
If you do not register your mark and someone else registers a similar or identical mark, the owner of the registered mark can prevent you from using your mark. This is because a trademark registration certificate is a prima facie evidence that the mark is owned by the proprietor indicated in the certificate.
Therefore, it is strongly recommended that all trademarks be registered.
Before filing a trademark application, a pre-filing search is recommended in the relevant class and country.
To order registration of your mark please click here.
If your registered mark is due for renewal, we would be happy to attend to it on your behalf. Please contact us.