Module 3 Flashcards
Registration Strategy
Why do you need a trademark attorney for registration procedure of trademark rather than facilitating by yourself?
- To save time
- To ensure that you apply for protection in appropriate class(es)
- Some national laws require to appoint a trademark agent
What are the procedures involved in a trademark registration?
- Preliminary TM search
- Application form duly filed with prescribed fees
- Examination
- Reasonable opportunity is given to the party for being heard before refusal or any set of discrepancies in application
- Regusal/Grant and publication
- Appeal on the ground of refusal
What is the purpose of a preliminary TM search?
It is a method to make sure that the trademark you intend to use or a similar one is not already registered by another company, for identical or similar products. x/
What is the principle of territoriality?
The legal rights arising out of trademark registration are normally limited to the territory to which they pertain, so ordinary a valid registration of a trademark in your home country gives you right only in your own country.
Is it possible to register your TM internationally?
Yes, though the international registration of a trademark is allowed in countries which are signatory of the Madrid system.
Why should one register at a regional office?
- So that international registration can be maintained and renewed through a single procedure.
- To avoid filling compliance, to seek protection in different-different countries by filing the corresponding application in the required language and paying the required fees. {principle of territoriality applies}
What are the documentation requirements while filing a TM application?
You have to send (via post or fax ) or online or handed duly completed TM application form (directly to IPO) which includes:
- Contact details of your company,
- A representation of a mark
- A description of the goods or services
- Class/Classes for which your business wishes to obtain TM registration from NICE Classification
- Pay the required fees.
- Proof of use or a declaration that your company intends to use the trademark (followed in USA and Canada only)
Whether any standardization over other nations exist in filling forms and requisite criteria?
Yes. Article 3 of TLT contains an exclusive list of information which of TM offices of contracting parties may require for TM registration and expressly prohibit certain formalities,
How do you find/select an appropriate class of your TM application?
Using Madrid Goods and Services Manager Tool
What are the kinds of examination followed in TM application examination?
- Examination as to the form (Whether it is properly filled and paid prescribed fees or not)
- Examination as to the substance.
What are the two types of refusal with respect to the examination of TM application as to the substance?
- Absolute grounds of refusal
2. Relative grounds of refusal
How will you conceptualize the absolute grounds for refusal?
The absolute grounds for refusal are those which concern the intrinsic conditions of validity of a mark, provided for in the interest of consumer protection, that is, whether the mark is distinctive, not deceptive, and not immoral or against public order, and not in breach of Article 6 of the Paris Convention.
How will you conceptualize the relative grounds for refusal?
The relative grounds for refusal are those which are based on the existence of a prior conflicting mark.
Enlist a few countries which
- Examine only for absolute grounds
- Examine for both grounds
- France, Germany, Switzerland or Poland
2. Japan, US, Australia, Columbia, Peru, Argentina
Where can an appeal be filed if the applicant is not satisfied with the reason(s) of the refusal of TM application?
Depending on the legal system of the country, an appeal may be lodged with the office, with an administrative appeal board or with a court.