Module 3

Question 1

Why do you need a trademark attorney for registration procedure of trademark rather than facilitating by yourself?

Answer 1

• To save time
• To ensure that you apply for protection in appropriate class(es)
• Some national laws require to appoint a trademark agent

Question 2

What are the procedures involved in a trademark registration?

Answer 2

1. Preliminary TM search
2. Application form duly filed with prescribed fees
3. Examination
4. Reasonable opportunity is given to the party for being heard before refusal or any set of discrepancies in application
5. Regusal/Grant and publication
6. Appeal on the ground of refusal

Question 3

What is the purpose of a preliminary TM search?

Answer 3

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/

Question 4

What is the principle of territoriality?

Answer 4

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.

Question 5

Is it possible to register your TM internationally?

Answer 5

Yes, though the international registration of a trademark is allowed in countries which are signatory of the Madrid system.

Question 6

Why should one register at a regional office?

Answer 6

• 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}

Question 7

What are the documentation requirements while filing a TM application?

Answer 7

You have to send (via post or fax ) or online or handed duly completed TM application form (directly to IPO) which includes:

1. Contact details of your company,
2. A representation of a mark
3. A description of the goods or services
4. Class/Classes for which your business wishes to obtain TM registration from NICE Classification
5. Pay the required fees.
6. Proof of use or a declaration that your company intends to use the trademark (followed in USA and Canada only)

Question 8

Whether any standardization over other nations exist in filling forms and requisite criteria?

Answer 8

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,

Question 9

How do you find/select an appropriate class of your TM application?

Answer 9

Using Madrid Goods and Services Manager Tool

Question 10

What are the kinds of examination followed in TM application examination?

Answer 10

1. Examination as to the form (Whether it is properly filled and paid prescribed fees or not)
2. Examination as to the substance.

Question 11

What are the two types of refusal with respect to the examination of TM application as to the substance?

Answer 11

1. Absolute grounds of refusal

2. Relative grounds of refusal

Question 12

How will you conceptualize the absolute grounds for refusal?

Answer 12

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.

Question 13

How will you conceptualize the relative grounds for refusal?

Answer 13

The relative grounds for refusal are those which are based on the existence of a prior conflicting mark.

Question 14

Enlist a few countries which

1. Examine only for absolute grounds
2. Examine for both grounds

Answer 14

1. France, Germany, Switzerland or Poland

2. Japan, US, Australia, Columbia, Peru, Argentina

Question 15

Where can an appeal be filed if the applicant is not satisfied with the reason(s) of the refusal of TM application?

Answer 15

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.

Question 16

Why is the publication of TM in official TM gazette important when the grant has been published?

Answer 16

It is important for owners of prior rights and the public that all relevant data contained in the register, concerning the application, registration renewals and changes of name, address and ownership should be published in an official gazette. This enables owners of prior rights to take necessary steps including the opposition, or action for cancelation.

Question 17

Why is the register of the TM mark generally accessible to the public after publication?

Answer 17

The register of the mark is generally accessible to the public, to ensure that owner of prior rights are properly informed. This database is further utilized in preliminary trademark search.

Question 18

Who may use the Madrid system?

Answer 18

The possibility of filling an international application under Madrid system is limited to the person who meets one of the following conditions:

1. Be a national of a country party to the Madrid Agreement or Protocol, or
2. Have a domicile in a country party to the Madrid Agreement or Protocol, or
3. Have real and effective industrial or commercial establishment in the territory of the country party to the Madrid Agreement or Protocol.
4. There is a need for a prior application or prior registration of the mark in the office of origin.

Question 19

What are the contents of an International application?

Answer 19

The international application must contain inter alia

1. Reproduction of the mark which must be identical with that in the home registration or home application;
2. A list of goods or services which protection is sought classified in accordance with the current edition (Based on NICE)
3. Designation of the countries in which a mark is to be protected.

Question 20

What is the procedure of an international TM application?

Answer 20

1. An International applicationis filed with the office of origin, national or regional office.
2. The office of origin presents an international application to WIPO.
3. WIPO checks whether basic filing requirements have been met according to the Madrid system and TLT.
4. The application is accepted by WIPO which ten notifies the international registration to trademark offices of the countries for which protection has been requested.
5. Those national trademark offices then conduct their own substantive examination as provided by their own national legislation.
6. They may grant the TM certificate or refuse the application on any ground but not on the ground of its non-compliance with formality requirements because they are already checked by WIPO.

Question 21

What is the time period for notifying when a national office rejects an international application forwarded by WIPO?

Answer 21

To notify refusal to WIPO within 12 months with an option to extend to 18 months

Question 22

What is the scope of protection of an international registration?

Answer 22

The scope of protection of an international registration in each of the designated states is not governed by international provisions contained in the Madrid system, but exclusively by the national law of each of the designated states and where applicable, the regional treaty concerned.

Question 23

What is the duration of an international trademark?

Answer 23

10 years.

Question 24

Is trademark registration costless? If not, what are the fees?

Answer 24

Trademark registration is not costless. Following fees have to be paid -

1. Filing Fee
2. Fee for each class of goods/services
3. Registrartion Ability

Question 25

Name a few regional trademark offices.

Answer 25

1. African Regional IP office (ARIPO)
2. Benelux TM office
3. EUIPO office
4. Organisation Africaine de la propriété Intellectuelle (OAPI)

Question 26

Define the principle of specialty.

Answer 26

The principal of specialty means in particular that if a person obtains the protection of the mark XX in relation, for example to shoes, nothing prevents the third party to use the very same name XX for other types of goods and/or services for which there cannot be a likelihood of confusion, for example, computers.

Question 27

Is trademark registered for an indefinite period of time?

Answer 27

No, depending upon the national/regional/international law, a trademark is registered for a reasonable amount of time. After the expiry of this period, a TM holder may apply for re-registration.