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What’s priority right?

What’s priority right?

Priority right, which is activated by the first filing, shows that you’ve been the first to apply for an invention, industrial design or trademark. To make use of it, you need to claim your priority right when filing abroad.

What’s the time limit for claiming priority?

Applicants have “twelve months for patents and utility models, and six months for industrial designs and trademarks” (Paris Convention, Art.4) from the filing date of the initial application to take further actions.

Why shall I claim priority?

The Patent Office will decide on the novelty of your invention (check out our post on novelty) based on the priority date. If you filed without priority, all the information that became known in the world (including your first application, if published) would be a part of the state of the art, and your invention would no longer be considered new or novel.

All in all, priority claim preserves the rights of the applicants who want to obtain protection for their intellectual property in more than one country.

Patent and Trademark Search Who needs it?

When searching for information about IPR protection, you may come across such terms as patent and trademark search. Is it obligatory, who conducts these searches and how to know if you need one?

Patentability search is also known as prior art, patent or novelty search. It is conducted to find out if the same invention has already been disclosed by someone else, or if similar invention exists. Patentability search is not obligatory and is conducted when drafting your patent application. Besides, this type of search can be performed by the patent office when examining your application.

As for the trademark search, it helps to determine whether the same trademark has already been registered. In most of the countries, you are not obliged to conduct trademark search prior to filing; but you should know that it is a part of the examination process in many countries.

How to know if you need one? Results of the patent search can help you to decide whether the invention is worth patenting, evaluate the chances of getting a patent, prepare to possible Office Actions.

With trademarks the benefits are also considerable: you can avoid accidental infringements, consider your future actions before filing an application and discover potential competitors who can file oppositions.

For conducting a search, it is better to reach a professional trademark or patent attorney.

Understanding Trademarks

Trademarks are at the epicentre of both intellectual property and our daily lives, with brand names emblazoned into every moment of our day-to-day activities. From our morning cereal to TV adverts, right down to the toothpaste we use and the bottled water we drink, trademarks are everywhere, so let’s take a look at the particulars of this type of IP, and provide an overview of what can and cannot be registered.

Trademarks are used to identify and distinguish a company's products and/or services from those of its competitors. The most common types of trademarks are word, figurative, and combination marks, but may also comprise sounds, smells, 3D models, colours, or logos, depending on the allowances of the jurisdiction.

Trademarks themselves are registered for specific goods and/or services which, for many countries, are classified in the Nice Classification of Goods and Services. This is an international classification established by the Nice Agreement of 1957 and revised each year, presently utilized by approximately 150 IP offices including the regional offices of EUIPO, OAPI, ARIPO, and BOIP. At present, there are 34 possible classes of goods, and 11 classes of services for which a trademark can be registered.

In general, trademarks must be distinctive in order to be registered. In some countries such as the UK, however, it may be possible to register a non-distinct mark, provided that prior to the date of registration, it acquired a distinctive character as a result of its use. Distinctiveness in the US has experienced some overhaul when it comes to non traditional trademarks, whereby court rulings have found that marks in relation to sound and product packaging are capable of being inherently distinctive, whilst product design, scent, colour and taste are not. Those not inherently distinctive must therefore provide evidence of a secondary meaning, or acquired distinctiveness, in order to be registrable and protected under US courts.

Trademarks that cannot be registered usually include those which are misleading (if it uses the word 'organic' for a product that is not) or descriptive if a mark describes the goods or services to which it will relate. Furthermore, marks that contain internet domain names, aspects that are deemed offensive such as swear words or inappropriate images, as well as those similar to state symbols and other official signs, emblems subject to protection under an international agreement, abbreviations and names of international intergovernmental organizations, are not registrable in most jurisdictions.

Trademarks can vary in terms of their strength of protection, for example, a strong mark in accordance with US trademark law would be a 'fanciful or coined' mark. These marks are inherently distinctive as they constitute invented or sometimes archaic words that bear little, or no, resemblance to the goods or services provided, such as 'Pepsi'. Another type of strong trademark is the arbitrary mark, consisting of words or symbols that have common meaning in the jurisdiction of registration, but are unrelated to the good or service, such as ‘Apple’ for computers. Weaker marks include suggestive marks such as 'Netflix', which make some reference to the subject matter of the mark.

Please note that the aforementioned examples of trademark requirements and strength of protection are largely based on UK and US law, and will differ in each jurisdiction. For more information on trademark registration, please contact us.

Trademark opposition

One of the key parts of the procedure for the registration of a trademark is the possibility of oppositions to an application.

A trademark opposition is a formal objection, filed by a third party, against the registration of a mark. National and regional trademark laws outline the procedures for the opposition process in each jurisdiction, including the particulars such as opposition terms, documents etc. In many jurisdictions, a trademark application is published once it has been accepted and deemed as registrable by the trademark office. Thereafter, third parties may object to the registration of the mark during a defined period of time on the basis of grounds set forth by the relevant trademark law. This period is otherwise known as the Opposition Period.

There are 2 types of opposition grounds - absolute and relative. Absolute grounds encompass issues with the trademark itself, such as if the mark is not distinctive, is descriptive of the goods/services covered by the mark, or is generic in nature in relation to the goods or services.

Relative grounds rely on the basis that an earlier trademark right exists, and the applied-for trademark conflicts with said earlier right, for example, if it is confusingly similar, or takes advantage of a previous mark’s reputation.

Should an opposition be filed against the registration of a mark, the relevant IPO will typically make an applicant aware of the opposition, and will set a deadline for which a response may be filed. This response will usually comprise either a Notice of Defence and a counterstatement with arguments to defend the application in full, withdrawal of the application, or limiting of the goods or services. This stage may continue to both parties filing further submissions in support of their side, and the IPO will form a decision based upon said submissions. In some jurisdictions, the parties may elect to have the matter heard at a hearing.

One possible outcome is that the opposition is rejected by the IPO. In this instance, the trademark application may then proceed to be registered without issue.

Should an opposition be accepted fully, the trademark application shall be considered withdrawn, and thus will not be registered.

If, on the other hand, the opposition is accepted partially, the trademark applicant may be obliged to amend their mark in accordance with the decision, for example, reducing the list of goods and/or services in the application which were subject to the opposition.

Alternatively, it may be possible to negotiate an amicable solution with the opposing party in order for the application to continue to registration without the need for the matter to be decided by the IPO.

Considering the complex nature of trademark oppositions, it is important for both applicants and potential opposing parties to be aware of all particulars of the trademark opposition procedure. If you have any questions regarding the trademark opposition process, or require the assistance of a trademark attorney, feel free to contact us.

Madrid system

The Madrid System for the International Registration of Marks facilitates the registration and maintenance of trademarks internationally, and is administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO). The system is governed by the Madrid Agreement Concerning the International Registration of Marks of 1891, and the Protocol Relating to the Madrid Agreement of 1989.

The Madrid Union consists of 108 Member States, comprising a total of 124 countries and regions overall. The system affords applicants the opportunity to file one international application, accompanied by a single set of fees, covering any or all of the 124 Contracting States to the Madrid Protocol.

In order to file for international trademark protection by way of the Madrid System, it is necessary for an applicant to first file a national application with an IP Office of Origin. This must be an Office in a Contracting State to the Madrid Agreement/Protocol, in which the applicant either resides, is a national of, or has a commercial business in. This initial application is referred to as the "basic" one, and serves as the basis for further filing of the international application, which must be filed with the same IP Office of Origin.

The international application must be identical to the basic one, containing the same mark, along with the goods or services to which the mark relates in accordance with the Nice Classification. Furthermore, it is obligatory to detail the designated Contracting States for protection. The application can be filed with the IP Office of Origin in any of the three official languages of the System, namely English, French, or Spanish, depending on the language prescribed by the IP Office of Origin. Upon filing, the Office of Origin will check and certify that the international application corresponds to the basic one and all the necessary documents are submitted, before sending it on to the WIPO.

Once the international application has been received by the WIPO, the IB will conduct the formal examination of the same for compliance with the requirements of the Madrid System, and payment of the corresponding fees. If any discrepancies or issues with the application are found, the IB will inform the applicant and the Office of Origin, and they must be remedied within 3 months of notification, as failure to do so will result in the application being considered abandoned.

If the international application is approved by the IB, the mark will be published in the WIPO Gazette of International Marks and recorded in the International Register.

Thereafter the WIPO proceeds to notify each Contracting Party designated in the application. The substantive examination of the mark is conducted in each individual designated territory in accordance with the respective national or regional legislation of that state. As such, each independent Office has the right to refuse the grant of a trademark registration in light of any grounds for objection, or oppositions filed, and this decision will not impact those made by the Offices of the other states designated in the application.

If the examining Office reaches a decision of provisional refusal, this decision should typically be communicated within the standard 12-month time limit set forth by the Agreement or Protocol. However, some Contracting States may declare an extension to the time limit of up to 18 months. Moreover, in some jurisdictions, refusals based upon an opposition to a trademark application may be communicated even after the expiry of the period of 18 months.

Should an applicant opt to contest a refusal, for example, by appealing the decision, or by responding to an opposition, these actions will be conducted directly between the applicant and the respective Office itself. Once a final decision has been made, the Office will then notify the IB via a final statement, either confirming total grant of trademark protection, partial grant, or total refusal.

If no grounds for refusal are found, the examining Office should send the decision to register the trademark in that jurisdiction to the IB within the relevant aforementioned time limit.

The decisions made by each examining Office will be recorded in the International Register and published in the WIPO Gazette.

Once granted, an international trademark is valid for an initial period of 10 years from the date of international registration, which is typically recorded as the date on which the international application was received by the Office of Origin, and has the same effect in each respective designated jurisdiction as it would had it been filed directly with that state. The mark may be renewed for a further consecutive 10 year period before its expiry directly with the WIPO in any or all of the Contracting States in which the mark is effective.

For the first 5 years after registration, the international trademark is dependent upon the initial basic mark and everything that happens with the basic mark reflects on the international one. Therefore, if the basic trademark becomes ineffective in some or all goods/services within this time, the international registration will cease to protect the same goods/services. After this period, the international mark is deemed as independent in it's own right.

Overall, the Madrid System simplifies the process of obtaining trademark protection within the parties privy to the system, whilst also streamlining the process for trademark maintenance in a centralised manner, making it an advantageous method of filing for multi-national trademark protection. If you have any questions, or are interested in filing via the Madrid System, please contact us.

International (Nice) classification of goods and services

As we know, trademarks are used and registered for the specific goods and/or services to which they relate. For the purpose of simplifying the procedure for the categorisation of goods/services indicated in trademark applications, the International Classification of Goods and Services for the Purposes of the Registration of Marks, otherwise known as the Nice Classification (NCL), was established in 1957 by the Nice Agreement.

As of the publication of the 1st NCL edition of 1963, it has been revised and published every 5 years. Since 2013, the Classification has been revised annually and is subsequently published on January 1st of each year to include any amendments, additions or deletions to classes. A whole new edition of the NCL is published every 5 years.

The editions of the Nice Classification are available online and comprise a full list of all classes in relation to the goods and services detailed therein, alongside the relevant explanatory notes, available on the WIPO website. At present, there are 34 available classes of goods, and 11 classes of services, for which a trademark can be registered.

The headings of the classes broadly denote the nature of the goods and services contained within the class, whilst the explanatory notes describe the types of products or services which can come under that class umbrella. There are 10,000 indications of goods in the alphabetical list of the Classification, and 1000 indications of services in the last edition of NCL.

The NCL is currently utilised by approximately 150 intellectual property offices across the globe, inclusive of the regional offices of the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Office for Intellectual Property (BOIP) and the European Union Intellectual Property Office (EUIPO).

Each member state of the Nice Agreement is obliged to include the relevant class numbers corresponding to the goods and services for which the mark is being registered on official documents and publications in relation to the trademark registration. Further, the NCL must be applied in these jurisdictions either as a principal classification, or as a subsidiary classification.

The Nice Classification is a useful tool which provides for a more simplified and efficient way of drafting applications which are to be filed in multiple countries, owing to the fact that the goods and services applicable to the trademark application will be classified in a uniform manner in all states which utilise the NCL. Furthermore, as the Classification can be accessed in multiple languages, it eliminates the need for translation when an applicant opts to file for goods or services differing from that of the office of origin of an application.

If you are interested in applying for a trademark, contact us.