A trademark is a distinctive symbol that identifies particular goods or services of a trader to the general public, for example: M for McDonalds and Siren device for Starbucks. The proprietor of the registered trademark will then have all the benefits, remedies and protection afforded by the Trade Mark Law in the respective country.
Filing a trademark can be easy but it could also bring a lot of inconvenience and hassle if your trademark do not fulfil the requirements. A registrable trademark shall contain at least one of the following particulars:-
- the name of an individual, company or firm represented in a special or particular manner;
- the signature of the applicant for registration or of some predecessor in his business;
- an invented word(s);
- a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or sur-name; or
- any other distinctive mark.
However, the Registrar may object your trademark even your trademark fulfilled the above requirements based on:-
- your mark is likely to deceive or cause confusion to the public;
- contains any scandalous or offensive matter;
- contains a matter which might be prejudicial to the interest or security of the nation;
- it is identical with or so nearly resembles a mark of another proprietor;
- it is well-known mark;
- contains a geographical indication.
Therefore, a professional and experienced Intellectual Property (IP) agent will assist you in avoid these kind of inconvenience and hassle by conducting a trademark search to check the availability of the trademark and also analyze the distinctiveness of your trademark.
Besides, a trademark that being objected doesn’t means that it cannot grant the registration. Some of the objection can be overcome by filling an appeal or even after attend the hearing. A knowledgeable IP agent would be able to prepare a written submission or skeletal submission with strong and valid point to counter back the objection grounds.
A trademark will also be advertising before complete the registration, to let any third party raise an opposition (if any). This is to ensure the right of a trademark owner will not be hijack by any third party. Once your trademark involves in an opposition proceeding, two parties will be involved (applicant and opponent) and could be a very lengthy and complicated process.
A trademark registration is everlasting so long as the registration is renewed before the expiry. The renewal periods vary by country, but generally, registration in most countries must be renewed every 10 years. However, in some countries, the renewal period may start from the application date or the registration date depending on its respective Trade Mark Law.
You are advisable to file the renewal request before the mark is expired. In the event if you have missed the due date, you still have grace period to file the request before the Registrar remove your mark from list but the grace period vary by country. Engaged an IP agent would ease your burden in remembering all the due date and an reminder notifications before your mark is about to expire.
A registered trademark is also assignable and transmissible with or without the goodwill of the business concerned. A very details Deed of Assignment can ensure the trademark assign to the new proprietor properly. However, trademark assignment is not necessary if your company is changing the name and filing an amendment is the right action.
If you encounter any other trademark issues other than the abovementioned, feel free to drop us a message and we will get back to you as soon as possible.