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Trade Marks: the prosecution process (obtaining a trade mark registration) in brief

December 11, 2015

I’d like to briefly discuss the prosecution process from search to registration of a trade mark, so that clients know what they are in for when filing a trade mark application (often clients are unaware of the different stages of the process and how long they can take):

1. Whilst not required, I always recommend conducting a trade mark search prior to filing a trade mark application in order to assess the inherent registrability and availability of the proposed trade mark. This includes determining whether the mark itself complies with the registrability requirements, inherently and vis a vis third party rights.

2. If the search is clear or if a search is not conducted, the applications are filed in the relevant class/es. Each product or service is represented in a list of 45 classes of goods and services (Nice Classification). Depending on what business you run, the class and it’s specification is selected.

3. Next, is the examination process. Firstly the Trade marks Office conducts an examination as to formalities. This occurs early on. The applicant or his/her attorney receives confirmation from the Trade Marks Office that all is in order formally. Thereafter, the Trade marks office conducts a substantive search and examination as to registrability and availability. The result is an official action written and sent by the Registrar of Trade Marks to the Applicant or his attorney. The official action either states that the application is granted; granted with conditions; refused outright or provisionally refused. If the latter two occur and there is merit, arguments and representations may be made to the Registrar to overcome the refusal. To obtain an official action can take 12-18 months. Hopefully, the search would have picked up any potential bars to registration, allowing for a smoother acceptance process.

4. If the application is granted or the conditions met or the refusal overcome, the application must be advertised by the Applicant. This advertisement begins the 3-month opposition term, wherein the application may be opposed by interested persons (third parties). Opposition proceedings are costly and follow a very similar process and cost as a high court application.

5. If the opposition term passes without opposition by an interested person, the application is granted, which follows shortly after, with receipt of the certificate of registration.

In total, the entire process from application (2) until registration (5) can take 2-3 years (or more if there is contentious opposition).

I hope the above briefly explains the trade mark prosecution process. Just to let you know, trade marks may be renewed perpetually every ten years on the anniversary of the registration date, which is the application date. So the first renewal comes at about 7 years after obtaining grant and certificate of registration.

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