As with other industrial property rights, a formal procedure is required for trademark protection. An application to register a trademark should be filed with the competent national office, usually the same office that handles patent registration.
Registration entails completing an application form and attaching a copy of the trademark. If filing an application in a country which is not that of the inventor then an address in that country must be given or that of someone holding power of attorney for the applicant. Other formalities are often required such as the payment of a fee or authentication by a public notary. Finally, the applicant should list the goods or services for which the sign is to be registered.
The application is then examined by the appropriate office. Although regulations may differ from one country to another in general trademarks are checked to ensure that they are distinctive, not deceptive and not immoral, etc.
During this process third parties are given the opportunity to contest the trademark’s registration through the 'opposition procedure'. Should the relevent office refuse to register the trademark, the applicant should be given the right to make observations and then appeal.
If the office agrees to grant the trademark a certificate is issued to the owner stating that the exclusive rights exist from the date of registration.
It is important that the owner and third parties are able to find up-to-date information. Therefore, once the registration becomes valid, data regarding the owner and the mark should be published in an official gazette.
A trademark can be removed from the register for a number of reasons including failure to renew the right, failure to use, loss of its distinctiveness or by request of the owner. This could have serious consequences for the owner as it leads to a loss of their rights.
Trademarks are protected within the territory of the state in which in was registered. It is possible to extend the protection internationally through a number of international or regional conventions.
Filing a trademark
- identify the mark’s owner
- provide a representation of the mark
- list the goods and services to which it will apply
- indicate the classes including goods and services
- give a brief description of the mark (and colours if applicable)
- list the countries
Examination of application by the administrative authority
- national and international screening
- examination of basic and formal requirements by the Patent Office
Classification of goods and services
Trademarks are registered in different classes, depending on the goods and services to be sold or associated with them. The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, signed in 1957 and last amended in 1979, contains 45 international trademark classes.
The list of classes gives explanatory notes where necessary, as well as a list of goods and services with an indication of the class into which each falls. The class should be chosen carefully as the registration confers a monopoly right on the owner to use the mark in the classes in which it is registered.