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Introduction to Trademarks


 


Trademark Registration


Updated, March 2016


1. Is registration of a trademark mandatory?

The answer depends upon where you intend to use your mark. In some countries, registration is mandatory to obtain rights in a mark. In other countries, use of a mark establishes protectable rights in the mark, even if it is not registered.


2. What are the advantages of registering a trademark?

Trademark registration affords several advantages, including the following:

  • Provides a visible deterrent and constructive notice to potential infringers (by use of the ® symbol or the TM symbol).

  • Permits citation of the trademark by the trademark office in decisions on applications to register potentially confusingly similar marks.

  • Allows the trademark owner to grant a valid license to another party to use the trademark.

A registered trademark will likely be disclosed in a search conducted by a third party for a similar mark, alerting that party to a potential conflict with the earlier registered trademark.

In some countries, registration is required in order to enforce rights in the mark against infringers.

Because the advantages vary from country to country, consult with qualified counsel or the local trademark authorities concerning each country in which use or registration of a trademark is desired.


3. Who can register a trademark?

In general, any individual, organization, or governmental or business entity using or proposing to use a trademark to identify his, her or its goods or services may be entitled to register the mark.


4. What are my options if I cannot afford a trademark attorney and wish to file a trademark application? 

Most trademark registries do not require trademark applicants to be represented by an attorney. There may be instances in which the issues are particularly complicated, to the extent that an applicant may wish to seek legal counsel, or they are required to. Companies and individuals wishing to file applications themselves should check the website of the trademark office of the country in which registration is sought to confirm that an application may be filed pro se.


5. Is it necessary to obtain separate trademark registrations for each of the goods or services on or in connection with which a particular trademark is used?

The answer depends upon how you are going to use the mark and in which country you are seeking registration. Goods and services are divided into 45 classes, 1 to 34 being goods and 35 to 45 being services. In some countries, it is possible to obtain one trademark registration covering all of the goods or services on or in connection with which a mark is used. In other countries, a separate registration is required for each class of goods or services that needs to be covered.


6. What are the fees for filing a trademark application?

Filing fees vary by country. The amount usually depends upon the number of classes covered by the application. Besides the initial filing fees, the applicant may incur additional fees before a certificate of registration is issued. If the applicant employs local counsel, it will be charged fees for preparing the application. Some countries also require the payment of publication and registration fees. Finally, in countries where use of a mark must be shown before an application will mature to a registration, there will be fees associated with the filing of affidavits of use if evidence of use was not submitted with the initial application.

See also:
 
Fees for International Registration Applications Under the Madrid Protocol Fact Sheet
Trademark Fees (United States) Fact Sheet
Trademark Fees (Global) Fact Sheet


7. How do I contact a trademark office?

Many trademark offices have a website through which they can be contacted by individuals. Some of these offices allow individuals to file trademark applications and make simple responses to office actions (i.e., letters requesting information or amendments to aspects of the application). Most of these offices can also be contacted by post or by telephone.


8. Must I conduct a search before filing for a trademark registration?

In most jurisdictions, a search is not required before filing an application to register a trademark; however, conducting a search is almost always advisable. Searching to ensure that the mark (or a similar one) is not already registered or in use by another for the same or a similar product or service can help avoid the investment of time, energy and money in adopting a mark that may have to be abandoned if a conflict is discovered later.

The first and most important step in all countries is to search trademark office records to determine the existence of prior applications and registrations, which have effect in that country, that might preclude your use and registration. In countries that recognize common-law rights, you must also try to determine whether your proposed mark has been used in the marketplace by conducting online searches and/or having a professional trademark research firm conduct a thorough search for you.

See also Trademark Searching Fact Sheet


9. Can the same mark be registered to different parties in the same country? 

Yes, this is possible in most countries as long as the marks are used in connection with goods and/or services that are easily distinguishable and there is no likelihood of consumer confusion in the marketplace. It is also important to note that in some jurisdictions earlier right holders who enjoy a reputation in their marks can prevent use and registration of a similar later filed mark on different goods and services in certain circumstances. If you are concerned by an earlier registration, we recommend seeking professional advice.


10. How long does a trademark registration last?

A trademark registration is perpetual as long as the registration is renewed periodically. Registration periods vary by country, but in most countries registrations must be renewed every 10 years. (One exception is Canada, with a registration period of 15 years.) Moreover, some countries provide for statutory renewal periods counting from the date of application; other countries count from the date of registration.  Some countries require use to be demonstrated upon renewal, or during certain specified periods in order to maintain a registration.  Without such use, it may not be possible to renew.  Conversely, other countries do not require use to be demonstrated upon renewal.

See also Maintenance and Renewal Fact Sheet


11. Can I protect my mark if it is not registered?

Many countries, including the United States and Canada, provide some common-law rights for unregistered trademarks, ultimately allowing the first user of a trademark to claim enforceable exclusive rights. If you plan to rely on this type of protection, it would be wise to contact a trademark professional for specific advice and strategy planning.


12. Can a trademark be reserved? 

Generally, yes, but only for a few years. In many countries, including the United States, a trademark application can temporarily reserve the mark for a party having a bona fide intent to use the mark.

In several countries, a registration can be obtained before the mark is used in that country.  In others, there is no requirement for there to be an intention to use the mark.  However, if a mark is generally not used within its first 5 year period (shorter in some jurisdictions) then a third party can apply to cancel the mark for non use.


13. What can I do if I think someone is infringing on my trademark rights?

There are a number of ways to dispute the use of your trademark by a third party, including sending a cease and desist letter to said third party and filing suit against that party. An administrative procedure might also be available where the third party has registered and is using a domain name that is confusingly similar to your trademark.We would recommend seeking assistance from a professional if you feel that your rights are being infringed, and they can provide advice as to how to proceed.


Additional INTA Resources



Country Guides: Essential Information on Trademark Protection Worldwide

Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions.
INTA Membership required.

Country Portal

Links to national and regional trademark offices, including searching and filing tools and fees.
INTA Membership required.

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