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Revision of Guidelines for Trademark Examination





October 11, 2007

Sponsoring Committee: Examination Subcommittee of the Trademark Office Practices Committee


Resolution

WHEREAS, the Board of Directors in 1998 adopted the Guidelines for Trademark Examination, which has served as an effective reference document for INTA to provide guidance to trademark offices and which has been presented to offices worldwide; and

WHEREAS, certain changes in global trademark practice and INTA’s policy have occurred in the nearly 10 years since the publication of the 1998 Guidelines for Trademark Examination; and

WHEREAS, the Examination Subcommittee of the Trademark Office Practices Committee has carefully examined and analyzed the changes in worldwide trademark practice and INTA’s policy to provide revisions to the 1998 Guidelines for Trademark Examination in order to create the Guidelines for Trademark Examination, Revised Edition, 2007;

BE IT RESOLVED, that the Board of Directors adopts the attached revision of the Guidelines for Trademark Examination, which hereby supersedes the 1998 edition.


Background

First adopted by the Board of Directors in 1998, the Examination Guidelines are one of INTA’s most important tools used in furthering the international development and harmonization of examination standards. The Guidelines have been provided to numerous governments and received by officials with appreciation from such countries as Argentina, Brazil, Chile, Paraguay, Uruguay, China, Singapore, Taiwan, Iran, Bulgaria, Hungary, Liechtenstein, Moldova, Norway, Romania, the United Kingdom, Viet Nam, and Yugoslavia. Over the years members of the Examination Subcommittee have made presentations in person to examiners in several trademark offices, thus affording INTA the opportunity to demonstrate its expertise in this area and to improve trademark examination.

Significant changes affecting registration practice has occurred in the decade since the Guidelines were first drafted. Recognizing that the existing Guidelines did not reflect many of these changes and important topics, at the beginning of the 2006 – 2007 Committee Term, the Examination Subcommittee undertook as its primary objective the updating and revision of the 1998 edition. The Subcommittee analyzed the original Guidelines, identified subject areas that required updating or addition, sought comments and input from members around the world to ensure that the revisions reflected a truly global approach to examination, and then obtained consensus on INTA policy from various committees whose subject matter touched on the material to be covered by the revised Guidelines. Of particular note are the greatly expanded treatment of registration of non-traditional marks, geographical terms, disclaimers, and opposition practice (please see the attached “red-lined” version to easily identify the revisions from the 1998 approved edition).

The revised Guidelines were reviewed and approved by the PDA Executive Council, which consists of the leadership of INTA’s policy development group. Accordingly, the Subcommittee unanimously recommends that the Board approve the above resolution adopting the 2007 Revised Edition of the Guidelines for Trademark Examination.