INTA Adopts New Guidelines for Trademark Examination

During the 2023 Leadership Meeting in Houston, Texas, last November, INTA’s Board of Directors adopted and approved a revision of the Association’s Guidelines for Trademark Examination.

Prepared by the Trademark Office Practices Committee (TOPC), the Guidelines provide trademark offices with a minimum set of standards for the examination of trademark applications and serve as a baseline by which INTA and its advocacy committees can provide analysis, advice, comments, recommendations, and training on the trademark application examination procedures of national and jurisdictional trademark offices. A useful tool for INTA’s efforts to harmonize trademark examination standards globally, the Guidelines also provide a roadmap for any jurisdiction implementing trademark application examination procedures for the first time, as well as any jurisdiction considering amendments to its trademark application examination procedures.

The Guidelines were last updated in 2007. In light of the changes in the trademark laws of many jurisdictions since that time, as well as technological advancements and the development and expansion of INTA’s position on many relevant issues, the TOPC recommended the establishment of an Examination Guidelines Subcommittee in 2022 to revise and update the Guidelines. During the 2022–2023 Committee Term, this Subcommittee revised the Guidelines to reflect, among other things, the Association’s Model Trademark Act adopted in 2019, as well as its current and updated positions with respect to the protection and enforcement of trademarks as evidenced by INTA Board Resolutions adopted since 2007 and various amicus briefs filed since 2007. The Examination Guidelines Subcommittee also reviewed the related work of a TOPC task force prepared during the 2014–2015 Committee Term and sought input from all relevant INTA committees, including Enforcement, Famous and Well-Known Marks, Geographic Indications, International Amicus, Legislation and Regulation, and Non-Traditional Marks. The Subcommittee also received input from the European Union Intellectual Property Office and the United States Patent and Trademark Office.

The Examination Guidelines Subcommittee incorporated a “best practices” approach to analyzing the provisions of the 2007 version of the Guidelines and for making recommendations for revision. As part of that analysis, references to and preferences for the current practice of specific trademark offices were eliminated and, in particular, the prior focus of the Guidelines on U.S. practice was substantially reduced. The Guidelines were also revised to reflect current technological practices and capabilities.

The Examination Guidelines Subcommittee was comprised of TOPC members from the following 18 jurisdictions: Argentina, Australia, Austria, Brazil, Canada, China, El Salvador, Germany, India, Italy, Kenya, Nigeria, Singapore, Switzerland, Türkiye, the United Kingdom, Ukraine, and the United States.

The updated version of the Guidelines can be accessed here.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2024 International Trademark Association