Foreign trade mark registrations lead into the exploration of varied regional trade mark laws. Once considered are dependency, permissible types of marks and classes, other aspects of the application can be deliberated such as examination and appeal, publication processes, and use requirements.

 

Examination & Appeal

 

A national Trademark Office will examine an application for formalities, by checking an applicant’s details, the representation of the mark, specification of the goods and/or service, and correct payment of fees. Depending on the country, the examination can then extend further to looking at the nature of the mark in determining whether it is sufficiently distinctive and in line with public policies. This is known as an examination on absolute grounds and most Trademark Offices tend to carry them out.

The examination stage can also involve a search into already registered marks, also known as a search into prior art and an examination on relative grounds. The outcome of the latter will be the examiner listing in his report any identical or similar marks as citations. Such citations can be waived by the examiner given that the applicant provides a good argument for doing so.

Citations can also be dealt with by way of obtaining a letter of consent from the owner of the earlier mark, requesting an assignment or filing proceedings for, partial or full, cancellation of the earlier mark. Cancellation proceedings are commonly used if the earlier mark appears vulnerable on grounds of non-use.

Examination on relative grounds is practiced in, for example, Australia, Japan and Ireland, but not in France, Germany or the UK.

If objections from the examination cannot be overcome, most countries will provide the option to appeal the refusal for registration. Local agents should advise on the route to take and weather the costs involved will be worthwhile the appeal.

 

Publication & Registration

 

Following examination and prior to registration, not all, but most countries issue an opposition procedure by publishing the details of the application for a period of time during which others can oppose the registration. Some jurisdictions impose publication fees at this stage.

If the opposition period has passed and no objections were received, the national trade mark office is expected to issue a Certificate of Registration. Yet some jurisdictions may do so only upon request and/or for a fee. The renewal date of the registration will vary from country to country, with a standard expectation of 10 years from registration date. Countries like Canada, Lebanon and Venezuela practice a 15-year term for renewal.

 

‘Use’ requirement

 

A trade mark registration becomes vulnerable to cancelation due to lack of commercial use. Cancellation does not take place automatically but is activated upon the request of a third party. Having said that, if a trade mark is neglected and renewal deadlines are missed, it will expire automatically. Most countries therefore provide a maximum number of years for non-use of the mark, usually from 3 to 5 years.

 

Closing Thoughts

 

While some territories lead the development of a harmonised global system for trade mark registration and maintenance, others, weather due to economic, political or cultural reasons, diverge from or have delayed implementation. Even so, the increase of intergovernmental jurisdictions, like Benelux and OAPI (the African Intellectual Property Organisation), provide the stepping stones that smaller territories need in order to be at the forefront of trade mark development. For example, regions like Thailand, have seen a notable increase in commercial businesses and alongside it an increase of trade mark registrations. Their laws have subsequently gradually started to develop, with the country becoming an active member of the Madrid System from 7 November 2017.