Trademark Examination and Administrative Remedy

 Trademark Examination and Administrative Remedy

 

 

Examination

A trademark application must undergo examination before the trademark can be registered. You cannot claim that the trademark is an exclusive right until after the publication date of the trademark registration. Applications are examined in their filing order. In general, it takes around two month following the filing date for an application to be assigned to an examiner. The actual time may vary, however, due to changes in the workload of examiners.

 

 

Formality examination

The examination of an application is carried out in accordance with the requirements stipulated in the Trademark Act and its Enforcement Rules. At this early stage, the examiner will begin a formality examination, making sure that the application contains the required information, the filing date has been obtain, and the fees have been paid. The application is also checked if it is made in the prescribed format and if the classification of goods and services has been indicated. In addition, the specification of goods or services is checked to ensure that it conforms to the International Classification of Goods and Services and is concrete, precise and acceptable.

 

Substance examination 

Following the formality examination, substantive examination aims determine whether the trademark is registrable in accordance with the law. The examiner will check if the trademark falls outside of the allowable scope prescribed by law, for instance, of the trademark that lacks any distinctiveness. The examiner will also check if the trademark consists of or contains a geographical name or if the trademark looks or sounds the same as or similar to any other trademarks that have already been registered or have just been applied by other applicants for the identical or similar goods or services. Results of the above examination work may form part of the grounds for a rejection decision against the application for a trademark registration.

The application for registration will be approved if it meets all the requirements. If not, the examiner will issue a letter (Intended Refusal) explaining all the grounds for such refusal or other requirements. If you receive an Intended Refusal, you must submit a response within one or two months following the issuance date of the Intended Refusal. The applicant may request an extension of time in which to respond. For further inquiries, the applicant may call the examiner to discuss the application and how to best proceed with the response. However, TIPO’s examiners can provide neither legal nor business advice. If necessary, the applicant may seek professional assistance in related fields. 

 

Registration 

If no refusals or additional requirements are identified, or if all identified issues have been resolved, the examiner will approve the trademark for registration and the applicant will be informed of the approval of the application for registration. Your trademark will be registered if you pay the registration fee in time. It is in your interest to pay as soon as possible for earlier publication of registration, certainly no later than two months following the date of the service of the disposition. After the registration fee is paid, TIPO will publish the registration in the Trademark Gazette, issue a registration certificate and record details of the registration in the Trademark Register.

 

Reinstating your trademark 

 In case of unintentional default in the payment of registration fee that should have been made within two months following the date of service of approval disposition, the applicant may reinstate the trademark within six months following the aforementioned payment deadline. The applicant will be charged two times the original registration fee for trademark reinstatement. It should be noted that, however, the reinstatement should not in any way affect a third party’s filing a registration application or obtaining registration approval during the aforementioned six-month period.

 

Enforcement against infringement 

The trademark owner should be able to take up the responsibility of protecting the registered trademark, policing and enforcing the rights throughout the life cycle of the registration. In practice, TIPO can prevent another pending application for a similar trademark used on related goods or in connection with related services from proceeding to registration based on the finding of a likelihood of confusion. However, the office will not engage in any separate policing or enforcement activities. TIPO does not monitor or police the marketplace. The trademark owner should be vigilant in identifying and/or prosecuting infringers. In case of unauthorized use of the trademark, the trademark owner should immediately seek legal advice on subsequent actions against such infringement.

 Infringement of the right to the use of a registered trademark

Infringement occurs when a registered trademark is used in the course of trade without the consent of the owner of the trademark. An infringement may occur through the use of:  an identical trademark on identical goods or services; or  an identical trademark on similar goods or services, or a similar trademark on identical/similar goods or services resulting in a likelihood of confusion among consumers. The use of a sign similar to a registered trademark which is well-known in the ROC on the goods or services not similar to this well-known registered trademark may also constitute an infringement if there exists a likelihood of dilution on the distinctiveness or reputation of the said well-known trademark.

Once the infringement of a registered trademark is confirmed, the own can enforce the rights prescribed in the Trademark Act by taking legal actions (e.g. seeking relief in the form of an injunction and requesting damages for the loss suffered) against the infringing party. When awarding damages, the court may also award on account of profits attributable to the infringement. Alternative remedies available to the owner of a registered trademark include statutory damages or the amount of royalty that may be collected under licensing.

 

 

Opposition
After the registration is published in the Trademark Gazette, there is a 3-month period in which any person believing that the trademark should not be registered may file an opposition against the registration. In general, the grounds of opposition include the registration being similar to a registered or pending trademark, contrary to public policy or to accepted principles of morality, misleading the public, and so forth. If your registration is opposed, it is your responsibility to defend it. The proprietor of the opposed trademark must respond to the opposition with a counter-statement. Both the proprietor and the opponent must provide evidence to support their views. Generally, the number of registered trademarks being opposed is very small. The opposition process can sometimes be lengthy and complex. If you are considering defending an opposition, you may wish to seek professional advice. TIPO will provide the grounds its decision based on the information and evidence presented by both parties.

  

Invalidation

The registration of a trademark may be declared invalid on the grounds that it is in breach of the requirements of a trademark registration as specified in the Trademarks Act, especially when it is in conflict with an earlier trademark. Generally, within 5 years after the date of registration, any interested parties may file an invalidation request with TIPO against your registration. Again it is your responsibility to defend for your own registration. In practice, the number of invalidation actions taken against registered trademarks is very small.

 

Use or revocation

The proprietor should properly and continuously use the registered trademark. In other words, the brand should be used to display the trademark in every possible medium (e.g. packaging, abels, websites, advertisements, press releases, trade shows, or business documents) during the course of trade. If a registered trademark has not been used consecutively for three years, there is a risk of the trademark registration being revoked. Any party expressing concern for suspicion of non-use may file a revocation request with TIPO against the inactive registered trademark. The person filing a revocation request is often a later trademark applicant who is being hindered by earlier registered trademark. Since owning a registered trademark entails the burden of proof on its use, the trademark owner should make sure that the trademark is used properly. “Genericide” occurs when a trademark previously used exclusively by one individual manufacturer for a certain product becomes a description of the product itself. If a registered trademark becomes known as the generic name for protected goods or services and ceases to be recognized as a trademark, a third party may be able to successfully revoke such registration. Another person may file a revocation request against a registered trademark if that trademark is altered or supplemented by its owner with additional note to become similar to another person’s registered trademark, or because the owner’s use of the trademark could mislead the public, particularly as to the nature, quality or place of origin of the goods or services actually applied. If the proprietor of such registered trademark does not defend in the revocation action, the registration will be revoked. It is the proprietor’s responsibility to provide counter-statement and evidence of trademark use in defense against the revocation action.