Everyone who has applied for trademark registration knows that under normal circumstances, a domestic trademark application must go through the process of “submitting an application—acceptance after formal review by the Trademark Office—substantive review by the Trademark Office—announcement of opposition period—approval of registration. "Certificate issuance" is a layer-by-layer test. So when it comes to international registration protection, do the trademark authorities in each country also follow this process model? What are the requirements for applying for international trademark registration? The author interprets this issue based on more than 10 years of practical experience in international trademark agency, so that everyone can understand the international registration model before applying for protection and make full use of the process regulations of each country to effectively protect their rights and interests.
In general, there are four common trademark international registration process models:
Type 1: Application-Examination-Announcement-Approval and Certification. The model is the same as the domestic large-scale process and is also the model adopted by most countries around the world.
Type 2: Application - Review - Approval and Issuance - Announcement. In order to shorten the registration time, some countries will directly approve the registration first and announce it if they believe that there is no violation of trademark laws and regulations after trademark review. Any objections will be dealt with later.
Type 3: Application - Announcement - Examination - Approval and Issuance. In order to save examination resources, some countries will directly announce the trademark after passing the formal examination. If there is no objection, the substantive process will be carried out. Review to decide whether to grant protection.
Type 4: Application - Announcement for protection. There are a small number of countries, often small countries, that do not have special trademark laws and directly adopt the announcement system. After application, they will be published in the officially designated local newspaper. An announcement shall be made on the website to declare ownership of trademark rights as evidence to confirm and protect rights.
Mode 1
The first mode is a relatively mainstream application registration mode, which is found in most Asian countries around China, the United States and Canada in North America, most countries in Africa, and Some countries in Europe adopt this process model. However, there are certain differences in specific operations compared with domestic ones, and the differences are mainly reflected in the review process. We all know that in China, two examinations are required: "formal examination" and "substantive examination", that is, the application form and the qualification of the documents must be examined, and whether it violates the prohibition and prohibition clauses and whether it lacks distinctiveness. and review whether it constitutes a conflict with prior rights. If any one aspect cannot be passed, the trademark cannot pass the preliminary examination and be announced. When registering international trademarks, some countries do not examine whether it constitutes a conflict with prior rights, that is, trademark The competent authorities will not reject subsequent trademark applications on the grounds of "previous identical or similar" trademarks. Common countries and organizations include: Germany, France, Benelux, the European Union, Spain, Denmark and many other countries. European countries, some African countries such as Lesotho, Morocco, Djibouti, and the African Intellectual Property Organization, and Caribbean countries such as Dominica, Belize, and St. Kitts and Nevis. Therefore, when applying in these countries, we must not only examine the agency's application agency capabilities, but also examine its ability to monitor subsequent applications and detect timely objections. Only in this way can we protect our trademark from being registered by others after registration. or similar trademarks.
Mode 2
The second model is mainly adopted by Asian countries and regions such as Japan, Mongolia, Taiwan, and Kazakhstan, and African countries such as the African Intellectual Property Organization, Kenya, and Ghana. countries, including Germany, Sweden, Norway, Finland and other European countries. In these countries, the trademark authority directly issues the registration certificate after passing the preliminary review. Therefore, even if you have obtained the registration certificate, you cannot take it lightly. You must also pay close attention to the subsequent announcement procedures. Only when no one raises an objection or the objection is not established after the announcement period ends , the trademark right is truly established. In these countries, if a trademark is revoked according to law after the announcement, the registered trademark will be deemed to be invalid, and the trademark authority will also publish relevant notices. Even if the applicant does not return the original trademark registration certificate to the official, in case of rights protection or infringement disputes , trademark rights cannot be claimed.
Mode 3
The third mode is mainly used by a considerable number of countries in South America such as Brazil, Argentina, Colombia, and Venezuela. When there is no objection or the objection is not established at the end of the announcement period, , will enter the substantive review stage, that is, review whether it violates the prohibition of registration and prohibition clauses, whether it lacks distinctiveness and whether it constitutes a conflict with prior rights. Only after the review is passed can the registration be approved.
Therefore, for countries that adopt this registration process model, the significance of announcement is limited compared with domestic registration, and sometimes being able to get announcement notice within a few weeks after application does not mean how strong the agent's professionalism and connections are. How hard it is, it is just a normal official review process; being announced does not mean that the probability of later registration of the trademark is very high, and the trademark can be put into use. Once it is finally rejected at the review stage, you will face the problem of using an unregistered trademark. Various risks.
Mode 4
The main countries that adopt the fourth mode are Asian countries such as Myanmar and the Maldives, and Oceanian countries such as Nauru, Palau, and the Marshall Islands. They are often small countries that are relatively backward and do not have a written trademark legal system. Trademark rights are announced and declared in the local newspapers and media officially designated by each country. If infringement or rights protection disputes are encountered during use, the newspaper announcement will be used as the basis. The relevant provisions of the civil law shall be used to determine whether there is an infringement. Two points need to be noted: First, the principle of first-come-first-served basis, whoever publicly declares trademark ownership first will have priority in obtaining trademark rights; second, the person must make an announcement in an officially designated newspaper and retain the original as the basis for claiming trademark rights. Taking Myanmar as an example, when applying, the applicant can choose whether to publish an announcement in the official newspaper to declare the trademark rights. If not, there is no need to pay the corresponding fee. Although it can save half of the fee, it may be infringed upon infringement or rights protection disputes. The inability to effectively assert one's prior trademark rights will affect the court's decision. At the same time, we can see that countries with a public notice system will not conduct "relative reasons" review, that is, they will not actively review whether there is a previous identical or similar trademark and reject it. Therefore, as long as the trademark itself has no obvious flaws, basically can get effective protection.
Summary
Based on understanding the aforementioned four single-country registration process models, the author also gives a brief introduction to the application conditions for international trademark registration. For domestic applicants, they can submit the application directly to the Trademark Office or submit the application to the Trademark Office through an agency. The International Office of the Trademark Office will conduct a formal examination and then transfer it to the International Bureau of the World Intellectual Property Organization. The International Bureau will issue an international registration certificate after the formal examination. The application will be forwarded to the trademark authorities of each country designated by the applicant for protection. The trademark authorities of each country will review the application in accordance with their own national laws and make a decision on whether to approve the protection. What are the international classifications for trademark registration? We can see that in addition to the relatively simple procedure of submitting applications through the Trademark Office and the International Bureau in the early stage, in fact, the later examination of each country is still conducted in accordance with its own national examination rules and procedures, rather than the International Bureau deciding whether to grant protection. Therefore, some people in the industry often say that the international registration certificate issued by the International Bureau is similar to the domestic acceptance notice and has no direct relationship with whether the trademark can ultimately be approved for protection in each country. At the same time, for Madrid international registration, another difference in the process is the announcement procedure. In some countries, the opposition period is calculated from the 1st of the month following the announcement by the International Bureau, and no announcement will be made after the review. This is similar to using the third mode to advance the announcement process; in some countries, after the announcement by the International Bureau, the An announcement will be made after the review, which is similar to the procedure of the first mode. Therefore, when filing an objection, the applicant must find out which mode the country is in, so as not to miss the objection period.
To sum up, although there are only these 5 process models for international registration, there are still many specialties in the details. For example, Vietnam does not have exact regulations on the objection period. You can file an objection; Russia, Ukraine, etc. do not have opposition procedures. Once a trademark is registered, you can only apply for invalidation; the announced opposition period in each country is different, ranging from 30 days, 2 months, 3 months, and 6 months. Moreover, the opposition period calculations are diverse, some are based on calendar days, some are based on working days, and some are based on religious calendars. All of these require agents to be familiar with them to ensure that the applicant's rights can be continuously protected.
The above is the entire content of the application for international trademark registration conditions. I hope it will be helpful to you. How much does it cost to register a trademark in Madrid? International trademark categories, trademark registration conditions, international trademark registration