Trademark FAQs

Trademark FAQs

Everything you really need to know about iGERENT's Services

Priority is a right given and recognized by the great majority of countries around the world. It is granted to the applicant of a trademark that has been filed for the very first time worldwide and consists of a 6-month period from the date of first filing during which they are able to file trademark applications in any other country. These subsequent applications will be considered as having been filed on the date of the first application (if priority is claimed).

For example:

If you file a trademark for the first time in the United Kingdom on the 1st of January of year XXXX, and then apply for a trademark 4 ½ months later in Germany, you will have two options:

Option 1 - NOT Claiming Priority: The application for the German trademark will then be considered as having been filed on the actual date of filing (15th of May of year XXXX).

Option 2 - (YES) Claiming Priority: The application for the German trademark will be considered as having been filed on the same day as the UK trademark was filed. That is to say, although the trademark was actually filed on the 15th of May of year XXXX, it will be examined as if it had been 4 ½ months before, on  the 1st of January of year XXXX, that is, the UK trademark's filing date.

 

Most countries have a first-come, first-serve system of registration. That means that the person or company who applies first is granted the rights to a trademark. Even in countries that have a first-to-use principle, the existence of a previously filed trademark would require the late applicant to demonstrate his rights over the trademark, having to incur heavy legal cost to do so.

Therefore, if you believe a third party or trademark squatter is trying to register a trademark that you are interested in and which you have already filed in another country, even though you may be late to apply or register in one or more countries, by claiming priority your trademark may be considered as having been presented first. Remember, similar or identical trademarks that have been filed before will be grounds for rejection by the trademark office.

For more information please consult our blog article about what priority is and whether you should claim it.

  1. Priority must be claimed using the first-ever filed trademark.
  2. Priority can only be claimed by the owner of the first filed trademark.
  3. Priority must be claimed at the moment of filing the subsequent applications before the term of 6 months ends, starting from the date on which the first trademark was filed.
  4. Priority can be claimed only for the class and goods or services that the first application was filed for.
  5. Priority can be claimed only to file an identical trademark.

Depending on the country, the costs and required documentation may vary. 

Whether or not a trademark should be submitted in color will depend on the jurisdiction where you apply for the trademark, and if you wish to claim color. In some countries, by submitting a trademark in color you will be automatically claiming the colors included in the logo, while in others an express declaration of claim over the colors will have to be filed in order to do so. 

We generally recommended not to claim color in a trademark application, so that the owner can use the trademark in any combination of colors they see fit. However, if the color or colors included in the trademark are the central, predominant and recognizable feature (more so than the design itself), claiming color may be advisable.

 

Example of jurisdictions with color claim:

OAPI (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast (Côte d'Ivoire), Mali, Mauritania, Niger, Senegal and Togo). In OAPI, when a trademark is filed in color, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Canada - When a trademark is filed in color before the Canadian Intellectual Property Office (CIPO), the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

China - When a trademark is presented in color before the Chinese Intellectual Property Office, the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

Ecuador - In Ecuador, when a trademark is presented in color, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

European Union Trademark - When a trademark is filed for registration in the European Union, through the European Union Intellectual Property Office (EUIPO), the trademark will be registered and protected for the exact colors in which it has been presented. An option to “claim color” exists for priority purposes, but it does not affect the protection afforded to the trademark. If the trademark is filed in black and white, it will only be protected in black and white. However, this does not necessarily mean that you will be unable to take action against third parties that use your trademark design while only changing its color.

Philippines - When a trademark is filed in color before the Intellectual Property Office of the Philippines, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Switzerland - When a trademark is filed in color before the Swiss Federal Institute of Intellectual Property, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Taiwan - When a trademark is filed in color before the Intellectual Property Office of Taiwan, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

Thailand - When a trademark is filed in color before the Intellectual Property Office of Thailand, the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

Ukraine - When a trademark is filed in color before the Trademark Office of Ukraine, the color claim will not be automatic. The applicant will have to expressly declare they wish to claim the colors of the trademark.

United States - When filing a trademark in color in the United States through the United States Patent and Trademark Office (USPTO), the color claim will be automatic. This will limit the owner’s right to only using the trademark in this color. If the applicant does not wish to claim color, the trademark should be filed in black and white. 

Visit our blog to learn more about Colors in Trademarks.

In most countries, a trademark can be registered for goods and services that have not been used and may not actually be used in the future. However, if a trademark is not actually used for all or some of the products or services for which it was registered, after a couple of years (time span varies by country), third-parties may be entitled to present a motion to revoke a trademark for all or some of the goods or services for which it is not effectively being used.

On the other hand, some countries' trademark registration offices require the filing of declarations or evidence of real and effective use after some years of registration in order to maintain the trademark's validity. The countries that require the filing of either declaration or evidence of use are: Haiti, India (suggested), Mozambique, the Philippines, Puerto Rico and the United States of America. The requirements and time frames vary by country. 

Many trademarks include elements or words that by themselves could not be registered due to being generic, commonly-used words, descriptive, or indicative in relation to the goods or services for which the trademark is being applied. 

For example, the trademark APPLE COMPUTER is registered for computer products. This trademark is made up of two words or elements, APPLE and COMPUTER. The trademark may be eligible for registration when analyzed as a whole; however it would not be logical for the owner of this trademark to be given the exclusive right to use COMPUTER when referring to these products. Therefore, although the owner of the trademark will have the exclusive use of APPLE COMPUTER, he would have to state that No claim is made to the exclusive right to use "computer" apart from the mark as shown. This means that he has the exclusive right to using COMPUTER when accompanied by the word APPLE, but recognizes that no exclusive right is granted in the use of COMPUTER per se. 

Not all countries allow for a trademark to be filed with a disclaimer. Some offices automatically disclaim certain elements, while others will only allow for a word or elements to be disclaimed once the trademark is initially objected or refused.

The following countries are but a few that require a disclaimer to be presented when a trademark includes generic commonly-used words: Australia, Belize, Canada, Costa Rica, Kazakhstan, Kuwait, Malaysia, Philippines, South Africa, Tanzania, Thailand, Trinidad and Tobago and the USA.

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