The Complete Trademark Registration Process

What are the requirements for filing a trademark application?

The requirements may vary depending on the country, but here are the basics.

What information is required to file a trademark application?

In order to file a trademark, the following information is required:

• The denomination that is to be registered or an image of the trademark if it has figurative elements.
• The class(es) number(s) in which the trademark is to be filed.
• A description of goods or services that correspond to the class or classes in which the trademark is to be filed.
• The full details of the owner of the trademark: full name, company type if the owner is a company, and full address. Some countries require a copy of the certificate of incorporation, passport or identification of the owner.
• The full details of the local agent or attorney who is to represent the owner in trademark-related matters.

Depending on the country, a Power of Attorney (POA) may be required. Some countries do not require them, but a lot do. In case a Power of Attorney is needed, it must comply with different requirements depending on the nature of the owner and might need legalization and/or notarization depending on the country.

Is a Power of Attorney necessary?

Whether or not a Power of Attorney is necessary will depend on the country. With iGERENT, when a POA document is needed, you will receive a template with clear instructions on how it must be filled out along with instructions regarding notarization or legalization requirements, if relevant.

Please consider the following as examples of some of the different requirements that Power of Attorney documents must comply with in different countries:

Australia – No Power of Attorney is required for filing a trademark. South Korea – A simple scanned copy of a signed Power of Attorney is enough to apply for a trademark. China – A simple scanned copy of a signed Power of Attorney and a scanned copy of the owner’s passport or certificate of incorporation, depending on if the owner is a natural person or a legal entity, is enough to apply for a trademark. Indonesia – An original signed Power of Attorney must be sent by mail to our local agents. Costa Rica – An original signed and notarized Power of Attorney must be sent to our local agents. United Arab Emirates – An original signed, notarized and legalized Power of Attorney must be sent to our local agents.

In some cases, if both the country where the trademark is going to be registered and the country of origin of the applicant are members of the Apostille Convention, requirements in regards to notarization or legalization may be reduced.

How long will it take for my trademark to be registered?

Time frames vary country by country. A straightforward registration process, if a trademark application does not receive any objections or third party oppositions, can take as little as two weeks in Lebanon or as long as 2 years in Indonesia.

Is it possible to accelerate the registration process of a trademark?

In most countries, it is not possible to request the acceleration of a trademark registration process. Nevertheless, in some countries this option is available. It is important to note that the acceleration process involves the payment of additional fees.

Please be advised that in some countries and jurisdictions, like Germany and Benelux, in the case of an accelerated registration process, the trademark is registered and published after the formalities have been checked. Nevertheless, the mark could still be refused after the registration on absolute grounds or due to a successful opposition.

The main benefit of the acceleration process is that it allows a trademark to be registered in a very short time, which may provide economic advantages. In the following list you will find the countries where it is possible to request an accelerated registration process for a trademark:

Australia - Austria - Belarus - Benelux - European Union - Georgia - Germany - Italy - Kosovo - Lithuania - Norway - Serbia - Spain - Switzerland - Ukraine

What is a Priority Claim in a trademark application

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.

Why should I consider claiming priority when applying for a trademark in multiple countries?

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.

What are the requirements for claiming priority?

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.

If my trademark includes a logo, should I submit it in color or in black-and-white?

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.

Visit our blog to learn more about colors in trademarks.

Can I register a trademark for goods or services I do not actually plan to offer?

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. Some 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.

Disclaiming part of a trademark

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.