My trademark application is filed. Does it mean my trademark is registered?
The trademark registration process has several steps. Once the trademark application is filed at the trademark office, it will be processed by the examiner to check that it can be registered. There are various steps.
Firstly the office checks if trademark application contains the mandatory information. Such as: owner details, representation of the mark, list of goods and services, if the payment for the registration is made.
Secondly, the list of goods and services are reviewed and checked. The list must be correct and the goods should be in conformity with the general requirements. If your goods are not clear, they are not classified according to the Nice classification, the examiner issues a notification to correct the mistakes. It is always advisable to ask qualified patent attorney to prepare the list of goods and services.
Later, other formalities of the application are checked: if the application is signed, if any additional claims of priority are made, if all the relevant documents (for example, Power of Attorney) are submitted. Once the office detects an error, it sends an official communication to the applicant indicating an error. The applicant must reply and correct the error. If it is not done, the application is rejected.
The trademark is analysed to see whether it is distinctive but not descriptive.
A sign will be refused during the registration process if it is descriptive: has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for.
This is the case where the sign provides information about, among other things, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific.
Such signs as: ‘bank’ for financial services, 24/7 for services; ‘2000’, which refers to the size of the motor or ‘75’, which refers to the horse power (kW) of the motor – are descriptive and will not be allowed to register.
Publication of the application
If the trademark confirms all the requirements above, it is published in the official journal.
From the date of publication onwards, third parties who believe that a trademark should not be registered have three months to object. Most common ground of the opposition is the likelihood of confusion with the earlier registered trademarks.
Marks are always compared visually, aurally and conceptually. If the comparison is positive, there is a similarity between the signs. If the goods and services of both marks are also same or similar, there is a likelihood of confusion for the relevant consumer, and the registration of the later mark will be rejected.
Examples of marks that are identical or highly similar: IDRIVE and iDrive (case T-105/14); HERBO FARMA and HERBOFARM (case R 1752/2010-1); BABIDU and babilu (case T-66/11).
The trademark is registered and the registration is published if nobody files an opposition during the opposition term. Publication of the registration is done so that other trademark owners and the public in general are aware of the registered rights. The certificate of registration is issued once the registration process is over. Only when all the procedures are successfully ended, the trademark is fully registered.
Filling an application does not grant the full rights, differently from the registration process. The registered trademark gives you real protection and monopoly for the brand name. In most jurisdictions, however, when the application is filed, the applicant enjoys a temporary protection and most importantly – the priority of the application date. Priority date guarantees that nobody else could file and register the same trademark after the first application.