Prosecution of trademark applications

In this 70th installment we outline the steps and procedures involved in the filing and prosecution of a trademark application.

Intellectual Property Perspectives by Richard Pasipanodya

Registry of trademarks
Section 3 of our Trademarks Act creates and establishes the Trade Marks Office. The office is headed by the Controller who is alternatively known in most jurisdictions as the Registrar.

In essence the registrar is the personification or agent of the state in the prosecution, registration and maintenance of the trade marks. In pursuance of his /her mandate the registrar is obliged to maintain a trademarks register which shall be open to public inspection.

It is a must that the register be maintained and consistently updated to reflect the following crucial particulars, among other things;

Applications for the registration of trademarks chronologically entered according to filing dates;

Registrations of trademarks with details such as names and addresses for service of the proprietors and registered users, if any. The dates of registration and renewals must also be reflected, including expiry dates;

Assignments, licences, hypothecations, attachments and other transmissions are also to be indicated.

Disclaimers and other conditions as may be deemed necessary by the registrar must be clearly stated,

Any other prescribed information as may be deemed necessary by the Registrar, such as priority claims.etc.

Filing and prosecuting
This entails being aware of key procedures to be undertaken, namely searches, formalities, specifications and class headings, examination, acceptance, advertisement, opposition and registration.

Searches: Therein lies the primary function of the trademark register. Searches are the preliminary function to be undertaken before lodging the application for registration. They are crucial in determining whether or not there are existing conflicting rights whether as pending applications or registrations. This daunting task is necessary to ensure that neither the Registrar nor other proprietors raise objections. This is because upon filing the Registrar also conduct their own examination of the mark as to its registrability.

Specification and classification: A trademark is not registered in a vacuum or as a blanket, but in relation to specified classes of goods or services. It is a very important aspect to be observed by the applicant or else the registrar undertakes the initiative him/herself.

It is to be emphasised here that correct classification is essential as it delineates the applicant’s rights in the sense that infringement occurs with respect to goods or services over which the mark is registered and not those falling outside the stated classes. In this pursuit all Paris Convention state parties use the NICE classification of goods and services falling in the 45 classes.

Examination
This is the purview of the Registrar. Once an application is lodged and all formalities met, the registrar then undertakes substantive examination as to the registrability of the mark.

This entails searching of the register to determine whether or not the trademark applied for is confusingly similar to an already registered mark or to that in a pending application (application awaiting finalisation of processes before registration).

Limitations: These are basically restrictions placed on the scope of use of the trademark upon its registration. The limitations may be on the mode of use or extent of territory.

Examples include where a trademark is registered without limitation as to colour. Such are deemed to be registered in all colours without limitation. However, in practice some trademarks achieve their distinguishing capacity based on limited colour claims.

Disclaimers: these relate to marks made up of certain elements which on their own would not be capable of distinguishing except when used in combination.

A classical example is the use of descriptive words which on their own would be refused registration absolutely. To be noted, however, is that these non-distinguishing features still form part of the composite mark regardless of their disclaimer.Disclaimers generally take the following phraseology “registration of this mark shall give no right to the exclusive use of the word or the phrase…….separately and apart from this mark.” This phrase implies that if any other person therefore uses the disclaimed elements they would not be infringing.

Advertisement
Upon acceptance of the trademark application the next step is to advertise or publicize so that members of the public may have an opportunity to scrutinize and oppose its registration if they feel aggrieved. The publication may be done at the instance of the applicant or the Registrar and open to the public for a stipulated period of time.

Opposition
Opposition to the registration of a mark may be made by any interested third party on any grounds upon which a trademark may be refused registration. Here we are talking of both absolute grounds of refusal focused on inherent registrability and relative grounds of refusal based on conflict of interest.

Registration
Registration of the mark is the final stage in the filing and prosecution of the trademark application. Once the application has survived opposition then the Registrar must proceed to register the trademark without much ado. This entails the issuance of a certificate of registration by the Registrar to the applicant.

The date of registration would be the date upon which the application was lodged with the registry.

Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775 053 007 or e-mail: henripasi@gmail.com

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