Some trademarks cannot be registered on absolute grounds. It’s important that your trademark does not fall in any of the categories below in order to be registrable:
- your trademark does not function as a trademark, i.e. as a source indicator
- your trademark clearly descriptive of goods or services
- your trademark is generic and is merely the name of a product or service
- your trademark is not distinctive, i.e. is not capable of distinguishing your products or services from products or services of other traders
Make sure you watch our video how to select a great trademark.
Trademarks Office in the EU and the UK will not refuse your trademark if there is a prior filed or previously registered similar trademark.
Instead the Trademarks Office in the EU and the UK only looks at absolute grounds (i.e. if the mark is deception or descriptive, it may be refused).
However, if there is a similar trademark, it will not be refused by the Trademarks Office. Instead, owners of similar trademarks may oppose during the 3-month opposition window in the EU and during the 2 month opposition period in the UK.
One of the main reasons one may file an opposition is confusion with an earlier trademark. Opposition proceedings offer an owner of an earlier trademark the right to oppose the registration of a trademark that could endanger his/her business.
By monitoring the EU Intellectual Property Office database or the UK Intellectual Property Database, you will ensure that you will timely see newly filed EU / UK trademarks and will be in a position to oppose in time. Ask us about the monitoring service.
In the European Union, cooling off period is set by the Trademarks Office once the opposition has been received and assuming it is admissible.
The purpose of the cooling off period is to allow parties to negotiation a settlement agreement.
An initial cooling off period is 2 months, but can be requested to a maximum of 24 months.
When the cooling-off period has expired and if no agreement has been reached by the parties, the litigation part of the proceedings begins. Most oppositions are settled as it’s cheaper than to proceed with a full-blown opposition.
The opposition procedure can only be started by a party who is the owner or licensee of an earlier trademark. An opposition can be filed against a trademark filed in the EU Intellectual Property Office, or against an international application designating the EU.
Trademark applications can be filed in any EU official language.
A second language, different from the first language, can be chosen from the following: English, French, Spanish, German or Italian.
No use is required for filing or registration in Australia, so long as you have an intention to use the trademark in Australia in the near future. There are no filing bases in Australia just like in the UK and EU.
Trademarks must be used in Australia within 3 years of the date of registration. A trademark that is unused for 3 years or more can be removed from the register.
In the EU, no use is required in order to file an application. Just like in the UK, you don’t need to specify any dates of first use or to indicate if the mark is in use. No use is required to obtain a trademark registration.
To maintain your trademark, it must be put to “genuine use in the European Community” within 5 years of registration. If the trademark has not been used, without a very good reason, for five years or more, then the registration may be cancelled. Furthermore, Community trademarks that do not meet the new standard for “genuine use in the Community” may be converted to national trademarks of a Member State if they meet the requirements for that Member State.
In the United Kingdom, no use is required in order to file an application. In fact, you don’t even need to specify any use dates. No use is required in order to obtain a trademark registration.
To maintain your trademark, it must be put to use in the UK within 5 years of registration. If the trademark has not been used and there is no good reason to justify non-use, for five years or more, then the registration may be cancelled.
In the US, use is not required prior to filing. However, a trademark must be put to use prior to registration unless a foreign applicant relies on a foreign registration as the filing basis. To register a trademark one must file a Statement of Use together with specimens of use.
Use is mandatory after registration. In fact, a mandatory Affidavit of Use must be filed between the 5th and the 6th year after registration. If no affidavit is filed, the trademark is cancelled automatically.
In addition, trademarks that are not in use after registration may be cancelled by filing a petition to cancel.
In Canada, use is no longer required for filing or registration. In fact, filing bases have been completely eliminated. No specimens of use or statements of use are necessary.
Use is mandatory to maintain your trademark after registration. It is possible to cancel a trademark for non-use if the trademark has not been in use for 3 years after registration and there has been no good reason to justify non-use.
