Does Name Quality Impact Trademark Registration Delays?

Nadaline Webster,

Whether your company has a domestic focus or a more international flavour, your brands are protected by the trademarks that drive your business. Obtaining that protection can vary wildly from region to region and you can find a breakdown of likely application timeframes across many countries in our Trademark Application Delays ebook here.

There are a large number of factors that will impact your application period length. Some of these will be beyond your control and are specific to the Intellectual Property Office to which you are applying such as the system used in that particular office and unexpectedly and frivolously opposed applications. Others that you can control include missing deadlines, unpaid fees, providing incomplete information….and the quality of the name candidate with which you choose to proceed.

There are two key parts to assessing the likely strength of your chosen name - whether it will be deemed acceptable by the Intellectual Property Office and whether another company will find your use of a particular name to constitute infringement and therefore oppose its registration.

Applications which are refused by the Intellectual Property Office (IPO) in the first instance are those which do not meet the requirements to be registered as a trademark, also known as ‘absolute grounds for refusal’. The criteria will vary from country to country although there are ones which are  common to many if not all countries. Amongst these is the requirement that a trademark should be distinctive for the goods and/or services for which registration is intended and serve as an identifier for the source of such goods or services. While decisions by the IPO can be disputed or appealed in some regions, failure to meet the required criteria often means a return to the drawing board.

On the other hand, applications which pass the first hurdle of the Intellectual Property Office may well still meet opposition from another business who objects to the current or proposed use of the mark. These are known as ‘relative grounds for refusal and probably provide the most fertile ground in relation to arguments and litigation. It is difficult, if not impossible, at any point in the process to completely eliminate the risks of opposition to your mark but there is a lot that you can do to reduce the risk dramatically.

Our detailed guide to the typical trademark application delays across multiple regions can help you create realistic expectations for your application in any particular area according to the system in use in that particular IPO but it remains critically important to recognise the role played by the quality of your chosen name and its distinctiveness. Typically, a considerable amount of time is put into a name before it is submitted for registration. A mark that doesn’t meet requirements at application will incur substantial delays in preparing a new candidate and trying again. In a similar way, the lack of a robust, effective and efficient clearance search leaves you vulnerable to preventable oppositions which even if eventually successful, will take much longer than average and incur far more expense.

Download the Trademark Application Processing Times eBook

Comments