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The Importance of Trademark Pre-filing Search

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With the increase of law awareness, more and more people have realized the importance of brand protection and started to seek official authentication of the ownership of a branch by registering the brand with trademark registration authorities and obtaining official trademark registration certificate.

To obtain a trademark registration certificate, it usually needs to go through at least the below four procedures:

  1. Submit trademark registration application in a country or jurisdiction where you would like your mark to be protected;
  2. Trademark examiners/officers conduct formality and substantive examination to make judgment of the registrability of the mark;
  3. If no official rejection is raised, trademark shall be granted for initial registration and officially published for a certain period. Anyone can lodge an opposition to it if necessary;
  4. If no opposition is filed during the publication period, trademark shall be granted for final registration and Certificate of Registration shall be issued.

For different countries/jurisdictions, the time required for trademark registration greatly varies. On average, it takes at least one year.

Due to the long-time span, before submitting a trademark registration application to relevant competent trademark registration authorities, it is highly recommended to conduct a pre-filing search for the registrability of the mark. We hereby summarize the importance of trademark pre-filing search for potential trademark clients’ reference.

  1. Minimize the risks of rejection:
    Once notice of rejection is issued by trademark officers, the applicant shall either give up the registration or file appeal against the officers?decision. For newly-designed marks, most applicants will tend to give up because it is hard to win the appeal due to insufficient trademark use evidence.  For marks already putting into use and promotion, due to the high cost and long time span of appeal examination, some applicants also choose to give up. As a result, the registration cost is lost in vain.Once notice of rejection is issued by trademark examiners, the applicant shall either give up the registration or file appeal against the officers’ decision. For newly designed marks, most applicants will tend to give up because it is hard to overcome the appeal due to insufficient trademark use evidence.  For marks which are already put into use and promotion, due to the high cost and long-time span of appeal examination, some applicants also decide to give up. As a result, the registration cost is lost in vain.
    A well conducted pre-filing search can usually estimate the potential risks of rejection and help applicants make more reasonable decision whether to file registration application or not.

  2. Increase the chance of successful of overcoming the rejection:
    As for marks already putting into use and promotion, even if the pre-fling search shows certain risks of rejection, the clients may still prefer to file a trademark application due to their business development needs. The search could also help increase the chance of successful appeal by making preparations for possible appeal before rejection notice is given. For your information, the official appeal responding period is only 15 days after receipt of the rejection notice. It is usually hard to draft out powerful arguments within such limited time. As for marks which are already put into use and promotion, even if the pre-fling search shows certain risks of rejection, the clients may still prefer to file a trademark application due to their business development needs. However, you may collect the evidences of use and prepare the response to the rejection in advance. Or even you can contact the prior mark owner to obtain their letter of consent. For your information, there is only 15 days to request review of rejection after receipt of notice of rejection in China. It is usually hard to draft a powerful argument within such limited time.

  3. Save the design cost:
    As everyone knows, a well-designed brand will greatly help relevant products/services?promotion. Most clients tend to engage professional trademark design agency to design a satisfactory logo before getting it registered which is usually a big cost. If the mark is rejected, not only the registration fees but also the design fees are paid in vain. Therefore, as for a newly-created mark, to save design cost, it is advised to carry out trademark pre-filing search for key factors of the mark before giving the rough idea to mark design agency for perfection. As everyone knows, a well-designed trademark logo will greatly help relevant products/services promotion. Most clients tend to engage professional designer to design a satisfactory logo which is usually a big cost. But they do not consider the registrability of the brand name. If the mark is rejected, not only the registration fees but also the design fees are paid in vain. Therefore, as for a newly created mark, it is advised to conduct trademark pre-filing search for the brand name. Once confirm the registrability of the mark, you may first submit the application of the brand name (word mark application) and then proceed to the trademark design. Finally submit application for the well-designed trademark logo.

  4. Reduce the risks of infringement:
    Due to business development needs, some trademark applicants always tend to put the mark into use immediately after it is designed or registration application is filed. Accordingly, potential risks of infringement of other trademark registrants?right might incur. By conducting a trademark pre-filing search for the identical and similar marks, such risks could be greatly reduced. Due to business development needs, some trademark applicants always tend to put the mark into use immediately after it is designed or registration application is filed. Accordingly, potential risks of infringement of other trademark registrants’ right might incur. By conducting a trademark pre-filing search for the identical and similar marks, such risks could be greatly reduced.

To sum up, the benefits obtained by trademark pre-filing search are obvious. However, please note that trademark pre-filing search cannot guarantee 100% of registrability due to the incompleteness and update speed of trademark registration database maintained by competent trademark registration authorities, but it does reduce and minimize the risks of possible rejection, in particular, the search conducted by professional trademark agents, like Kaizen.

If you wish to obtain more information or assistance, please visit the official website of Kaizen CPA Limited at www.kaizencpa.com or contact us through the following and talk to our professionals:

Email: info@kaizencpa.com
Tel: +852 2341 1444
Mobile : +852 5616 4140, +86 152 1943 4614
WhatsApp/ Line/ WeChat: +852 5616 4140
Skype: kaizencpa

Download: The Importance of Trademark Pre-filing Search [PDF]

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