Filing a trade mark application is simply a matter of logging onto the Companies and Intellectual Property Commission’s (CIPC) website and following the online application process to fill in the Form TM1.  So why can a proprietor not apply for his/her own trade marks without the need to pay the fees of trade mark lawyer?

Trade mark applications go through a process called prosecution. During prosecution, the trade mark application is examined to determine if it does not conflict with any previously filed marks on the trade mark register. Additionally, a proposed trade mark cannot consist exclusively of forbidden elements such as geographic indications, names of people, laudatory terms (e.g. best, excellent, fantastic) and words or phrases that are purely descriptive in nature or that are reasonably required for use in the particular trade in respect of which an applicant intends using the mark.

During the prosecution stage, the trade mark examiner will let the applicant know whether or not the mark is acceptable with or without certain restrictions or requests. This step can become technical and for an applicant not versed in trade mark law, quite daunting.  It has happened that trade mark applications remain pending for years after the initial application, simply because the applicant does not know how to respond to an examiner’s requirements.

Before filing a trade mark application, the trade mark lawyer can also conduct a comprehensive trade mark availability (for use) and registrability search to determine whether there are any marks similar to the one intended for registration on the Trade Marks Register. This will save the applicant wasted costs if the trade mark is refused based on a conflict on the register and, in some cases, it provides the trade mark lawyer with a strategy for handling the trade mark prosecution in order to have the application accepted and finally, registered.

Trade marks must also be classified according to the NICE International Trade Mark Classification, because the applicant’s protection is limited to the particular class(es) of goods or services he/she files in. This means that any class in which the application is not filed is unprotected and third parties may use the mark freely in respect of their goods or services in those unprotected classes. It is therefore important to ensure that the application is filed in all the relevant classes. The classes relevant to the applicant’s goods or services may not always be clear to the applicant, thus the lawyer will advise on which classes should be considered for protection.

The power of a trade mark in the commercial space should not be underestimated and similarly an application which was not properly prosecuted may leave the applicant without any enforceable rights.  Appointing a trade mark lawyer to manage an applicant’s trade mark applications greatly increases the chances that a trade mark is eventually registered, by guiding the applicant through the process from selecting a mark with a good probability of success, debating the prosecution process with the examiner, and timeously complying with the registration and grant formalities.  Trade marks are renewable every 10 years and the trade mark lawyer can also assist in reminding the applicant of an approaching renewal deadline by diarizing the renewal dates.

Please contact us if you need assistance with your trade mark applications.

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