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Getting The Deal Through


Published: October 2019


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  • 1.

    Domestic law
    What is the primary legislation governing trademarks in your jurisdiction?

  • 2.

    International law
    Which international trademark agreements has your jurisdiction signed?

  • 3.

    Which government bodies regulate trademark law?

  • 4.

    Ownership of marks
    Who may apply for registration?

  • 5.

    Scope of trademark
    What may and may not be protected and registered as a trademark?

  • 6.

    Unregistered trademarks
    Can trademark rights be established without registration?

  • 7.

    Famous foreign trademarks
    Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

  • 8.

    The benefits of registration
    What are the benefits of registration?

  • 9.

    Filing procedure and documentation
    What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

  • 10.

    Registration time frame and cost
    How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

  • 11.

    Classification system
    What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

  • 12.

    Examination procedure
    What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

  • 13.

    Use of a trademark and registration
    Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

  • 14.

    What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

  • 15.

    Appealing a denied application
    Is there an appeal process if the application is denied?

  • 16.

    Third-party opposition
    Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

  • 17.

    Duration and maintenance of registration
    How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

  • 18.

    What is the procedure for surrendering a trademark registration?

  • 19.

    Related IP rights
    Can trademarks be protected under other IP rights (eg, copyright, designs)?

  • 20.

    Trademarks online and domain names
    What regime governs the protection of trademarks online and domain names?

  • 21.

    May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

  • 22.

    What can be assigned?

  • 23.

    Assignment documentation
    What documents are required for assignment and what form must they take? What procedures apply?

  • 24.

    Validity of assignment
    Must the assignment be recorded for purposes of its validity?

  • 25.

    Security interests
    Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

  • 26.

    Trademark enforcement proceedings
    What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

  • 27.

    Procedural format and timing
    What is the format of the infringement proceeding?

  • 28.

    Burden of proof
    What is the burden of proof to establish infringement or dilution?

  • 29.

    Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

  • 30.

    Border enforcement and foreign activities
    What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

  • 31.

    What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

  • 32.

    What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

  • 33.

    Limitation period
    What is the limitation period for filing an infringement action?

  • 34.

    Litigation costs
    What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

  • 35.

    What avenues of appeal are available?

  • 36.

    What defences are available to a charge of infringement or dilution, or any related action?

  • 37.

    What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

  • 38.

    Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

  • Updates and trends

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