In the event that use of the mark is commenced without a proper search, the user of the mark may possibly be infringing someone else’s rights to a prior identical or similar mark. This opens up the possibility of such a third party asserting trade mark rights against the infringer by sending a cease-and-desist letter to discontinue the usage of the infringing trade mark, or even by filing a trade mark infringement lawsuit.
A proper trade mark clearance search conducted by an IP professional would help brand owners to avoid potential registration obstacles and legal issues before they arise, thereby sparing them the agony of expending time, money and resources on the costly re-branding of their marks
So, which class should I file my trade mark application in? A good starting point is to ask yourself what goods and/or services your trade mark is intended to cover. Thereafter, you may consider looking at the applicable edition of the Nice Classification of Goods and Services. The Class Headings of the Nice Classification should provide you with a general idea of which class(es) are relevant to your trade mark application.
In the event you are still unable to find the answer you are looking for; an alternative is to conduct a trade mark search of a competitor’s (potential or otherwise) mark(s) to get some ideas about which class might be best suited for your application. Of course, the most efficient and convenient way to cover all bases in your application would be to engage a trade mark specialist.
The TM symbol stands for “Trade Mark” and does not mean that a trade mark is registered. It merely is a symbol to notify the public that the mark is being used as a trade mark.
(ii) Examination: The application will be reviewed by the Intellectual Property Office to ensure that it meets the formality requirement. Following that, the Registry will conduct a formal search for conflicting marks, geographical names, and compliance with the international classification of goods and services. The application will be examined to determine if the mark is registrable in accordance with the local trade mark laws. If there are any issues with your trade mark application, the Intellectual Property Office will send you an official notification. The issues must be resolved before your application can proceed to the publication stage.
(iii) Publication: If your application is accepted, it will be published in the Trade Marks Journal for public inspection for a specific time period prescribed by the trade mark rules/regulations of the country concerned (e.g., two months, in the case Singapore, Malaysia and Indonesia). During this time, any interested party may oppose to the registration of your mark. If there is no opposition, your application will proceed to registration.
(iv) Registration: A certificate of registration will be issued to you by the Intellectual Property Office.
Second, trade mark registration grants the owner exclusive rights and legal protection. As a result, registering your trade mark not only prevents others from stealing your brand, but it also prevents you from unintentionally infringing on the brand of your competitor, which could result in costly court cases and settlements.
Third, trade mark registration will make your brand’s digital marketing much more effective. Once you have obtained legal ownership of your trade mark, digital marketing becomes much easier because no one else can use your registered brand name on online platforms such as e-commerce sites or social media.
As the business grows and expands, successful trade mark registration in the country of your primary business operations will facilitate trade mark registration in other countries of interest. Furthermore, trade mark registration adds value to your business if you are considering franchising, licensing, or exiting your business at some point. Finally, trade mark registration provides inexpensive lifelong protection for your business branding. Once a trade mark is successfully registered, it is generally perpetually valid as long as it is renewed (in most countries, this needs to be done every ten years). A trade mark is an asset that increases the value of your company and brand over time and should not be overlooked.
To demonstrate the rights to unregistered trade marks, on the other hand, businesses/trade mark owners generally must show that their use has resulted in the mark becoming sufficiently recognised; or, as we say in the trade mark world, “goodwill.” This requires businesses providing ample evidence to show that its mark has established goodwill in the marketplace, including, but not limited to, proof of longevity of use, the level of sales and advertising, the geographic scope of use, and recognition of the trade mark by the general public. As to whether there is sufficient goodwill, it is a question of fact that is dependent on both the quantity and quality of evidence that can be presented by the business owners.
When compared to a registered trade mark, which enjoys some presumption of rights in the first instance, the burden of proof in a common law action for passing-off is unquestionably higher. For example, a registered mark owner can successfully prove its trade mark right by submitting a certificate, whereas an unregistered mark owner must present abundant evidence to demonstrate that its mark is, in fact, a trade mark. As a result, trade mark registration is always highly recommended.
The patent agent may also begin the process of identifying patentable aspects of your invention. As most inventions are improvements to existing products and processes, the patentable aspects of your invention tend to lie in technical differences between your invention and closest known solutions, particularly, technical differences that confer a non-obvious technical benefit. It is therefore recommended that at least one person who is familiar with the technical aspects of the invention be present. More information on the requirements for patentability can be found here.
To expedite the process, a technical write-up along with drawings can be provided prior to the meeting. This write-up should describe not only the benefits of your invention but also how the invention can be differentiated from known solutions from a functional perspective and in doing so confers an unexpected technical benefit over known solutions.
While cursory patentability searches are conducted organically as part of the patenting process, you may wish to consider performing a separate patentability search where more time and effort is spent in uncovering relevant prior documents. A separate patentability search will however increase the cost of the patenting process and should be carefully weighed against the benefits. In certain situations, a separate patent search may be recommended by your patent agent where for example the invention is particularly complex and exists in a crowded space where many similar solutions are already known. More information on the requirements for patentability can be found here.
The Freedom to Operate analysis begins with a search to uncover existing patents or pending patents that are similar to your product/process in question. Should similar patents be found, a more detailed analysis of the relevant patents can be performed to determine the likelihood your product or process is infringing or is likely to infringe the patent(s) in question.
While a freedom-to-operate search cannot guarantee non-infringement, it can greatly reduce the risks and should be considered at an early stage before substantive plans to enter a new market are made.
Accordingly, an invention must be kept secret before a patent is filed. This unfortunately is easier said and done in view of the commercial realities of running a business as there is often a need to communicate with 3rd parties such as external collaborators and investors.
If you must disclose your invention to a third party, it would preferable to limit the disclosure to what your invention can do rather than how it achieves its intended effect. In such instances where the significant disclosure of secrets is unavoidable, a non-disclosure agreement (NDA) can be signed to preserve the novelty of a patent filed despite the disclosure. A simpler way of determining if an NDA would be needed would be to ask yourself the following question: would the disclosure I am about to make allow my competitor to reproduce your invention without undue burden. If the answer is yes, it would be prudent to sign an NDA. Further information on pre-filing confidentiality can be found here.
The benefit of claiming priority is it allows the later applications that claim priority to be treated as having been filed on the date of the earliest application for the purposes of determining novelty and inventive step. The aforementioned are patentability requirements that must be met before a patent is granted. Since prior art can only be considered for the novelty and inventive step assessment if was made available to the public before the first patent application was filed, an earlier filing date afforded by a priority claim is highly desirable. Should you require more time to file subsequent applications, you may wish to consider filing a PCT application which allows subsequent filings to be filed 30-months from the filing date of the earliest application.
Therefore, if you do not wish to reveal confidential aspects of your invention to the public, you may choose to protect your invention as confidential information or a trade secret. This is only viable if you can maintain the secrecy of your invention while commercially exploiting it. For example, if your invention is a unique configuration for a motor which is readily discernible by visually inspection you probably want to opt for patent protection as your competitors can acquire the motor and reverse engineer it and sell their own versions of the motor. Without patent protection, you will not be able to refrain them from selling a similar motor since the act of selling your motor puts the unique configuration in the public domain which prevents it from being protected as trade secret.
For example, pharmaceutical company A has a first patent for a new compound and its use in treating heart conditions. Subsequently, one of their competitors, pharmaceutical company B obtains a patent for the same compound’s use in treating diabetes. Since the first patent relates to the compound itself, working the second patent even if it is strictly used in relation to treating diabetes would always infringe the first patent despite being within the scope of the second patent.
In other words, even if pharmaceutical company B were selling the compound for use in treating only diabetes which is protected by their own patent, it would still infringe pharmaceutical company A’s patent which protects the compound itself.