1. Trademark Registration in SINGAPORE :
To apply for trademark registration in Singapore the applicant must fill out the form TM-4 online on the IPOS (Intellectual Property Office of Singapore) portal. It must include the name and address of the applicant. Another requirement is that the mark must have a graphical representation which is also presented in the application. The applicant shall also list which classes of goods and services they wish to register the mark for. IPOS has provided a detailed list of classes of goods and services including around 34 classes for goods and 11 classes for services. There is a fee for each class that is listed. If it is applied for online it is a lesser fee of 341 SGD and if through physical application, it is a fee of 374 SGD.
After application is made there will be a formalities check and if there are no issues a number for the trademark will be issued. Supposing there are issues then it can be sent back to the applicant to make necessary changes before a given deadline.
Next, the application will be examined and compared with the Trademark Act to ensure compliance. If there are no problems, then a report will be provided within 4 months.
After this, the last step is publishing of the mark in the Trademarks Journal. For a period of 2 months anyone from the public will be able to oppose the application. If opposition is filed and no settlement is achieved, then it will be considered with a hearing. If there is no opposition the mark will be registered and a registration certificate will be issued to the applicant which will be valid for a period of 10 years after which application can be made to renew it with a stipulated fee (Form TM-19).
2. Trademark Registration in MALAYSIA :
The first step is to file an application (Form TM-5) to MyIPO (Intellectual Property Corporation of Malaysia), which will cost RM 370. After application is made a formality check will be conducted where statutory compliance will be examined. If there is any inconsistency with the statute, then amendments can be made by the applicant within a period of 12 months.
If there are no issues with the formalities process, then the search and examination process will be conducted to see whether there are other marks that are similar or identical already registered. If there are any issues with this step, then the application will be rejected and the applicant is allowed to bring a written appeal which will lead to an ex-parte hearing.
However, if the step is passed, it will be published in the Government Gazette and a period of 2 months will be provided to the public for anyone to bring an opposition to the application. The form for advertising of the mark is TM-31 which costs RM 650. If there is an opposition, then an inter-parte hearing will be held. If there is no opposition or it is rejected, then the mark will be registered and certificate will be granted to the applicant. If the opposition is accepted then the registration will not be done, but the applicant will be able to appeal to the IP High Court.
It should also be noted that there is an expedited process whereby Form 5A for RM 250 (application for approval of request for expedited registration) and Form 5B for RM 1200 (Application for request for expedited registration) must be submitted.
3. Trademark Registration in HONG KONG :
The applicant must submit Form T2 (and Form T2A in certain circumstances) to apply for trademark registration to IPD (Intellectual Property Department). The fee will be 2000 HKD for the application and 1000 HKD for each class of goods/services for the trademark.
After submitting the application, a deficiencies check will be conducted and if there are no problems with the application and no objections the estimated time for the registration to be completed is 6 months. If there are any deficiencies, then depending upon how grave the deficiency, the filing date can be amended.
After this step is passed, the next one is the search and examination. A search will be conducted to see whether there are any other similar/identical marks registered or applied to be registered for. Examination will be done to ensure statutory compliance with the Trademarks Ordinance. Whether it is accepted or rejected, an opinion will be provided.
If there are objections made as grounds for rejection of the application, a period of 3 months will be granted for the applicant to satisfy the requirements. If after that there are still more objections then from the date of informing of the new objections, another 3 months will be granted to the applicant to satisfy the requirements again. After the application is accepted, the mark will be published in the Hong Kong Intellectual Property Journal and oppositions by anyone from the public is invited for a period of 3 months. If there is an opposition, then either the applicant can withdraw or a hearing will happen if he challenges it. It should be noted that if the applicant loses he may have to pay for the opposition party’s expenses as well. If there is no opposition or the applicant wins the hearing, then the mark will be registered and a registration certificate will be granted.
Prior to this whole process, if the applicant wishes to they may submit form T1 to enjoy the search and preliminary advice services, however there is a fee of 400 HKD for each service and a fee of 200 HKD for each class of goods/services.
4. Trademark Registration in CHINA :
Before submitting the required application forms, an applicant will have to go through a preliminary search step by the CTPO (China Trademark and Patent Office). After this, the applicant must submit the necessary application forms to the CTPO and all documents must be in Chinese.
The application should include at least one class of the 42 available classes of trademarks. If the applicant qualifies for priority registration, then they can submit their letter of priority (with translation) along with their application documents. The CTPO will then check the documents to ensure compliance with laws/rules.
A preliminary examination will be conducted and if CTPO is satisfied, then they will publish the mark in the Preliminary Examination Gazette and any member of public will be able to file an opposition within 3 months. If an opposition is filed, then the applicant can respond within 15 days and request for administrative review. After the review if the applicant is still unsatisfied with the result then they can issue an administrative appeal to the courts within 30 days. If there is no opposition or the result of the review/court appeal is in favour of the applicant, then the mark will be registered and a registration certificate will be granted.
The fee of the registration process is 1000 RMB with a maximum of 10 items in one class of goods/services. If an application goes over 10 items in a class then a fee of 100 RMB will be charged for each additional one.
5. Trademark Registration in EUROPEAN UNION :
The applicant can submit the relevant application forms to the EUIPO (European Union Intellectual Property Office). After this, the first step is where the office will check the documents to decide if a filing date can be set.
Next, a formalities check will be conducted which will include a check on the classes of goods and services and there will be national register searches.
Then all absolute grounds for rejection will be considered. If there are no problems up till here, then the application will be published in the EU Trademarks Bulletin.
After the publishing, within 3 months any member of the public may file an opposition application. The opposition can be brought on grounds that the opposing party has already registered a similar/identical mark and that they have the right to the mark. In addition, the opposition can also be based on absolute grounds provided the party filing opposition provides reasons as to why they believe so. There will be a check as to whether the formalities have been adhered to by the opposing party. After the proceedings are held, if the result is in favour of the applicant, then the mark will be published in the register and an online registration certificate will be provided.
The fees for the application including one class one goods/services is 850€ and for one more class the additional fee is 50€. If the applicant wishes to include beyond 2 classes, then for each additional class included there will be a fee of 150€.
6. Trademark Registration in UNITED KINGDOM :
Before applying, the applicant has to do a check on the trademark database, to make sure there are no existing registered marks that are similar or identical to his. After that he may fill out an online form including details of the type of trademark graphical representation, classes of trademark, whether it is a priority/standard application etc. Paper forms can also be submitted through post.
After submission of necessary documents, the first step for the IPO is examination of the application. After checking its compliance and whether formalities have been satisfied then an examination report will be provided and if there are any issues with the application, the applicant will receive 2 months to rectify it.
Next, if there were no objections to the application or if the problems were rectified within 2 months, then it will be published in the Trademarks Journal. A period of 3 months will be provided for any member of the public to bring an opposition against the application.
If an opposition is brought, then the applicant can withdraw their application or come to a settlement with the opposing party. Otherwise the last resort if for the applicant to defend his application and proceedings will ensue. If the applicant succeeds, then their mark will be registered and a registration certificate will be granted.
The initial process takes about 20 days and there two types of applications. In the standard kind, a fee of 170£ must be paid and if the application is rejected in the end the 170£ cannot be recovered.
The second type of application is the Right Start application. For this one, the duration is the same but the total fee is 200£ and the applicant will have to pay 100£ upfront. The advantage however, is that if the application is rejected for any reason at any stage the applicant will only lose the 100£ deposit. For each additional class included in the application the fee is 50£.
The registration may be renewed after 10 years. The renewal period if 1 year starting from 6 months prior to expiry of the registration.
7. Trademark Registration in GULF COUNTIRES :
The GCC (Gulf Cooperation Council) includes member states - Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates.
Before submitting the application to the IPO in whichever country, a pre-filing search may be done to give the applicant more information so they can decide whether to make application or not, however, this is not compulsory.
The first step after the application is submitted, the IPO will conduct an examination to check whether the formalities have been complied with and also to see whether there are any other registered marks that are similar/identical for a similar class of goods/services. The IPO will also check whether the application is statutorily compliant.
If there are no objections, then the mark will be published in the official gazette of the country and any objections from public will be invited for a period of 2 months. After the details of any objection are made known to the applicant then he will have 2 months to respond. To decide the dispute, a hearing will be held and decision will be made based on supporting evidence.
If the applicant is successful, then the mark will be registered for a period of 10 years which will be renewable within 6 months after the expiry of the registration. A registration certificate will also be issued. The IPO depends on which country the registration is being applied for.
8. Trademark Registration in AFRICAN COUNTIRES :
South Africa: The IPO is CIPC (Companies and Intellectual Property Commission). The applicant has to make an application for each class of goods/services that they want to include separately.
Before sending the application, the applicant can request for a preliminary search to be conducted to provide information on whether there are similar/identical trademarks already registered. The fee for a search for each class is R190.
The application can be made manually or electronically and the application fee is R590. After application is made, the CIPC will conduct a search to check whether any identical/similar marks are registered or if application to register has been made for the same. The CIPC also has to ensure compliance with statutes (Intellectual Property Laws Amendment Act, 2013), if there is any inconsistency then objections will be made.
If the application is accepted, then it will be published in the official gazette and any oppositions will be invited from the public. If there is an opposition and applicant chooses to proceed then a hearing will be held. If decided in favour of the applicant or if there is no opposition in the first place at all then the mark will be registered and a registration certificate will be issued to the applicant.
OAPI Countries (African Intellectual Property Organization): OAPI includes 17 member states in the African continent.
The application form has to be filed to the Director General of OAPI. The applicant can choose to make a priority application but notice must be given no later than 3 months from the date of application. An application must be made for each class of goods/services separately. They will provide an application number to the applicant. A physical and digital copy of the application will be created.
After application is received, the DPI (Department of Industrial Property Protection) will perform an examination to decide on acceptance of registration. They will consider whether there are any grounds to reject the application.
Next, a technical examination will be conducted by DPI, and if satisfied and there are no objections to the application, then an order for registration of the mark will be made and a certificate of registration will be issued.
The application will then be sent to DAT (Department of Technical Assistance and Development) where they will publish the trademark in the official IP gazette.
After publishing, opposition from any member of the public will be invited for a period of 6 months from the date of publishing. If an opposition is made, then there will be a hearing if the applicant chooses to defend his application.
ARIPO (African Regional Intellectual Property Organization): An applicant can register their mark in nine African countries with ARIPO as IPO. They are Botaswana, Uganda, Namibia, Lesotho, Swaziland, Zimbabwe, Malawi and Tanzania.
Applications can be filed with ARIPO directly or first with the IPO of a particular state and then have it transferred to ARIPO. The application form (Form M4) must be filled out and submitted. ARIPO allows for multi-class applications.
The fees must also be paid when making application but it can be paid within a period of 21 days from filing of the application.
ARIPO will then send the application to the IPO of the specified member state/s and the IPO will have 12 months to examine the application and give notice of any objections to ARIPO.
If the IPO does not respond within the 12 months, then ARIPO will move forward and publish the application in the ARIPO Journal. Any third party may then bring an opposition to the application within the period between the publishing of the application and registration of the mark.
If there is no opposition or if the applicant succeeds in the opposition hearing, then the registration will be accepted and the registration fee must be paid by the applicant. After the fee has been paid, ARIPO will take about another year to provide the registration certificate.
The registration is valid for a period of 10 years from the date of application made and is renewable upon expiry for another 10 years with the payment of a renewal fee.
9. Trademark Registration in JAPAN :
Application for registration of the trademark must be made to JPO (Japan Patents Office). When the application is received there will be a formal and substantive examination. If application is refused, then the grounds will be provided and the applicant can make required amendments or appeal.
There examination guidelines provided which cover the requirements for registration of trademark. The formal requirements must be followed by the applicant and in the substantive examination similar/identical marks under same/similar classes will be searched for to check the distinctiveness of the applicant’s mark.
If it passes both examinations or the applicant succeeds on appeal then the registration will be granted, however, if the fee for registration is not paid 30 days within decision then the application will no longer be valid.
The mark will then be published in the Published Trademark Gazette and opposition from any member of the public will be called for within 2 months from the date of publishing in the gazette. If there are any oppositions, it will be filed with the Commissioner of JPO.
If there is no opposition or the applicant succeeds, then registration will be completed. If afterwards, someone appeals to the registration and succeeds then the registration of the mark can be revoked. However, the applicant will still be granted the opportunity to appeal to the IP High Court. The registration can also be invalidated if there is non-use of the mark for a period of 3 years at least.
After registration, it will be valid for a period of 10 years and is renewable by filing the corresponding application form along with the registration fee. This can be done within 6 months before the expiry of the registration or after but if the latter then an additional fee will be charged. The fees can however, also be paid in instalments.
The fees for registration of trademark is ¥28200 which includes only one class and the renewal fees is ¥38800 again, including one class only.
10. Trademark Registration in AUSTRALIA :
The application form for registration of a trademark is available at IP Australia and can be filled out and submitted online or by post. It should also be noted that an applicant can make a priority application by informing the IPO of the circumstances and it will be decided on an individual basis.
IP Australia entertains multi-class applications but apart from the fee for registration of one class loan an additional fee will have to be paid for each additional class included in the application.
The application will then be examined in accordance with the Trademarks Act, 1995 to ensure compliance with the statute. If there are any inconsistencies with it, then the objections will be communicated to the applicant. The applicant will be given 15 months’ time to make any required rectifications.
After the registration application is accepted it will be published in the Official Journal of Trademarks. Oppositions may be brought against the applicant for a period of 3 months after publishing and the applicant may choose to defend his application.
If there is no opposition or if the applicant succeeds in opposition proceedings, then the mark will be registered once registration fee is paid. The fee must be paid within 6 months from date of acceptance being published. A registration certificate will then be provided to the applicant.
After registration, one may bring an action against the applicant for non-use of the trademark for a period of 3 years or if there is non-use and it is clear there is no intention to use the mark in the future. One may also bring an action to the courts to invalidate the registration. However, no more oppositions will be entertained after the registration is complete.
The registration will be valid for a period of 10 years from the date the application was made and is renewable on expiry of 10 years with a renewal fee if renewed in the 6 months prior to expiry of registration. But, if renewed within 6 months after expiry then an additional fee will be charged along with the renewal fees.
Regarding the fee structure, applications can be made with/without a picklist which is supposed to assist the applicant in selecting the classes of goods/services for their application Without it, the registration fee is $250/class and with it, the registration fee is $330/class.
11. Trademark Registration in CANADA :
The application for registration of a trademark can be filed online and then a filing date and application number will be issued. The next step is the examination process The Canadian IPO will examine the application to ensure that it is compliant with the Trademarks Act and Trademarks Regulations. The examiner will notify the applicant of any objections after this process and the applicant will have the opportunity to respond.
Next, a search will be performed to check whether there are any other similar/identical marks under similar/same classes of goods/services. The applicant will also have the opportunity to make any amendments to satisfy the examiner.
If the final result is that the application is rejected, then the applicant may give a response and if it the decision is still not satisfactory for the applicant they may appeal to the Federal Court of Canada.
If accepted, the application will be published in the Trademarks Journal and oppositions will be invited for the next 2 months.
If successful in the opposition proceedings or if there is no opposition at all then the trademark will be registered after a fee of 200$ is paid and it will be recorded in the register of trademarks. The official registration certificate will be issued soon after.
It will be valid for a period of 15 years and is renewable on expiry of the period. The application filing fee is 250$ and the renewal fee is 350$. An additional fee of $50 will have to be paid the application is not submitted online.
12. Trademark Registration in RUSSIA :
When making application for registration to RUPTO (Russian Patent and Trademark Office), the applicant must file an application that consists of a request to register the mark; information about the applicant; graphical representation of the mark; and specification of classes of goods/services.
The applicant can apply for expedited process by filing the priority document within 3 months from filing date. Multiple classes can be indicated in the application.
When applying, the applicant can use the International Classification of Goods and Services for the Purposes of the Registration of Marks to identify the classes of goods/services they wish to include. The application must also be made in Russian. After the application is received there will be a formal and a substantive examination process. In the formal examination the application documents will be checked to make sure that the all the requirements are met and that it is compliant with the necessary laws/rules. Then the substantive examination will be conducted.
If the decision is in the applicant’s favour, then registration application is accepted and will be published online as well as in print. Although there isn’t any official opposition system in Russia, oppositions are entertained and facilitated by law. The hearing will be decided by the Chamber of Disputes of RUPTO. If the applicant is not satisfied with the result he may appeal to the Russian Intellectual Property court.
If the application is accepted, then registration will be granted and it will be valid for a period of 10 years from the date of application, upon expiry of which it is renewable. It can also be renewed within 6 months after expiry of the registration. The official fee for the application is around RUB10500 for one class.
An important point to note is that non-use of the mark for a period of 3 years will result in invalidation of the trademark.
13. Trademark Registration in MEXICO :
The trademark application has to be filed with the Mexican Institute of Industrial Property (IMPI). Mexico does not entertain multiple classes under one application. The applicant can also opt for the priority registration process, if they present their priority serial number and country to the office.
After the application is received, a formal examination will first be conducted to ensure compliance with the governing rules/laws. If there are any objections the applicant will be given notice of it and 4 months to amend it (office action). If there are still any objections after amendments the same procedure will follow.
Next, a substantive examination will be held which includes a search to find any other marks that are identical/similar under the same/similar class of goods/services. Again if there are any objections after this step, then 4 months will be granted to respond to the office action. If the examiner despite the response decides that the application should be rejected, then the applicant has the option to appeal to the Federal Court of Fiscal and Administrative Justice (TFJFA). If there are no objections, then the registration application will be accepted and the application will be published in the official gazette.
There are no official opposition procedures in Mexico, however, any third party may bring an opposition at any time during the registration process. It should be noted that the registration can also be invalidated if there is unjustified non-use of the mark for a period of not less than 3 years. After the publishing of the mark and acceptance of registration application, a registration certificate will be granted to the applicant which will be valid for a period of 10 years and is renewable upon expiry of the period. But the renewal application must be filed within one year starting from 6 months prior to expiry.
14. Trademark Registration in BRAZIL :
The applicant must first submit the application form and other required documents to the INPI (National Intellectual Property Institute). A physical copy must be submitted either in person or by post.
Once the application is received, a formal examination will first be conducted by INPI. They will check whether all formal requirements have been satisfied and if there is any problem it will be published in the RPI (Official Intellectual Property Gazette) and 5 days from publication will be granted to the applicant to make amendments.
After the amendments if there are no other issues then the application for registration will be accepted and it will be published in the RPI. Oppositions will then be invited from any member of public for a period of 2 months. If an opposition is made, then the applicant will have another 2 months to respond.
If there is no opposition or if the applicant succeeds in the hearing, then the application will be examined again by INPI to ensure compliance with governing laws/rules and formal requirements and will consider whether there are any grounds for rejection of application. If there are no issues, the mark will be registered and a registration certificate will be granted to the applicant. It is valid for 10 years and the fee must be paid within 2 months from the date of publishing the granting of the registration. Another 1-month extension will be granted if fee is not yet paid within 2 months however, an additional fee will also be charged.
15. Trademark Registration in NORTH KOREA :
The applicant must make an application to the Trademark Registration Office either in person or by post. If there are proper reasons, the applicant may submit their application online.
After receiving the application, the Office will notify the applicant of their receipt. If the applicant has used the mark in an exhibition or similar event, then they can present the relevant documents within 3 months from the public use of the mark to go through a priority application.
The examination process will commence within 6 months from when the application has been received. If there are any issues with the application the applicant will be granted 3 months from notification of the issues to make necessary amendments. They may also receive an extra period of 2 months if there are proper reasons provided for delay.
The trademark will be published in the trademark related records and oppositions will be entertained within one year from the date of the submission of the application. The opposition hearing may be decided by the Trademark Registration Office/State Trademark Examination Committee. If the dispute is still unresolvable, it can be heard by a court/arbitrator.
If the application is rejected, then the applicant may apply for a re-examination of the application. If it is still rejected, the applicant can appeal to the State Trademark Examination Committee within 2 months from the re-examination decision. The registration, even if successful, can be invalidated for non-use for a period of 5 years.
If there are no issues and the application is accepted the registration will be granted and the trademark will be registered in the State Trademark Register and the Trademark Registration certificate will be granted. It is valid for a period of 10 years and is renewable within 6 months before expiry of the 10 years.