What are the characteristics of trademark?
Trademark has the following characteristics:
-Differentiating its commodity or service from others
-Formed by words, graphics, letters, figures, colors or 3D symbols, and combining the fore mentioned elements
-Exclusive nature; trademark holder has the exclusive rights to the trademark, protected by law
-Intangible asset, the value of which can be determined by assessment; trademark holder may be entitled profits by transferring and licensing the using rights
What marks cannot be registered as trademarks?
The following marks shall not be used as trademarks:
Marks identical or similar to the name, national flag, national emblem, army flag, and medal of a country, as well as marks identical to the name of a particular place where state organs locate or the name and graph of landmark buildings
Marks identical or similar to the name, flag and emblem of an international organization
Marks identical or similar to the official mark and hallmark indicating the implementation of control and security, other than the authorized
Marks of racial discrimination
Marks of high sounding publicity and fraud
Marks coherent to the generic name, graph and type of the product, such as computer, pen, portfolio
Marks directly indicating the quality, major raw materials, function, purpose, weight, quantity and other characteristics of the product
Marks identical or similar to name or sign of Red Cross and Red Crescent
What should be considered before filing an application for trademark registration?
Matters to be considered include:
-Whether the trademark distinguishes the applicant’s goods or services from other traders
-Whether the trademark shows the distinctiveness of the goods and services
-Whether the trademark is a generic term in that industry
-Whether the trademark is identical or similar to other trademarks
What is Nice Classification?
Nice Classification (the “NCL”) is an international classification system to classify goods and services for the purposes of trademark registration.
Can an individual apply for trademark registration?
Yes. Applicant can be either corporation or individual.
What information is required for trademark registration?
It varies with each country and region. Generally, applicant’s identity documents, application form and trademark image are required.
How long is to process a trademark registration?
It varies with each country and region, for example, 4-8 months in Hong Kong and 12-18 months in China. Generally, it takes 4-24 months to process.
What is the validity period of a trademark?
It is 10 years in most countries and regions, except few, such as Canada (15 years) and Macau (7 years).
Can the registration be renewed?
Yes. Generally, the validity period of a renewed trademark is 10 years.
What is the right of priority?
-Entitlement of the right of priority
An applicant may enjoy the right of priority on trademark registration for certain goods or service with a state party to Paris Convention or a WTO member state for six months after the first application submission.
-Exercise of the right of priority
An applicant may exercise the right of priority to file the same application in another country within six months after his/her first application such that the application date of the second application may be dated back to that of the first application.
What are the principles on the basis of trademark protection?
The adopted principles vary with each country and region. Currently, the 3 principles adopted internationally are prior use, prior application, and both of aforementioned.
What are the differences between the packaging and presentation of commodity and trademark?
Trademark is part of the packaging and presentation of commodity; both of them are used in the packaging of the commodity. While trademark is to differentiate the producers or operator of commodity from another, presentation is to beautify commodity. A registered trademark cannot be altered, but the design style of a presentation is free to change.
Does transferring trademark need an agreement?
Yes. It requires an application form and a trademark assignment contract, which are signed by the assignor and the assignee.