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Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Yes, but power of attorney is not required at the time of filing.
Neither notarisation nor legalisation is required.
What information and documentation must be submitted in a trademark registration application?
The following information must be submitted in a trademark registration application:
- the name and address of the applicant;
- a request for registration of the mark;
- a statement detailing the class of goods or services; and
- a representation of the mark.
What rules govern the representation of the mark in the application?
One representation should fit into the space provided on the application form. Provisions are made for attaching or supplying larger representations. Four additional representations should also be supplied.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
The application fees are:
- US$50 for the first class; and
- US$17 for each additional class in a multi-class application.
There is an additional US$7 fee for filing an address for service, as well as additional fees for the completion and publication of the registration. There are no additional fees for applications claiming priority.
How are priority rights claimed?
To claim a priority right, the rights holder must provide a simple, English-language copy of the application on which the priority claim will be based. A certified copy of the priority application must then be provided within three months of the filing date.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Searches are available and recommended but are not required. Searches can be done on the Intellectual Property Office’s website, but the results are not always accurate and full details of marks are not available. Official registry searches are performed in person at the local registry by the applicant or a local agent.
The fees for trademark searches vary depending on the amount of information obtained.
What factors does the authority consider in its examination of the application?
The application is reviewed to ensure that all procedural formalities are met. Absolute and relative grounds for refusal are considered during examination.
Does the authority check for relative grounds for refusal (eg, through searches)?
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Yes. If it appears that the requirements for registration are not met, the controller will inform the applicant and give it an opportunity to make representations or to amend the application.
Can rejected applications be appealed? If so, what procedures apply?
Yes, an applicant can request a written statement of the grounds for the controller’s decision to refuse or conditionally accept a mark. This decision can be appealed to a judge in chambers.
When does a trademark registration formally come into effect?
The registration of a mark takes effect from the date of filing, after the publication period has ended without opposition (or any opposition has been resolved in the applicant’s favour).
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years from the date of filing. Thereafter, marks may be renewed for successive 10-year periods.
What registration fees apply?
The registration fees are:
- approximately US$120 for publication fees (fees may vary depending on the size of the advertisement); and
- US$25 for the issuance of a certificate.
What is the usual timeframe from filing to registration?
The usual timeframe is approximately 12 to 18 months, provided that there is no opposition or objection to registration.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes, any party may give notice to the controller of opposition to the registration of a mark within three months of the advertisement of the application. The written notice must state the grounds of the opposition and, if the ground for opposition is that the mark resembles a prior registered mark, the number of the existing registration must be included along with the number of the Gazette in which it was published. The opponent must submit two copies of the notice.
The controller will then send a copy of the notice of opposition to the applicant. The applicant has one month to submit two copies of a counter statement to the controller. Failure to submit a counter statement in a timely manner will result in the application being deemed abandoned.
The opponent then has one month to submit evidence by way of statutory declaration in support of the opposition. If the opponent submits no evidence, the opposition will be deemed abandoned. If the opponent submits evidence, the applicant will have one month to submit evidence in support of the application. Finally, the opponent will have one month to submit rebuttal evidence by way of statutory declaration in reply.
On completion of the evidence, the controller will give notice to the parties of a date for hearing arguments in the case.
What is the usual timeframe for opposition proceedings?
Opposition proceedings typically take six to 12 months but may take longer.
Are opposition decisions subject to appeal? If so, what procedures apply?
The decision of the controller is subject to appeal to a judge in chambers.
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