Filing and Registering a Trademark: which Differences?

What is the difference between filing and registering a trademark?  Which checks should be carry on before filing a trademark? And which checks after the registration? In this article we give you the answers to all these questions 😉.

 

First of all, we have to consider that they are two different moments of the trademark’s life. The filing of a trademark is an action that precedes the registration of a trademark.

Anyone can “file a trademark”, but only the competent authorities can “register a trademark”.

Let’s see in detail the two steps and what is advisable to do in each of them.

Filing a trademark

The first step, the filing of a trademark, corresponds to the submission ( named “filing”) of a trademark application to the competent authority.

Therefore, to say “filing a trademark / filing of a trademark / filed trademark” means “having filed the application for registration to the competent authorities”.

At this stage the mark is not yet registered: there exists an application, filed to the competent authority with the aim to obtain the registration of the mark.

Once the application is filed, it is possible to use the brand with the symbol ™, whose meaning is that a trademark application has been filed to the competent authority and that you are awaiting  the registration.

Trademark application filing: what to do before filing the application

Before filing the trademark application, we advise you to get in touch with an IP consultant o that he/she can carry on some important checks for a quicker and more certain result:

• The first step is the verification of trademark’s requirements to be registered in order to be sure that the sign complies with all the requirements required by the law (novelty, lawfulness, truth, distinctiveness) for the registration in order to avoid objections from the competent office.
• The second step is to understand where to register the trademark, namely where you wish to use it and the markets of potential interest for your business
• The third step is to carry out a search on filed and registered trademarks, namely a trademark similarity search: the search will allow you to know whether there exist filed or registered trademarks identical with or similar to yours.

We remind you that not carrying out the trademark similarity search could lead to unpleasant consequences, such as, before or after registration, challenges with the owners of earlier trademarks similar or identical to yours, with inevitable negative and sometimes fatal repercussions on your business.

With the trademark application filing the protection begins

With the trademark application filing you get some rights to protect the trademark:

• the possibility of filing an opposition to subsequent trademarks in conflict with your own because similar to or identical with yours;
• a trademark application can be assigned, licensed or given as a pledge.

Is it mandatory to indicate the Nice classes at the moment of filing?

Given that most Countries in the world adopt the Nice Classification in determining the products and services, the answer is yes, it is necessary to indicate the Nice classes when you file a trademark application, paying close attention to the products and services whose protection is required.

In fact, if later you wish to add further classes, it is possible to do it but on condition that you file another trademark application, because you cannot add classes to an existing application and/or registration .

To register your trademark in other countries

If you have filed a trademark application, but, while you are awaiting the registration, you decide to register your trademark in other countries, you have to know that it can be done with some clarifications: in fact, the ways to do it can change; for example, if you want to extend an international trademark, this must already be registered, while the registration of the mark is not necessary if you want to extend your protection in foreign countries by filing national trademark applications abroad.

It should be noted that “the addition of other countries” can take place in two ways:

• by filing new trademark applications in the States of your interest (and this can certainly be done before your “first mark” has come to registration;

in this regard, you have always to bear in mind the existence of the right of priority within six months from the date of the first filing

• by filing an application for subsequent designation and you can territorially expand the effectiveness of your international trademark to the countries become of your own interest (of course it must be States that have adhered to the Conventions on the subject of international trade marks). In this second case, however, the international trademark must already be registered.

How long is between filing and registration of a trademark?

The period between the two phases – filing and registration – varies according to the State of filing.

First of all, times for registration become longer if an opposition is filed against your trademark.

Regardless the opposition, moreover, the time for registration is different from State to State: it may be a few months (for example, in the case of the European Union trademark, registration usually comes rather quickly, after four of five months from the filing of the application) or one or more years (for example, in Brazil the average registration time is about two years from the filing date).

In Italy, the time varies depending on the workload of the office (UIBM) which is responsible for examining the applications. On average we can estimate that the registration takes place in a period of time between seven and ten months from the filing of the trademark application.

Certainly the registration cannot come before four or five months from the filing of the trademark application because the law provides that the application, once passed the examination of the office, must be published and that from the date of publication there are three months for third party rights holders to file an opposition to registration.

Registering a trademark

Once examined formal regularity of the trademark application and the existence of some requirements which are different depending on the State of registration, and on condition that no obstacles arose during the exam (or, if any, whether they were overcome), the competent authority will proceed to the registration by issuing the certificate of registration of the trademark attesting its granting. The certificate of registration concludes the phase started with the application and certifies the acceptance of the mark by the competent authority.

Only at the end of this phase we can say that the mark is registered and it will be possible to use the symbol ® in connection with the trademark.

Please note that inserting the registration symbol on an unregistered trademark is an illegal action because it is not true. It must absolutely not be used if the mark is not registered, since this is a crime in some Countries!

Protecting a trademark after registration

Unfortunately, the registered trademark does not protect itself! It is necessary, even in this phase, to carry out (or to ask an IP exper to do it) some important steps. Let’s go to see them:

• The first step is to “effectively” use the registered trademark: in fact, if a trademark is registered, but then it is not used, the trademark runs the risk to be canceled (provided that some conditions occur).
  For example, for the European Union trademark, the law provides that the proprietor must put the EU trademark to genuine use in the Union within a period of five years from registration; furthermore, use cannot be suspended for an uninterrupted period of five years. In the United States of America, for example, a declaration of use must be filed between the fifth and sixth years from the date of registration of the trademark; if the declaration is not filed, USPTO will cancel the trademark from the Register. If a registration is cancelled, it will be necessary to file a new trademark application in order to obtain a new registration.  In order to avoid problems, we suggest you to get in touch with your IP expert who will inform you about the law.
• The second step is to activate a trademark surveillance system to monitor the market of your interest in order to “stop” any trademark application identical to or similar with your trademark. If you don’t do it, problems could arise for your business..
• The thirs step it to avoid the vulgarization of the trademark, which happens when the trademark becomes the generic name of a whole category of products or services.