How long does a Trademark take?

Most people are under the impression that their trademark will be registered shortly after filing. Unfortunately, this is not the case and the typical timeline for an unopposed trademark is set out below.

Filing

Within 1-3 business days of filing your trademark, you will receive confirmation of filing from the Trademarks Office. This filing receipt contains details of your trademark including your trademark application number and filing date.

Examination

Typically, trademarks are examined 9-12 months after being filed. The Trademarks Office examines a trademark to determine whether it has (a) met the required formalities of a trademark filing i.e. formal examination; and (b) whether it infringes the rights of a third party i.e. substantive examination. Based on this, an office action is issued which either

• Accepts the trademark unconditionally – please see “3. Acceptance” below;
• Accepts the trademark subject to certain conditions – these conditions are usually quite standard and reasonable; or
• Refuses the trademark – the reasons for the refusal need to be evaluated on a case-by-case basis to determine whether there is a chance of successfully overcoming the refusal.

Office actions need to be responded to within three months of being issued. You can then expect to wait 6 months for the trademark examiner to respond.

Acceptance

Once accepted, a trademark needs to be published in the Patent Journal. The Patent Journal is issued on the last Wednesday of every month and trademarks need to be submitted for publication at least 10 days before this date. If not, they will have to be published in the following months’ Journal.

Publication / Advertisement

Once published / advertised in the Patent Journal, the trademark is open to opposition for 3 months. During this period, the trademark may be opposed by interested third parties.

Registration

Approximately 4 months after the opposition period ends (and no opposition has been encountered), we can expect to receive the original registration certificate.

This means that it takes an average of 2 years for a trademark to progress from filing to registration.

What does this mean?

• You can use an unregistered trademark.
• You can only use the ® symbol once your trademark is registered. Any use beforehand is a criminal offence.
• You can use the ™ symbol on both registered and unregistered trademarks.
• You can only institute trademark infringement proceedings once your trademark is registered. Automatic / Inherent rights in your name only arise if you can prove that your name enjoys a reputation and, even if this is the case, you might only be able to prove a reputation in a specific geographical area and in relation to specific goods or services. Enforcing your rights this way is almost impossible, very costly, and certainly something which is unavailable to a start-up company.