Trademark Opposition

Once a trademark application goes through the examination process it is published in the official gazette for opposition. Any third parties take any objections to the registration of the mark during the opposition period, typically one to three months, depending on the jurisdiction.

If you are the owner of a registered mark and have discovered that some one is trying to register a mark confusingly similar to yours contact us. We will advise you how to file an opposition proceeding to prevent the mark from being registered.

If your trademark application has been opposed during the opposition period, contact us. We can provide the necessary representation to resolve the controversy or defend against the objection.

Cancellation

If an owner of a trademark fails to use the mark for a certain period of time (3 to 5 years, depending on the jurisdiction) it may be possible for a person interested in using the same or similar mark to apply for the mark to be cancelled and removed from the register. If a third party opposes your application, non-use as described above may also provide a valid defense to the opposition.

If you would like assistance with opposition or cancellation matters contact us.

Renewal

Once registered, the trademark registration is valid only for a certain number of years. The number of years of protection granted varies from country to country, although most grant protection for 10 years. The period for which the trademark is registered is generally indicated in the Certificate of Trademark Registration.

If we handled your initial application, we will notify you when renewal is due. Otherwise, the period of registration of your trademark is nearing its end just contact us for renewal of your trademark registration. Our kaizen members will be able to renew the trademark registration for a further period of time permitted under the laws of the country concerned.

Contact us to let us know the renewal details.

Assignment

Trademark rights, like any other rights in property, can be assigned or transferred from one person to another. Each country is unique in formalities to be complied with. Our kaizen members will be able to advice you on the legal requirements of the country of your choice.

Normally, a certain payment, however nominal, is necessary to effect an assignment. Depending on the country there may also be stamp duty and other tax implications involved in the transaction of assignment. Again, a member of kaizen will be able to guide you on these points.

Contact us to let us know the assignment details.

Licensing

Licensing of a trademark permits the use of trademark by a third party. The person licensing the mark (licensor) retains the ownership rights in the mark and only permits its use by a third party (licensee). A license can be:

• Exclusive or non-exclusive
• Limited or general

An exclusive license grants the licensee the right to use the trademark to the exclusion of all others. A non-exclusive license grants the right to use trademark to more than one person, making their right to use the mark concurrent.

A limited license permits the use of only certain rights associated with the trademark, while a general license permits the use of all the rights.

Contact us for more information and advise on licensing.

Recordal of Changes

In a majority of countries trademarks and the details of the owner are maintained in the Registry. After you have had your mark registered if some changes take place, such as change of address or change of name of the owner of trademark, then you need to inform the Registry in the relevant country. Our kaizen members in the relevant country will be able to assist you in this regard.

Contact us to let us know of the changes to be recorded.

Trademark Infringement

A trademark infringement action is available only to the owners of a registered trademark. When a person uses a mark identical or confusingly similar to a registered trademark, in association with identical or confusingly similar class of goods or services, the owner of the registered trademark can initiate an infringement action against such person.

Members of kaizen have the required expertise to handle infringement action in their jurisdictions.

Contact us for more information and advise on infringement.