In the procedure of trademark registration, though not obligatory in countries of our jurisdiction, we usually recommend that our clients carry out a search on the sign for which they wish to apply. This is necessary to provide the client a clearer view on the possibilities of the registration of the sign; if there are any similar marks which might be contested, and generally the best approach for achieving a successful registration of the applied sign. Asides similar marks which can also possess similar distribution channels which could result in a refusal, one such ground that can affect the protectability of a sign in these jurisdictions is the potential deceptiveness or misleading character of a sign as seen in this article on “How to make your trademark strong in terms of non-deceptiveness ”. Preliminary to filing, these are some of the issues a search could expose and highlight as probable topics to explore in developing a strategy for the successful prosecution of a trademark. This is why a highly professional and knowledgeable trademark attorney is required from this crucial preliminary stage to advice our clients legally on the possible options for “for securing the rights to a trademark”. Some of these options could include the negotiation and obtaining of an LOC (Letter of Consent) from the owners of opposing signs or another option which is to draw up co-existence agreements to be signed by all parties involved. For more information on these methods kindly visit this link on Seeking a Letter of Consent or Negotiating a Co-existence Agreement.
Only a highly experienced trademark attorney would be able to foresee such pending oppositions and adequately advise and assist the client in negotiations and ultimate enforcement of their rights. Our seasoned attorneys are well equipped to represent our clients to bring them the protection they require. We have solved hundreds of cases in the process of enforcing the rights of the trademarks of our clients, implementing strategies in overcoming refusals, each unique to the case at hand, as seen in this case-study on overcoming provisional refusals and trademark registration in the CIS member states.
Our trademark attorneys also have multiple years of experience in filing objections and overcoming provisional refusals on behalf of our clients in cases of conflicting or similar signs in which we point out the differences by visual, semantic and phonetic criteria. We are also experienced in responding to refusals of the examination based on absolute grounds, in cases of insufficient distinctiveness we provide reasonable proof of the acquired (due to intensive use) distinctive ability. In our practice we have had numerous cases in which our strategies in filing or overcoming these refusals have succeeded in overturning the prior decision of the examination, a few samples which have been included in this article on the peculiarities of registration in Ukraine.
For more details on trademark registration in our jurisdictions, kindly follow the individual tabs to explore the procedures required in each of our countries of the CIS: Ukraine, Kazakhstan, Georgia, Armenia, Azerbaijan, Kyrgyzstan, Tajikistan, Turkmenistan, Uzbekistan, Belarus and Moldova.
