The World Intellectual Property Organization (WIPO) is the international forum for intellectual property (IP) records and services, amongst others. Having begun operations in April 1970, WIPO was created to protect intellectual property, and the laws that surround it, across the globe.
Many expert IP organisations use WIPO to conduct international trade mark searches to ensure that a trade mark is available for registration. They may also use WIPO to check the validity of a trade mark. The WIPO portal can be overwhelming and complicated to those who have never used it, so it’s best to get a law firm that specialises in intellectual property to assist.
Hiring an Intellectual Property Attorney
When registering a trade mark, it’s important to understand the ins and outs of the process to avoid frustration and ensure success. The best way to go about this is to look into appointing an IP Attorney from a law firm that specialises in this. The benefits include:
- Building a strong, protectable brand: Oftentimes a trade mark may appear innovative and original, but may be rejected for a number of reasons. An IP Attorney can advise you effectively, steering you in the right direction to avoid rejection.
- Using a trade mark effectively: Knowing where and how you can use your trade mark is important, as well as understanding your legal rights surrounding it once it has been registered. An IP Attorney can guide you along the process, as well as ensure the legality of the procedure. This includes the commercial use of your trade mark.
- Legal backing: Your IP Attorney will see you through the entire process, and will be able to represent you should there be any legal implications or complications in the future. This relationship is beneficial because the IP Attorney will understand your requirements and expectations better than anyone else.
A Trade Mark Prosecution Group is able to assist you with the following:
- Assessment for registrability: The trade mark will be registered in terms of the South Africa Trade marks Act No 194, and the registrability process will be orchestrated by the IP Attorney.
- Trade mark searches: Depending on the territory of interest, a trade mark search wil be carried out to ascertain whether or not he trade mark is available for registration. Trusted platform like WIPO can also be utilised.
- International trade mark filing: If the trade mark availability search revealed that the mark is available for registration, a trade mark application wil be prepared and filed with the relevant registry or intellectual property office in question.
- Trade mark oppositions: If there are any objections to the registration of your trade mark, your representatives will be able to defend or combat these accordingly.
- Removal or cancellation of a trade mark: if a third party threatens to cancel your trade mark, without any valid grounds, your IP Attorney can assist.
- Trade mark renewals: In most territories, trade marks need to be renewed every 10 years. Your IP Attorney will keep an electronic database monitoring the renewal dates, inform you of the renewal date in advance of the renewal deadline and attend to the the renewal.
- Trade mark amendments: If you need to make changes on your existing trade mark, this can be done via your IP Attorney.
Adams & Adams is an internationally recognised and leading African law firm that specialises in providing intellectual property and commercial services. Our Intellectual Property law practices enable us to work with clients around the globe and across many industries to protect, enforce and commercialise their intellectual property including trade marks.