Trademark Substantive Examination Stage: Why is It The Most Time-Consuming?
The trademark substantive examination stage is the process by which a trademark office reviews a trademark application to determine whether it meets the requirements for registration. This stage can be time-consuming in many countries, for a number of reasons.
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First, trademark offices are often understaffed and overwhelmed with applications. This can lead to long backlogs of applications that need to be examined.
Second, the trademark substantive examination process is often complex and requires a high level of expertise. Examiners must carefully review each application to ensure that it meets all of the requirements for registration and that the mark is distinctive, not confusingly similar to any existing trademarks, and that it is not prohibited from registration (eg. based on absolute ground). This can be a time-consuming process, especially for complex applications.
Third, trademark offices may need to wait for additional information from applicants before they can complete the examination process. For example, if an examiner has questions about the distinctiveness of a mark, they may need to request additional evidence from the applicant. This can further delay the examination process. Examiners may also need to communicate with the applicant to clarify certain aspects of the application or to address any objections that they have raised. This can add additional time to the examination process, especially if the applicant is not responsive to the examiner’s requests.
Finally, some countries have more stringent trademark registration requirements than others. This can make the trademark substantive examination process longer in these countries.
Here are some specific examples of how time-consuming the trademark substantive examination stage can be in different countries:
In the United States, the average time is about 9 months.
In Canada, the average time is about 18 months.
In Japan, the average time is about 14 months.
In South Korea, the average time is about 11 months.
In Malaysia, the average time is about 12 months.
It is important to note that these are just average times. The actual time it takes to complete the trademark substantive examination stage can vary depending on a number of factors, such as the complexity of the application, the workload of the trademark office, and the availability of additional information from the applicant.
The time-consuming nature of the trademark substantive examination stage can be frustrating for businesses that need to register their trademarks quickly. However, it is important to remember that the examination process is in place to protect both consumers and businesses from trademark infringement.
If you are considering filing a trademark application, it is important to be aware of the potential timeframes involved in the examination process.
Good News: Thailand Has Two Fast-Track Trademark Examination Options
Thailand has introduced two new fast-track trademark registration procedures, which can help businesses to register their trademarks more quickly and efficiently.
Option 1: First Notification of the Trademark Examination Result in the Case of Necessity for Urgent Use of the Trademarks of 2023 (the “2023 Urgent Use Fast Track”)
The first fast-track procedure is for applicants who urgently need to use their trademark in Thailand and is effective as of January 03, 2023. To be eligible for this procedure, the application must cover no more than 10 items of goods or services in a single class, and the applicant must submit evidence of the need for urgent use. The Trademark Office will then examine the application within 4 months of the filing date. The complete requirements are as follows:
- The application must be submitted via the DIP/TMO e-filing system.
- The application must cover no more than 10 items of goods or services in a single class, in accordance with the Trademark Office’s Guideline
- The mark is limited to only a letter/word/device or combination thereof and applied for protection as a trademark or service mark only
- The applicant must submit a request for accelerated examination for the urgent use of the mark, together with evidence to show the need to use the mark urgently. Upon receipt of the above request, the examiner shall inform the applicant in 15 days whether the application is eligible under this Notification or not.
- Submitting a search result conducted from certain databases e.g., the Thai Trademark Office’s online database, View, and WIPO/Global Brand Database
If the application meets all of the requirements, the examiner will notify the applicant of the examination result within 4 months from the filing date.
As there is no further explanation from the Trademark Office on the requirement regarding proof of urgency so the examiner will likely use his/her own discretion in assessing such evidence on a case-by-case basis.
Option 2: Notification on the First Notification of the Trademark Examination Result in Case of Urgency of 2021 (the “2021 Fast Track”)
The second fast-track procedure has more flexible requirements than the 2023 Urgent Use Fast Track. Applicants can designate up to 50 items of goods and services, which do not have to be limited to a single class. However, the items must be listed in the Trademark Office’s guideline. Additionally, applicants are not required to submit a request form or evidence of urgency.
Under this procedure, the Trademark Office will examine the application within 6 months of the filing date.
Both fast-track procedures offer a significant reduction in the time it takes to register a trademark in Thailand. The normal examination procedure can take up to 12 months, so the fast-track procedures can be a significant advantage for businesses that need to register their trademarks quickly.
Which Fast-Track Procedure is Right for You?
The best fast-track procedure for you will depend on your specific circumstances. If you urgently need to use your trademark in Thailand, then the first fast-track procedure is the best option. However, if you have more time and are not willing to meet certain requirements as required by the first option, then the second fast-track procedure may be a better choice.
Benefits of Fast-Track Trademark Registration in Thailand
There are several benefits to filing a fast-track trademark application in Thailand, including:
- Quicker registration: Fast-track trademark applications can be accepted and processed for publication in as little as 4 months from the filing date, compared to the up to 12 months it can take for normal trademark applications to be accepted.
- Greater certainty: Fast-track trademark applications offer greater certainty to businesses, as they know when they can expect to receive an examination result.
- Competitive advantage: Fast-track trademark registration can give businesses a competitive advantage by allowing them to protect their trademarks quickly and effectively.
Who Should Consider Filing a Fast-Track Trademark Application in Thailand?
Fast-track trademark registration is a good option for businesses that need to protect their trademarks quickly, such as:
- Businesses that are launching new products or expanding into new markets.
- Businesses that are facing competition from other businesses that are using similar trademarks.
- Businesses that are concerned about their trademarks being infringed upon.
The new fast-track trademark registration procedures in Thailand offer significant advantages for businesses that need to register their trademarks quickly. If you are considering registering a trademark in Thailand, be sure to consult with an experienced trademark attorney to discuss the best options for your business.