Normally, a trademark application process can take 8 to 12 months if there are no objections and deficiencies in the requirements, However, it is possible to get an objection or refusal for a registration for the following reasons:
The first point emphasizes the uniqueness of a trademark. After all, it is the brand or logo that will represent the company and its products and/or services. It is not that different from a person’s legal birth name; it identifies you from the others, and with the name, comes all the qualities and characteristics associated with it.
There is a standard used by most intellectual property offices that handle trademarks to determine if the mark can be confusing. It is called the Polaroid factors because it was first highlighted during the 1961 case against the Polaroid Corp. The company was forced to defend its trademark based on the similarity of the products and/or services in the trademarks that represent them, the similarity in the trademarks themselves, the chances of the senior trademark user expanding into the junior user’s industry, the intention of the junior user’s use of a similar trademark, the quality of the products and/or services, the buyer sophistication, evidences of consumers being confused by the trademarks, and the distinction of the senior user’s mark.
There are many examples of conflicting trademarks where companies ended up in court because of the similarities. One such trademark case is the Apple Corps versus Apple Inc. wherein the conflict was over the right to use the word “apple.” Apple Corps was the name the Beatles came up with for their music company, while Apple Inc. was the name for the company now known for its gadgets. It was resolved with Apple Inc. purchased the trademark and the rights of Apple Corps, but the former licensed the trademark to the latter.
If your current trademark application has been rejected because it cannot distinguish your goods and/or services from other traders, you will be given time by the Registrar to reply to objections. If you need more time to reply, you should file for an extension before the expiration of the time given to you. Failing to reply will result in the withdrawal of the application. However, you will still be given a 6-month period of reinstation if you apply and respond to the objections or clarifications. After the 6 months period expires and you fail to apply for a reinstatement, then the withdrawal is final.
Under the Trade Marks Act, which is based on the trademarks rules of World Intellectual Property Organization (WIPO), any person within two months of publication of the trademark can give a notice to the Registrar to oppose the registration. The notice will include the grounds upon which the opponent objects. You will have to respond to the statements by filing your own statement and the supporting evidence that will validate your application. This is called the counter-statement, which will be sent to the Registrar along with a duplicate. The opposition, once they receive your counter-statement will then have the opportunity to file evidence by statutory declaration to support the claims. You will also receive a copy of the statements and evidence given by the opposition.
Moreover, the opposition will also be given a time period to respond. If there is no response, the opposition is considered abandoned. It is within the Registrar’s power to give leave to file evidence that may be essential to the proceedings. Once the evidence from both sides are complete, the Registrar will set a date for hearing. If one of the parties is absent, the Registrar decides as he sees fit. If the hearing proceeds well, the copies of the decision will be sent to the parties within 3 months of the hearing.