Points to consider when a registered trademark is applied again for registration

tumnet 13

It is not common that an owner from a previous registered mark applies again for the same sign.

However, in sometimes you come across these cases in which the Trademark Office has mentioned the following:

1. An application of a sign that is already registered and in force, lacks legal object, since the rights and faculties granted by the second registration will be the same as the first registered mark.

2. Furthermore, recent Prejudicial Interpretations have mentioned that a second time application of an already registered trademark for the same goods and services, is understood to be incurred in the bad faith grounds set forth in Article 172 of Decision 486.

3. The only exception to request the application of a registered trademark is when the renewal in grace period has lapsed and the sign becomes available for registration.

Keeping in mind the above, lack of legal purpose occur when the following elements concur:

1. First, there must exist a total identity between the signs, in their graphic and nominative element.

2. Second, the coverage of the products and services must be the same.

3. There must be shown an identity between the applicant and the owner of the registered trademark.

4. Finally, that the registered trademark should have not lapsed for lack of renewal or be within the grace period.

If your company is going through the same situation, and needs to implement protection strategies for your trademarks, contact us at our email: tum@tumnet.com

Points to consider when a registered trademark is applied again for registration