Keep in mind that not all trademark applications will benefit from a registrability hearing. The trademark applicant and his agent (i.e., lawyer, in many cases) should carefully discuss the pros and cons of a registrability hearing on trademark application.
What Is It?
A registrability hearing is a formal proceeding wherein either an applicant of his agent delivers formal oral submissions regarding the application for trademark registration. A Hearing Officer presides over the formal proceedings.
Emphasis must be made that a registrability hearing isn’t a hearing where two opposing parties contest the rightful ownership of a trademark.
Why Is It Necessary?
Actually, a registrability hearing isn’t always necessary. The Registry will make a decision about the registrability of a proposed trademark based on the documents and evidence submitted by the applicant. Then, the Registry will write to the applicant about the decision, which can be an approval for the next step or an objection; in case of an objection, the Registry may even suggest ways to overcome the grounds.
The applicant and his agent, if any, should carefully consider the added value of oral presentations of his trademark application. This isn’t just a matter of preparing the oral presentations but also the costs involved in a registrability hearing, said costs of which typically includes the official fees and the professional fees for the legal adviser, if any, who will attend the hearing.
There’s also the fact that an applicant can submit other forms of evidence whether a registrability hearing will be conducted or not. The Registrar will consider the evidence during the examination of the trademark application, too.
In many cases, a registrability hearing is necessary if the trademark application has a similarity with an existing trademark, or if it has certain aspects where the Registrar made an objection, or if it will boost the registrability of the proposed trademark. Again, it’s best to consult with an experienced intellectual property lawyer to discuss the merits of a registrability hearing.
If the applicant pursues a registrability hearing, the following things happen:
Keep in mind that certain details of the registrability hearing will be made public via the Registry’s official website. The Form T12 is the basis for publication, and it’s true even when the Registry disapproves the application after oral arguments and evidence presentation.
Keep in mind that there are details in each step that can throw a monkey wrench into a carefully laid-out plan. For this reason, hiring a professional trademark agent will be in the applicant’s best interest, especially in case of high-stakes proposed trademarks. For details of the trademark application, please contact us for free consulation.
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