Trademark glossary

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A B C D E F G L M N O P R T U W

Absolute grounds

Reasons an office can refuse a mark because of the mark itself, whatever others own. Typical examples: the mark only describes the goods, is a generic word, is misleading, or is against public order. See also: Descriptive mark, Distinctiveness, Relative grounds.

Applicant

The person or company that files the trademark application. It is normally the future owner of the mark. See also: Owner.

Assignment

The transfer of a trademark, or of an application, from one owner to another. In most countries it is recorded at the office so that the new owner is shown in the register. See also: Licence, Owner.

Bad faith

Filing a mark with no real intention to use it, or only to block or exploit someone else who is known to use it. Many offices refuse or cancel marks filed in bad faith. See also: Relative grounds.

Basic mark

The home trademark (an application or a registration) on which an international application under the Madrid System is based. See also: Madrid System, Dependency period.

Certification mark

A mark that shows goods or services meet a defined standard, for example origin or quality. The owner does not use it itself but allows others who meet the standard to use it. See also: Collective mark.

Class

One of the 45 groups of the Nice Classification into which goods and services are sorted. Fees in many offices are charged per class. See also: Nice Classification, Goods and services.

Collective mark

A mark owned by an association that its members may use to show that they belong to it. See also: Certification mark.

Dependency period

The first five years of an international registration under the Madrid System, during which it depends on the basic mark. If the basic mark falls in this time, the international registration can fall with it. See also: Basic mark, Madrid System.

Descriptive mark

A mark that only tells the customer what the goods or services are, or their quality, purpose, or origin. Such marks are often refused because everyone should be free to use those words. See also: Absolute grounds, Distinctiveness, Generic term.

Designation

In the Madrid System, the choice of a member country in which protection is wanted. One international application can designate many countries. See also: Madrid System.

Distinctiveness

The ability of a mark to tell the goods or services of one business apart from those of others. Invented words are usually the most distinctive. Plain descriptions are the least. See also: Descriptive mark, Generic term.

Examination

The office's check of an application. It looks at the form of the application and, in most countries, whether the mark can be registered. It may end in an objection. See also: Objection, Office action.

Figurative mark

A mark that is a logo, a picture, or a stylised form of a word, rather than a word in plain letters. See also: Word mark.

First to file

A system in which, in general, the right to register goes to the one who files first. Many countries work this way. Others also give weight to who used the mark first. See also: Use-based system.

Generic term

A word that is the everyday name of the goods themselves, such as "apple" for apples. It cannot be a trademark for those goods. See also: Descriptive mark, Distinctiveness.

Genuine use

Real use of a mark in the market for the goods or services it is registered for. In many countries a registration that is not used for a number of years can be cancelled. See also: Non-use cancellation, Renewal.

Goods and services

What the mark is used for. An application must list them, and the list sets the scope of protection. Goods are things you sell, services are things you do for others. See also: Class, Nice Classification.

Licence

Permission given by the owner to another person to use a mark, usually on agreed terms. The owner keeps the mark. See also: Assignment.

Likelihood of confusion

The risk that customers will mix up two marks, or think the goods come from the same business, because the marks and the goods or services are similar. It is the main reason a new mark is stopped by an earlier one. See also: Relative grounds, Opposition.

Madrid System

An international system, run by WIPO, that lets the owner of a mark file one application and ask for protection in many member countries. See also: Basic mark, Designation, Dependency period.

Monitoring

A watch service that tells the owner when someone files a new mark similar to theirs, so that action can be taken within the opposition period. See also: Opposition.

Nice Classification

The international system of 45 classes (34 for goods and 11 for services) used by almost all offices to sort goods and services. See also: Class, Goods and services.

Non-use cancellation

A request to remove a registered mark from the register because the owner has not used it for the period set by law. See also: Genuine use.

Objection

A written statement from the office that it sees a problem with an application, and a deadline to answer or change it. See also: Examination, Office action.

Office action

The name some countries use for the office's written objection or other official letter about an application. See also: Objection.

Opposition

A procedure in which a third party, within a set period after the application is published, asks the office to refuse it, usually because of an earlier right. See also: Publication, Relative grounds, Monitoring.

Owner

The person or company shown in the register as holding the trademark. Only the owner (or someone it allows) can use and defend the mark. See also: Applicant, Assignment.

Priority right

The right, under the Paris Convention, to file in other member countries within six months of the first filing and have the later filings treated as if made on the first date. See also: First to file.

Publication

The step in which the office makes the application public, so that others can see it and, if they have an earlier right, oppose it. See also: Opposition.

Register

The official public record of trademarks kept by an office. It shows the mark, the owner, the goods and services, and dates. See also: Registration.

Registration

The grant of protection by the office after the application has passed examination and any opposition. The owner receives a certificate. See also: Renewal, Register.

Relative grounds

Reasons an office or a third party can stop a mark because of earlier rights of others, mainly an earlier similar mark for similar goods or services. See also: Absolute grounds, Likelihood of confusion, Opposition.

Renewal

Paying the fees and, where required, filing a declaration to keep a registered trademark in force for another period. Protection often lasts ten years at a time, and some countries also ask for proof of use. See also: Genuine use, Registration.

Representative

A person or firm that acts for the applicant before an office. Many countries require a local representative from foreign applicants. See also: Applicant.

Territorial right

A trademark right works only in the country or region where it was registered. To be protected in several places, the mark has to be registered in each, directly or through a regional or international system. See also: Madrid System.

Use-based system

A system in which rights depend, fully or partly, on who actually used the mark first, not only on who filed first. See also: First to file.

Watch service

Another name for monitoring. See also: Monitoring.

Well-known mark

A mark so widely known that it can be protected even in places or for goods where it is not registered. The level of proof required differs by country. See also: Likelihood of confusion.

Word mark

A mark made of words, letters or numbers, protected in any style. It protects the name as such, not a particular look. See also: Figurative mark.

This glossary is general information and is not legal advice. Words can mean slightly different things in different countries.