2. Raising of citationsUp one level
The presumption in the Act is that a trade mark is eligible for registration unless one or more of the absolute or relative grounds set out in Part 2 of the Act apply. 1 Therefore, examiners should carefully consider the issues before raising citations under section 25 of the Act. If there is some real doubt, the examiner should rule in the applicant’s favour. When considering whether sections 25 of the Act prohibits the registration of a trade mark, examiners must consider two issues of prime importance:
- The nature of the mark; and
- The types of goods or services for which registration is sought.
Moreover, when considering whether sections 25(1)(a) or (b) of the Act prohibit the registration of a trade mark, examiners must also consider applications belonging to different owners that have earlier priority than the application under examination.
Sections 34, 35 and 36 of the Act set out the priority to be given to trade mark applications that have been filed in respect of identical or similar trade marks for identical or similar goods or services. These sections are to be read together with sections 25(1)(a) and 25(1)(b) of the Act. Please refer to the Practice Guideline 02b Priority of Trade Mark Applications.
When raising citations, examiners need to consider the following types of marks as potential citations under section 25(1)(a) or (b) of the Act:
- Marks that are registered
- Marks whose registrations have expired due to the failure of their owners to renew the registrations, where less than a year has passed since the date that their registrations expired
- Marks from pending applications that have earlier priority, including marks at examination, accepted for advertisement, awaiting registration and in abeyance