Systems with Substantive Examination (Including Relative Grounds)
Examples: United States (USPTO), Russia (Rospatent), China (CNIPA), Canada (CIPO), and many others.
Process: In these systems, examiners actively search for prior registered or pending trademarks that might conflict with the application. If a potentially confusingly similar mark is found, the examiner raises an objection, and the application may be refused unless the applicant successfully contests the citation.
Outcome: These systems aim to grant «stronger» rights upon registration, as a thorough check for conflicts has already been conducted. However, the process can be longer and more costly if objections arise.
Systems with Limited or No Ex Officio Relative Grounds Examination
Example: European Union Intellectual Property Office (EUIPO) for European Union Trade Marks (EUTMs).
Process: EUIPO primarily examines applications on absolute grounds, ensuring that the mark is distinctive, not descriptive, and does not violate public policy. While EUIPO conducts a search for potentially conflicting earlier EUTMs (and national marks, if the applicant requests and pays for national searches), it does not ex officio refuse an application based on any revealed conflicting right. Instead, it informs owners of earlier EUTMs or EUTM applications about the new application.
Reliance on Opposition: The burden falls on the owners of earlier rights to monitor new applications and file an opposition if they believe a conflict exists. If no opposition is filed (or if an opposition fails), the mark proceeds to registration, regardless of how similar a new trademark application is to any earlier mark.
Consequence: This approach can lead to more applications being published, relying heavily on existing trademark owners to challenge conflicting marks. Critics argue this may allow «weaker» marks (in terms of conflict) to proceed to registration if unopposed. Notably, national trademark offices within European countries may have different procedures for national applications, sometimes including relative grounds examination.
Comparative Trademark Systems: Russia vs. European Union
| Aspect |
Russia |
European Union |
| Examination Type |
Substantive examination both on absolute & relative grounds |
Substantive examination only on absolute grounds |
| Opposition System |
Informal objections by third parties |
Formal post-publication opposition process |
| Risk of Conflicting Marks |
Lower (due to thorough examination) |
Higher (due to lack of substantive review) |
Understanding these differences allows businesses to tailor their trademark strategies to local requirements and maximize intellectual property protection.
In Summary:
Trademark examination approaches differ significantly, particularly regarding relative grounds (conflicts). Systems like EUIPO (for EUTMs) rely heavily on third-party oppositions to flag conflicts, while systems like Russia’s or the USA’s involve examiners proactively identifying and objecting to such conflicts. Pre-filing clearance searches are widely recommended by IP professionals to enhance registration success and avoid future legal issues, especially for jurisdictions where the Patent Offices conduct ex officio examination of prior rights and citations can be reliably predicted.
