Today we will tell you about one more successful case of registering a trademark − with a partial refusal of Sakpatent to register and a successful appeal of this decision.
The Client applied to Just Advisors with a request to register the Orchid22 trademark in an expedited manner.
Lawyers prepared and submitted documents for obtaining a certificate to the Sakpatent for three classes of the international classification of goods and services (Nice Agreement):
A) Class 14 – Precious metals and their alloys, jewelry, precious and semi-precious stones; Time meters and other chronometric instruments;
B) Class 25 – Clothes, shoes, shawls (scarves);
B) Class 26 – Lace and embroidery, laces and belts; Buttons, pins and needles; Artificial flowers, hair jewelry and artificial hair.
Issuance of a certificate in two classes out of three
Registration was requested on an expedited basis – within 10 working days. Within that time frame, we received a positive response for classes 25 and 26. Regarding class 14, Sakpatent refused to register the trademark on the following grounds: the trademark with the name «ORCHID» has already been registered by Rolex under class 14, with international distribution under the Madrid Agreement. Rolex’s application has been given priority over the use of the trademark over our Customer’s application. Sakpatent refused to issue a trademark certificate due to the similarity of the name and product class.
Actions of Just Advisors lawyers
While studying the Sakpatent’s decision in detail, Just Advisors’ lawyers drew attention to the fact that Rolex protected products of the class with the following name: «Watches of all kinds and their components» under this trademark. Proceeding from the fact that the Client is only interested in jewelry, and not chronometric devices, we excluded from the list of class 14 products in the form of watches and their components, and left only jewelry, indicating that chronometric products and their parts are not produced by our Client.
Appeal against the decision of Sakpatent
Within the framework of the deadline for filing a complaint, Just Advisors lawyers filed an appeal with the Sakpatent Chamber, clarifying the classification of goods and services in class 14 and indicating that the full name of the Client’s trademark differs from the one already registered, including in its visual part. In the complaint, we demanded registration of class 14 under the name «Orchid22» with an updated list of products.
The appeal was granted and the protection of the Orchid22 trademark began to extend to the 14th class of the Client’s products – «Precious metals and their alloys, jewelry, precious and semi-precious stones».
Extensive experience and knowledge of legislation on the protection of intellectual property helped Just Advisors lawyers to protect the Client’s products in all declared classes, even taking into account the initial refusal.
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