Complete Examination of Trademark Applications

Resolution of the Executive Committee, London, United Kingdom
2 to 4 October 2023

“Complete Examination of Trademark Applications”

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its Executive Committee held in London, United Kingdom, 2 to 4 October 2023, passed the following resolution:

RECOGNISING that Trademark Offices review trademark applications according to local law and practice and may refuse trademark applications on various grounds, including lack of distinctiveness, prior confusingly similar marks, and indefinite descriptions of goods/services,

NOTING that in some jurisdictions, examination reports are being issued that are incomplete, by raising a first set of substantive issues that must be dealt with before moving on to a second set of substantive issues,

FURTHER RECOGNISING that dealing with substantive issues one at a time due to an incomplete examination of a trademark application can lead to prolonged prosecution and increased costs to the applicant,  

URGES Trademark Offices to avoid incomplete examination of applications and endeavour to conduct a complete and comprehensive examination of all substantive issues at initial examination, and

FURTHER URGES that should a Trademark Office wish to allow new issues to be raised after initial examination, they limit such situations to inadvertent omissions or supervisor-level review.