BKIP Limited

COPYRIGHT BKIP 2019
Why choose a professional agent for registering trademark? Oct 2019
Recently, the “Reiwa” incident have aroused much controversy. The same agent registered the same trademark of the same category for different applicants. The agents which did the same were not the minority. This incident stunned many agents, and warned applicants who were considering registering trademarks.


You get what you pay! You need to choose a professional agent! You need to choose a professional agency firm!
Professional agency firms have a well-developed and efficient operating system. It helps the firms to operate effectively and save time. A professional and experienced team with post-registration consultation service and support excels in the following aspects:
1. Enquiry of trademark name and risk management of registration
The most essential element determining the result of a corporate trademark registration is the enquiry of trademark name. Although an ordinary agency firm can as well find out some similar trademarks, their searches are incomplete, and they cannot accurately analyze whether the name can be registered. Conversely, a professional agency firm can handle the job well. They conduct comprehensive search and will not submit an application without search. To best assess an agency firm’s professionalism and experience, one shall look at its trademark name enquiry. The standard of trademark application is renewed rapidly. Plus, it is done manually. Therefore, whether a name can be registered depends not only on the application standard, but also the valuable experience of the firms. Some firms with less experience and expertise may not even have the knowledge of some frequently-seen rejection reasons. How can they provide accurate name verification service to the applicants? Some ordinary agency firms may know of the test of a regular similarity enquiry, like the demonstration of the product’s features, the lack of obvious characteristics and the negative impacts etc. Without rich experience, how can they determine the above with just textbook knowledge?
2. Choosing trademark categories
A reliable trademark agency firm can provide a comprehensive trademark protection strategy for the applicants. The firm will tailor-make a suitable plan of defensive protection for the corporate. However, some agency firms do not even know which category does the product belong to and whether there are similar products in different categories. How can they provide good trademark protection for corporates?
3. Rejection and objection of trademark
The procedure of trademark registration is complicated and prolonged. During the process of registration application, if the trademark is denied, the applicants need to seek assistance from agency firms for review of refused trademark. If the trademark faces objection during trademark preliminary application publication, the agency firm will help the applicants gather sufficient evidence and file an answer. In face of review of refused trademarks and answer to objection cases, how can an agency firm without a professional team of lawyers handle them? They may advise the applicants to hire another agency firm, or instruct a staff member to draft the documents according to precedents and walk through the procedure. At last, when the review or answer to objection fails, they will notify the applicant of the denial and that they can do nothing about it.
4. Protective work after the grant of trademark certificate
After receiving the trademark certificate, there are much post-registration work, for example, points to note, follow-up developments, change of title of registrants and change of postal address. If there is a declaration of invalidation, what should the registrants do? Besides, will the change of forms of usage of the trademark constitute an infringement? Will the use of trademark by other people impact the trademark of the corporate? Without a strong and professional agency firm, the registrants cannot receive timely reminder and assistance. Trademark registration application is a highly specialized work. It is not merely an automatic submission. It also involves enquiry service lasting for a year after registration and protection service lasting for more than ten years after registration. Therefore, employing a professional trademark agency firm is necessary. Choosing a competent agency firm lays a foundation for the corporate’s development. A trustworthy and professional agency firm is your long-term business partner!
Shenzhen Benny Kong Intellectual Property Agent Ltd has expertise in domestic and foreign trademark registration, transfer of trademark and enquiry in trademark cases. We are specialized in the trademark practice area and will endeavour to provide professional service to corporates. Please dial 13392872661 (same as WeChat number) to contact Trademark Consultant Ms. Lui.