Trade Mark Registrations UK - The Process
This article will discuss the process that an application in the UK must go through in order to acquire registered status.
UK Trade Mark Application
A UK Trade Mark Application is filed online using a form TM3.
Whilst the form is fairly simple it is important that all information is entered correctly and that each section is completed in line with various trade mark regulations. Once the trade mark application has been filed it is difficult to make changes to the application. Some details are not possible to change at all.
Examination
The application (once filed and paid for) will be assigned to a Trade Mark Examiner. The Examiner will examine the trade mark application under two sets of grounds (as set out in the Trade Marks Act 1994).
1) Absolute Grounds for Refusal
An Examiner will assess whether the proposed trade mark has sufficient distinctive qualities so as to function as a trade mark. The function of a trade mark is to distinguish the goods /services of one undertaking from those of another.
Trade marks which fall foul of this section are marks which are generic or lack any imaginative thought or marks which indicate the kind, quality, quantity, intended purpose, geographical location or time of production.
It is important therefore to ensure (prior to application) that the mark will not fall foul of these grounds.
2) Relative Grounds for Refusal
The Examiner will conduct a trade mark search of the UK and EU trade mark registries to identify any existing identical or similar registered or pending trade mark which may be cited against the proposed trade mark.
Once the Examiner has examined the trade mark application he/ she will write the applicant (or its representatives if a firm of solicitors/ attorneys have been appointed) and will provide their report on the above (i.e. whether the Examiner has any Absolute Grounds objections and/ or whether the Examiner intends to notify the owner of an earlier similar trade mark).
If an Absolute Grounds objection is raised the applicant will be given 2 months to defend the objection and attempt to overcome it. If it cannot be overcome the trade mark application will be refused.
If the Examiner has raised marks which he/ she thinks are similar and therefore notifications are intended to be sent the applicant will be given 2 months to persuade the Examiner that the owners of the trade marks raised should not be notified.
Once a final decision has been made (or if the applicant decides not to contest the examination report) the applicant must make a decision as to whether it withdraws the application or allows it to go forward which will result in notifications being sent.
Publication
The owners of the marks raised in the Examination report will written to and be given the opportunity to oppose the application during what is known as the ‘publication stage’ which lasts for a period of two months.
n.b .The Examiner will notify the owners of earlier UK marks automatically and any owners of EU marks where they have opted-in to the notification service. Therefore, it will be for the holder of the earlier mark to seek to block the application if they so wish. This is intended to ensure that applications will only be blocked where they affect others’ trading interests.
If an opposition is raised the applicant has the option to withdraw the application or fight the opposition. Before the applicant decides to fight the opposition it must be aware of the costs implications.
Registration
If no opposition is raised during the 2 month publication period the mark will become registered. The registration lasts for 10 years and can be renewed every 10 years after that.
The trade mark registration gives the owners an exclusive right to use the trade mark in relation to the relevant goods and services to which it is registered for.