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Trade Mark Registration

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In the United Kingdom, trade mark registration is primarily governed by the Trade Marks Act 1994 (the "TMA"), as amended. Typically, businesses obtain trade mark registration for their trading name and logo, or for a unique product or service that they provide. Under the TMA, the owner of a registered trade mark has exclusive rights to that trade mark, which is infringed by use of the trade mark in the UK without its consent. Please see our trade mark dispute page for further information on your options should a third party infringe your registered trade mark.

Registered trade marks in the UK are classified in accordance with the NICE Classification, an international trade mark classification system, to which the European Union Intellectual Property Office ("EUIPO") and the World Intellectual Property Office ("WIPO") are also signatories. There are 45 different classes in which your trade mark could be registered, with 34 classes applying to goods and 11 applying to services. As these classes only provide a broad indication as to the goods and services that fall within the same, it is common that trade marks (particularly those trade marks that protect a brand name or business logo) overlap the customer base of that business. When investigating the scope of your trade park, our trade mark solicitors will identify those goods and services that are more relevant to your business.

If you need support in applying for a trade mark, call Forbes Solicitors today or get in touch here.

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FAQs

What can and cannot be registered as a trade mark?
 
 

In order for trade mark registration to be obtained in the UK, the TMA sets out that the proposed trade mark must be capable of:

(a) being represented in the trade marks register in a manner that allows the UK Intellectual Property Office ("IPO") and other authorities to determine the subject matter of that trade mark, and protection afforded to the holder; and

(b) distinguishing goods and services of one undertaking from those of other undertakings.

As technology has improved over recent years, the extent to which trade marks are capable of being represented on the register has increased significantly, with registration being possible for colours, sounds and even multimedia motions. That being said, the vast majority of trade mark applications are for word marks (such as for a product name) or figurative marks (such as a product or business logo). Our trade mark solicitors will help advise as to whether your trade mark satisfies these requirements and whether or not it would be prone to an objection based on the absolute grounds for refusal under the TMA.

What are the costs for a trade mark application?
 
 

The costs of filing a UK trade mark application varies depending on the number of classes that you want to register the trade mark in, in addition to which application procedure you wish to. The IPO currently has in place the following application services:

(a) Standard examination service: here, the IPO's fee totals £200 for registration in one class, with a further £50 fee for any additional class that you wish to register within. For standard applications filed online, a £30 discount will apply. Once a trade mark application has been filed via the standard examination service, the IPO will send an examination report, setting out whether the proposed trade mark fulfils the requirements for registration under the TMA, and whether there are any existing similar or existing trade marks that have already been registered (please see our below analysis in this regard); and

(b) Right start examination service: here, again, the IPO's fee totals £200 for registration in one class, with a further £50 fee for any additional class that you wish to register within. The benefit of this service is the 50% of the IPO's total fee is payable on submitting the trade mark application; thereafter, as with the standard examination service, the IPO will then send its examination report, allowing you to discuss any issues that may arise. The remaining 50% of the IPO's total fee will only be payable in the event that you are satisfied with the contents of the examination report and wish to proceed with your application.

Our trade mark solicitors act for clients for a competitive fixed fee, under which we will produce a Trade Mark Report, analysing the registrability of your proposed trade mark against any existing trade marks and the absolute and relative grounds for refusal under the TMA. Thereafter, we can assist you with dealing with the trade mark registration on a fixed fee basis. Please contact us by clicking here to discuss your requirements further with one of our trade mark solicitors and for a no obligation quotation.

What are the absolute grounds for refusal of a trade mark?
 
 

When considering a trade mark application, the IPO will first assess the characteristics of the proposed trade mark against the absolute grounds for refusal under the TMA, of which, a trade mark will not be registered if any of the following apply:

(a) trade marks fail to satisfy the representation requirements, as noted above;

(b) trade marks which are devoid of distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; or

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language, or in the bona fide and established practices of trade.

However, a trade mark application will not be refused, if, before the date of the application, the trade mark acquired a distinctive character as a result of the use of it. This is generally established by long use of the trade mark and reputation that the same has with ordinary members of the public. Prior to submission of your trade mark application, our trade mark solicitors will first advise as to the likelihood of an objection being raised by the IPO and what your options would be.

My trade mark is similar to a trade mark that has been registered by a third party, can that third party oppose my trade mark application?
 
 

Providing that your trade mark satisfies the requirements for registration and the IPO does not raise an objection based on the absolute grounds for refusal, it will then be published on the trade marks journal for a period of 2 months, during which time an opposition may be raised by a prior rights holder. At this time, the IPO will also write to the holders of existing similar or identical trade marks, notifying them of your application and informing them of the possibility of raising an opposition. Such an opposition would be based on the relative grounds for refusal under the TMA, which can only be invoked by a third party (the IPO will not refuse an application based on the relative grounds for refusal). The main relative grounds for refusal are as follows:

(a) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected;

(b) A trade mark shall not be registered if because:

(i) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or

(ii) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected; and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

Each opposition commonly turns on whether or not there will be a likelihood of confusion on the part of the public, which would be caused by registration of the later trade mark. Key issues here will relate to the customer base of each business, the goods/services that both businesses provide, and it must be noted that evidence of actual confusion is not generally required; instead evidence of likely confusion is sufficient.

Prior to submitting your trade mark application, our trade mark lawyers/solicitors will conduct a detailed review of those existing identical or similar trade marks and the likelihood of an opposition being raised by a third party. In the event that a third party does oppose your trade mark application, then we will advise as to the next steps that are available to you in either defending your application or reaching a compromise with that third party.

A third party has opposed my trade mark application, what are the next steps and what can I do?
 
 

The TMA and Trade Marks Rules 2008 (as amended) set out the procedure in which parties must follow should they wish to oppose (or conversely, defend) a trade mark application. As set out above, an opposition must be raised within two months (unless extended) of the proposed trade mark being published on the trade marks journal.

Should you receive a notice of intended opposition after your trade mark has been published, our trade mark solicitors can advise as to the merits of the proposed opposition and what options are available to you. This may involve restricting the goods and/or services covered by your trade mark or entering into formal undertakings or a Co-existence Agreement with the opponent, both of which form the basis of a contractual relationship between both parties, setting out their respective rights and obligations and, importantly, what will happen if the a later infringement or opposition occurs. Of course, some trade mark oppositions are merely speculative and have no legal basis under the TMA or otherwise; our trade mark solicitors are best-placed to advise as to what your preferred course of action ought to be in each scenario.

An opposition must contain details regarding the existing trade mark that the opposition is based upon, a statement confirming that their trade mark has been put to use (for those trade marks that have been registered for 5 years) and a "statement of grounds", setting out why the trade mark application should not be successful. Thereafter (and generally within a further 2 month period), the applicant will have the opportunity to file a counterstatement, which rebuts the contents of the opposition, further setting out why the trade mark should proceed to registration. The period prior to filing a counterstatement also represents a further opportunity for the parties to seek an amicable solution to the opposition and via the parties' agreement, they can enter into a formal "cooling off" period, lasting up to 9 months (which can be extended by a further 9 months), in order for such to take place.

Once the counterstatement has been filed, the IPO will usually invite the parties to file evidence in support of their respective position. This is evidence of fact rather than legal submissions, and will generally relate to use of the existing and/or proposed trade mark; a successful opposition will likely hinge on establishing prior use of the existing trade mark; comparatively, an existing trade mark may be prone to a validity challenge (which may render the opposition unsuccessful), and further information in this regard can be found on our trade mark disputes page.

Upon completion of the evidence rounds, the IPO will inform the parties that the opposition can then proceed to a substantive decision, which is usually based on the papers that have been received. For oppositions that involve contentious matters of fact, it is possible to request an oral hearing in order for such to be determined; this will require representation, for which our trade mark lawyers/solicitors will be able to assist. A final decision will then be handed down by the IPO's case handler within 2-3 months, bringing the total duration of the opposition to anywhere up to several years.

It is possible to file a fast track opposition, which is helpful when seeking to reduce the long delays that take place during the evidence rounds. Should you wish to oppose a third parties trade mark application, then our trade mark solicitors/lawyers will be able to advise as to the advantages and disadvantages of each option, when considering your position.

My opposition to a third party’s trade mark was successful, am I able to recover my costs?
 
 

The traditional rule in civil litigation is that the losing party will be required to pay the reasonably incurred legal costs of the winning party. However, with the general rule with proceedings before the IPO is that costs are contributory, rather than compensatory (save where unreasonable conduct can be found on behalf of one party), such that the losing party will generally only be ordered to pay a proportion of the winning party's costs. This will include any IPO fees that are incurred (such as the opposition fee).

Throughout the opposition, our trade mark solicitors will advise as to the applicable legal costs that you may incur, in addition to whether or not those costs can be recovered if you are successful.

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Our dedicated Intellectual Property team

Daniel Fletcher

Daniel Fletcher

Solicitor

Commercial

PinCentral Lancashire

Call0333 207 1145

John Pickervance

John Pickervance

Partner and Head of Commercial

Commercial

PinCentral Lancashire

Call0333 207 1134

Katie Lee

Katie Lee

Paralegal

Commercial

PinCentral Lancashire

Call01257 240 830

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