In order to obtain a UK trade mark registration, an application must be lodged with the UK Trade Mark Registry, which is part of the UK Intellectual Property Office (UKIPO). There are no nationality restrictions concerning who may own a UK registration, and both natural and legal persons may file applications.
A trade mark application must include full details of the applicant(s), a representation of the mark and a list of all the goods and/or services, categorised according to a standard classification system, for which registration is sought. The correct fee must be paid, the cost of the application depending upon the number of classes into which the applicant’s goods/services fall.
The Trade Marks Registry initially checks the application to ensure that certain formal requirements are satisfied. This is followed by a substantive examination of the application to assess whether the trade mark applied for meets the criteria for registration. In particular, the examiner will consider whether there are any ‘absolute grounds’ (reasons why the trade mark applied for is inherently unregistrable) or ‘relative grounds’ (trade marks already on the register that conflict with the mark applied for) for refusal, and will issue an examination report that details any findings. Currently, examination reports are issuing within eight weeks of filing.
The examiner will assess whether the sign for which protection is sought is a trade mark and, if it is, whether it is the type of trade mark that should be registered.
A trade mark registration confers upon the proprietor the exclusive right to use the trade mark, but this is limited by a general principle that one trader should not be able to monopolise any mark that should be free for all to use. Objections will therefore be raised to trade marks that (i) describe characteristics of goods or services for which protection is sought (e.g. the word ORANGE for fruit), (ii) are devoid of distinctive character (e.g. common geographical names or surnames, or laudatory terms such as FIRST CLASS), or (iii) are customary in common language or in trade.
Other marks that may be refused under absolute grounds include those which are contrary to public policy or accepted principles of morality, or those which are of such a nature as to deceive the public (e.g. SILKY for cotton garments).
The Registry is unable to refuse an application on the basis of earlier trade marks, which means that refusal on so-called ‘relative grounds’ will only happen following a successful opposition by the owner of a relevant earlier mark. This means that at the examination stage, earlier trade marks will not block the acceptance of an application. Accordingly, the onus is on owners of earlier marks to use the opposition procedure to challenge the acceptance of an application.
Nevertheless, the Registry will perform a search of the trade marks register as part of the examination of the application, the results of which are conveyed to the applicant, allowing an informed choice as to whether or not to proceed with the application. If the applicant decides to continue with the application, the examiner will notify the owners of the earlier marks identified in the search of the publication of the new, potentially conflicting, application, giving them opportunity to oppose. Conflicting marks fall into two main categories, first, where both the trade marks and the goods/services are identical (so-called ‘double identity’), and secondly, where similarities between the respective trade marks and the goods/services are likely to cause confusion on the part of the consumer.
Responding to Examination Reports
As well as details of conflicting trade marks, examination reports may include objections to the inherent registrability of the trade mark, or inconsistencies or errors in the list of goods/services. The applicant has one opportunity to argue against cited earlier trade marks although, as indicated, the examiner will not refuse an application on the basis of citations alone: a failure to respond will not therefore prejudice or delay the application. However, all other objections must be dealt with before the application can continue.
Publication for Opposition
Once all objections have been successfully overcome, the application is published in the Trade Mark Journal. Publication marks the start of a two month period (which may be extended to three months upon the filing of a Notice of Threatened Opposition) during which opposition may be filed. About 5% of UK applications are opposed, and most oppositions are filed by the owners of earlier trade marks.
Registration and Renewal
If the application makes it through the opposition period, the application will proceed to grant and a certificate of registration will be issued. A UK trade mark application can be granted in as little as five months if no objections are raised during examination, and no oppositions are filed.
A UK registration lasts initially for ten years from the filing date. Provided that the renewal fees are paid every ten years, the registration may last indefinitely, although it is important to note that it will become vulnerable to revocation, in whole or in part, if the trade mark is not used on all of the goods or services covered by the registration for a continuous period of five years.
For more information and advice on any aspect of registering your trade mark, please contact us.