Registering a trade mark gives the owner the exclusive right to prevent others from using that mark without their consent. Therefore, it is important to protect your brand and by extension your business by applying to register your mark for maximum protection.
We are UK trade mark application specialists and our clients benefit from the knowledge that they have experienced solicitors filing their application.
The application to register the trade mark is made online and contains the following information:
- A request for the registration of a trade mark;
- A statement of the goods and or services for which the mark is being registered;
- The name and address of the applicant; and
- A clear representation of the mark.
At present the current disbursements, these being fees charged by the Intellectual Property Office, are for each application £200 and for each additional class £50.
There are 45 Nice Classifications in which the trade mark can be registered and it is important that you choose the correct classes to register your trade mark in. Classes 1 to 34 relate to goods and classes 35 to 45 relate to services. It is important that you do not simply seek to rely on the classification heading, also known as the general indications, and that precision is used when selecting items in the alphabetical list.
An application made for a UK trade mark can be backdated in the UK by up to six months by claiming the date of an earlier application made in a Convention country. This is a country which has ratified the Paris Convention. However, to claim priority the earlier application must have been made in respect of the same goods or services and the application must be made within six months of the earlier Convention application. On this basis the UK trade mark application would be deemed to have the earlier filing date for the purpose of assessing its earlier rights.
The Registrar examines the application in light of the absolute grounds, eg to determine whether or not the mark is distinctive and is not descriptive, whether the mark has become customary in the applicants line of trade and whether or not it is offensive or descriptive. If any of the absolute grounds apply then the Registry will raise and explain these in their report. Since 2007 the Registry no longer raises objections based on relative grounds as these are now raised by opposing parties to prevent registration.
The Registry will notify the applicant of any earlier rights which they have identified and they will also notify the owner of the earlier rights of the application made by the applicant. The decision is then for the applicant as to whether they wish to proceed with the application or be faced with an opposition from the earlier rights holder.
If the applicant receives an objection from the Intellectual Property Office there is a period of time allowed to persuade them that the objections are not justified or that they must be overcome. It is also open to the applicant to make an application to have a formal hearing with a Hearing Officer to put forward their arguments.
Applicants may be permitted to amend their application, such as restricting the specification or services or goods but beyond this only obvious errors, errors of wording or copying and their name and address.
The application will be refused by the registrar if the applicant fails to:
- Satisfy the registrar that the requirements for registration have been met;
- Amend the application so that it meets the requirements; and
- Respond before the end of the specified period.
If there are no objections raised to the registration of the mark then it will be advertised in the Trade Marks Journal. There is then a two month period which allows anyone, whether or not they have been notified, to file an opposition. It must be noted that this can be extended to three months by notification to the Intellectual Property Office.
UK trade marks are registered for a period of ten years from the date of filing the application. The trade mark can then be renewed indefinitely for further ten year periods.