TRADEMARKS FILING AND PROSECUTION IN UNITED KINGDOM
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. The protection to the owner of the unregistered trademark in United Kingdom is given under the law of passing off, although it is advisable to register the mark as it grants monopoly over the mark. The Trade Marks Act, 1994, as amended, is the current law that covers the registration of the trademarks and the protection of registered trademarks in the United Kingdom.
Trademarks in United Kingdom may be designated by the following symbol:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
|Relevant office||Intellectual Property Office (IPO)|
|Nice classification||Yes (Ninth edition)|
|Documents required for filing a trade mark application||Name and address of the applicant-list of goods and/or services-representation of the trademark-proof of payment of the prescribed fees|
|Prosecution process||Filing publication of the mark in the trademark journal opposition(there is initial two months opposition period immediately after the date of the publication, which is extendable up to three months) registration renewal|
|Registration term||10 years from the date of application|
|Renewal term||Renewable for successive period of 10 years|
Trademark searches in United Kingdom
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in United Kingdom can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of IPO to check whether similar trademark to your brand is already registered in UK or to find out who is the owner of the mark. There are three search options available on the website, first one is search by trademark number (this option allows you to search for a national UK trademark, an EU trademark, an international registration designating the EU and an International Registration Designating the UK), second one is search by owner (this option allows you to find the UK national trademarks owned by a person or company), third one is search by keyword, phrase or image. For the trademarks in Jersey and Guernsey, search the Jersey or Guernsey trademark register.
Trademark word search edition of United Kingdom follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in United Kingdom can be conducted for the desired class and associated classes.
It is advisable to conduct comprehensive trademark clearance search in United Kingdom to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in United Kingdom. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in United Kingdom can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in United Kingdom
A person may file multi-class or single class trademark applications in United Kingdom.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary applications in United Kingdom:
Ordinary trademark applications filed in United Kingdom are applications without claiming any priority. In United Kingdom an ordinary application essential requirements for filing date is given under section 32(2) of the act in which a request for registration is taken up to be the provision of form TM3, the name and address of the applicant, a statement of the goods and/or services for which it is sought to register the mark, a representation of the mark. Multi class trademark applications may also be filed in European Union. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in United Kingdom/Convention trademark applications European Union:
A priority trademark application may be filed in United Kingdom. A priority trademark application should be filed in United Kingdom within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in United Kingdom within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
United Kingdom follows the nice classification of classes. Intellectual property offices around the world uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
It is important to choose the correct class and terms because the trademark will be protected for the goods and/or services as mentioned in the application. Once the application is filed, one cannot add extra goods or services.
Further details regarding filing of trademark applications can be accessed on the Trademark registry’s website, United Kingdom at the following link: www.gov.uk
Trademark Examination in United Kingdom
In the examination process the examiner will look into the mark whether it has met all the requirements for registration or not. If a mark fails to satisfy the requirements it may be refused by the office. This is known as Absolute grounds. The feedback on the application will be given within 8 weeks or 40 working days.
If the examiner has no objection in regard to the application, then the application will be published in the trade marks journal i.e. it will be made public that the said mark has been applied and for the respective goods and/or services for 2 months, which can be extended to 3 months. Before your trademark is registered, it is open for third party observations.
Trademark opposition in United Kingdom
On the successful completion of the examination process the trademark is published in the trademark journal which means it is open for third party observations and is open to opposition for two months, which can be extended up to three months. If the parties wish to negotiate a settlement the can file request for the “cooling off” period. The request must be filed within two months allowed for the applicant to submit the notice of defense. The duration of cooling off period is nine months and parties can file a request for extension by a further nine months by submitting a request for an extension to the cooling off period.
If the parties do not enter into cooling off period, then a two months time is given to file the notice of defense and counterstatements. Once the formalities check is over, the parties will be provided with the timetable to file the evidence and/or written submissions.
Once the period for filing evidence or submissions are complete, the parties are called out for the final submissions and at this stage parties can also request a hearing.
After this the decision of tribunal is made whether the mark will proceed for registration or not.
Trademark registration in United Kingdom
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of filing of the application and the registration certificate is issued.