Trademark Re­gis­tra­tion

Trademark re­gis­tra­tion follows a very strict ap­plic­a­tion process in the UK and is subject to clear legal guidelines regarding trademark law and brand pro­tec­tion which define the re­quire­ments that must be fulfilled in order for a trademark ap­plic­a­tion to be filed. The UK In­tel­lec­tu­al Property Office (IPO) is the central authority re­spons­ible for trade­marks re­gistered in the UK. Trade­marks requiring in­ter­na­tion­al pro­tec­tion or pro­tec­tion in the EU must follow separate ap­plic­a­tion pro­ced­ures, as UK trademark law doesn’t extend out of the UK. This article will list the steps for trademark re­gis­tra­tion as well as the costs for brand ap­plic­a­tion in the UK.

UK trademark law has clearly defined what qualifies a product or service to be re­gistered as a trademark. Before con­sid­er­ing a trademark ap­plic­a­tion, it’s important to check that the object of the desired trademark fulfills the criteria of a protected trademark under the IPO as well as to determine whether it is in conflict with pre-existing brands – brands that have already been re­gistered with the IPO by a com­pet­it­or.

Trade­marks are covered by the Trade Marks Act 1994 and are defined as follows:   “In this Act a “trade mark” means any sign capable of being rep­res­en­ted graph­ic­ally which is capable of dis­tin­guish­ing goods or services of one un­der­tak­ing from those of other un­der­tak­ings. A trade mark may, in par­tic­u­lar, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.” The Trade Marks Act 1994 also allows for the re­gis­tra­tion and pro­tec­tion of the following marks:

• Cer­ti­fic­a­tion mark: Marks used to verify that a good or service was provided by members of a par­tic­u­lar union or or­gan­isa­tion (see section 50).
• Col­lect­ive mark: Trade­marks or service marks used to indicate mem­ber­ship in a union, as­so­ci­ation, or other or­gan­isa­tion (see section 49).

Trademark clas­si­fic­a­tion is also used to determine the level of pro­tec­tion that a mark will receive. Trade­marks are clas­si­fied under the following four terms, listed in order of most to least pro­tec­tion:

• Dis­tinct­ive: The strongest mark, dis­tinct­ive trade­marks include terms which are created spe­cific­ally for trade­mark­ing purposes. A dis­tinct­ive mark has no other meaning outside of the product or service that it describes, and the word used in the mark (e.g. Skittles) was not a real word prior to as­so­ci­ation (i.e. can’t be found in the dic­tion­ary). Words used in dis­tinct­ive marks must bear no re­semb­lance to real words.

• Arbitrary: Common words or symbols with no relation to the product or service which take on a new meaning as a result of as­so­ci­ation are included under arbitrary marks. Examples of arbitrary trade­marks include brands such as Apple and Amazon.

• Sug­gest­ive: Trade­marks which describe a product or service in­dir­ectly can be con­sidered sug­gest­ive marks. These can include product names such as Band-Aid or Google, but do not include any direct de­scrip­tions. Sug­gest­ive marks are the second weakest trademark.

• De­script­ive: The weakest mark, de­script­ive trade­marks require proof of a secondary meaning in order to be valid. These are generally difficult to register. The mark (e.g. American Airlines) must be shown to achieve a higher meaning through its use before being con­sidered for trademark re­gis­tra­tion, or can become a dis­tinct­ive mark through the addition of other elements to the name or logo.

Items not allowed to be trade­marked include content which is offensive, contains curse words or por­no­graph­ic images, describes the goods or services it relates to, is mis­lead­ing, is a 3-di­men­sion­al shape as­so­ci­ated with the trademark (e.g. can’t trademark the shape of an egg for eggs), is too common or non-dis­tinct­ive, or looks too similar to state symbols such as flags or hallmarks, as defined by the World In­tel­lec­tu­al Property Or­gan­isa­tion Guidelines. Trademark clas­si­fic­a­tion also requires ap­plic­ants to choose a class for their trademark. Classes 1-34 apply to goods, and classes 35-45 apply to services. The clas­si­fic­a­tion search tool TMClass can help you if you’re unsure in which class your trademark belongs.

The steps for trademark ap­plic­a­tion and upkeep/renewal vary depending on trademark clas­si­fic­a­tion and use. The process of verifying trademark re­gis­tra­tion goes as follows: Ap­plic­a­tion, IPO review, mark pub­lic­a­tion, re­gis­tra­tion cer­ti­fic­a­tion, and re­gis­tra­tion renewal.

Ap­plic­a­tion

Ap­plic­a­tions can either be sent online or by post using paper forms, and have as­so­ci­ated non-re­fund­able fees. The cost options and their related re­quire­ments are outlined by the IPO. It’s important to note that payment of ap­plic­a­tion fees does not guarantee re­gis­tra­tion, and ap­plic­a­tions which get rejected will not have their fees refunded.

USPTO review

Ap­plic­a­tions received by the IPO will then be sent to an examining attorney to verify that they have met all of the minimum filing re­quire­ments and paid the ap­pro­pri­ate ap­plic­a­tion fees. You’ll receive feedback within 20 days in the form of an “ex­am­in­a­tion report”, and then have up to 2 months to resolve any problems found by the ex­am­in­a­tion. In the case of problems, you have multiple options: Request a hearing, file evidence of trademark use, divide your ap­plic­a­tion, or provide letters of consent from previous trademark owners.

Mark pub­lic­a­tion

Ap­plic­a­tions that have passed the examining attorney will be published in the IPO’s trade marks journal. Notice and date of pub­lic­a­tion will be sent to the applicant, and potential opponents of the re­gis­tra­tion have two months to file their com­plaints. If op­pos­i­tions are filed, you have various options for your ap­plic­a­tion, including with­draw­ing your ap­plic­a­tion, speaking to the op­pos­i­tion, or defending your ap­plic­a­tion. Keep in mind that ap­plic­a­tion defense will likely incur legal costs.

Re­gis­tra­tion cer­ti­fic­a­tion

Marks that have passed in­spec­tion by the IPO examining attorney and received no op­pos­i­tion (or un­suc­cess­ful op­pos­i­tion) following pub­lic­a­tion will then be issued a cer­ti­fic­ate of re­gis­tra­tion. Notice of allowance is issued by the IPO following the initial pub­lic­a­tion of a mark. Re­gistered ap­plic­a­tions guarantee your trademark 10 years of pro­tec­tion in the UK.

Re­gis­tra­tion renewal

Re­gis­tra­tions which have received a cer­ti­fic­ate and filed the ap­pro­pri­ate main­ten­ance documents are up for renewal every ten years and can be renewed in­def­in­itely. The renewal can be done online up to 6 months before the ex­pir­a­tion of the mark and 6 months after, but beyond that time frame must be done by post.

Trade­marks which have received federal re­gis­tra­tion now exercise the sole right to use of the content contained within that trademark. But en­force­ment of trademark re­gis­tra­tion is the re­spons­ib­il­ity of the trademark holder. While the IPO will not issue new federal re­gis­tra­tions to in­fringing marks, they will also not monitor possible in­fringe­ments. Violation of a trademark right can be brought to legal action by the trademark holder, and in­fringe­ment will be de­term­ined by the courts. Trademark holders also reserve the right to sell their brands or grant rights to third parties.