It is sometimes thought that a solicitor or trade mark attorney must be instructed to register a trade mark. While this is a misconception, anyone thinking of applying to register a mark without a lawyer would do well to study the legal and procedural issues, as there are plenty of pitfalls for the unwary.
The Intellectual Property Office (IPO) is the official government body responsible for intellectual property rights in the United Kingdom. The IPO will receive and process trade mark applications and where an application is successful, will register the trade mark.
The IPO will consider whether the words, logos, pictures or other signs constituting the trade mark are likely to be seen as a trade mark by the general public. Accordingly, the IPO will object to marks which simply describe goods and services, those which are customary in the line of a trade and those which are not distinctive. Invented words, which are not obviously associated with particular goods or services, will usually be considered distinctive and therefore capable of registration.
In addition, a trade mark application may be unsuccessful because there is an identical or similar trade mark already on the register, which conflicts with the mark being applied for. The rules on conflicting trade marks are set out in Section 5 of the Trade Marks Act 1994.
A search of the UK trade mark register should be carried out before submitting a UK application to check whether any conflicting marks are already on the register. A search can be carried out at the Intellectual Property Office in Newport or at the British Library’s Business and Intellectual Property Centre in London. However, in most instances, it will be more convenient to search using the IPO’s website.
The European Community Trade Mark register may also be searched. A business may have acquired the right to use a mark in the UK by registering it as a Community Trade Mark (CTM). The Office for Harmonization in the Internal Market (OHIM) is the body responsible for registering CTMs, and a trade mark search can be conducted on its website. Note: searches of the UK register on the IPO’s website will return CTMs as well as UK trade marks. These are easily identifiable in the IPO’s website search results because the trade mark number is prefixed with an “E”.
It may be possible to apply to register a trade mark which conflicts with an earlier mark, although the owner of the existing trade mark may be notified and may decide to oppose the application. In addition to checking for registered trade marks, an applicant should consider whether a conflicting unregistered mark is in use. An unregistered mark can prevent the registration of a conflicting mark. It is, unfortunately, impossible to obtain comprehensive information on unregistered trade mark rights; in-depth knowledge of the relevant industry, trade directory searches and internet searches may serve as good starting points, but they are by no means conclusive.
The UK application process
Once formally submitted, only certain types of amendments are permitted (e.g. restricting the scope of the goods and services covered by the application). Accordingly, it is essential to ensure the application form is completed correctly first time.
An application can be made either in hard copy using form TM3, which can be downloaded from the IPO website, or online using form eTM3. The application will ask for an illustration of the mark to be attached and whether the trade mark is part of a series. A series may include a maximum of six marks. Under the Nice Classification, goods and services are divided into 45 classes. An application must specify the goods or services to be covered by the the mark. Classes 1 to 34 cover goods, while classes 35 to 45 cover services. A description of each class is available on the IPO website. The inability to add new goods and services to an application at a later date means it is vital to ensure the classes are correctly identified and listed. Careful consideration must therefore be given to which classes the business currently falls in to, together with future plans for expansion into other areas where the trade mark may be used.
Upon receipt of the application to register, the IPO will carry out its own searches and will, in due course, send a report to the applicant. The IPO may raise an objection if it feels the mark is not really a trade mark. The IPO may also raise an objection if the mark potentially conflicts with an existing trade mark, in which case it will usually notify the applicant of an intention to contact the owner of the existing mark. A single written submission can be made to the examiner to suggest ways in which the application can be taken forward without having to contact the owner of an existing mark and the examiner will then decide whether sending a notification is necessary. Because only one written submission can be made, it may be worth speaking to the examiner on the phone before making the submission. Another way of dealing with prior rights is to contact the owner of the pre-existing trade mark with a view to obtaining their consent to registration. However, the owner of an existing mark will be within their rights to refuse consent, or to ask for costs associated with dealing with the request.
If there are no objections, or if any objections are overcome, the trade mark will be published in the Trade Marks Journal. A period of two months is set aside for any objections to registration to be made, and this may be extended in some circumstances. If no challenges to the application are received in this time, or if any challenges are overcome, registration is completed and a registration certificate is sent to the applicant.
Costs and time-scales for UK applications
The costs associated with a standard application to register a trade mark are currently £200.00 to register a mark in one class of goods or services, with an additional £50.00 being payable for each additional class. An application for the registration of a series of marks may include two marks before an additional £50.00 is payable in respect of each additional mark up to a maximum of six marks. An online application will attract a £30.00 discount.
In October 2009, the IPO introduced the online Right Start application procedure. This procedure provides additional assistance for non-professional applicants. Telephone assistance is available to assist with the completion of form TM3. Half of the standard fee must be paid upfront. The examination report is then emailed, usually within ten business days, whereupon the balance of the application fee becomes payable if the application is to proceed, although the applicant is free to abandon the application at this point. The online filing discount is not available for Right Start applications.
The IPO will not usually refund application fees if an application is unsuccessful, as they cover the cost of examining an application and other administrative costs.
If there are no objections raised then the entire application process will usually take around six months. Registration will take longer if objections are raised, although the precise time taken will depend on the number and complexity of objections. Time-scales of over two years from making an application to its registration are not unheard of, so it is important to ensure from the outset that sufficient time and resources can be set aside, should the process become protracted.
A word of warning
Whilst it is entirely possible to complete the above steps without the assistance of a solicitor or trade mark attorney, in many cases it may be best to instruct one, particularly where complications may arise. As with all decisions involving legal spending, you should aim to strike the right balance between costs and risks. It’s always tempting to cut legal fees, but this can be a false economy and the consequences of a faulty application can be disastrous for a business. A good solicitor or trade mark attorney will be familiar with the registration procedure, the best search methodologies and the current law and practice relating to registrability.
This article was researched and written by Aasim Durrani.