What is a UK trade mark?
A trade mark can be any sign which is capable of graphic representation and capable of distinguishing the goods and/or services of one trader from those of another.
Although some of the most common trade marks are word marks, they might also be logos, or more unusual marks such as sound marks, 3D marks or motion marks.
Generally, registration of a word trade mark in block capitals will embrace any reasonable graphic presentation of that word and so could be seen as giving optimum protection to the word. If use is in a highly stylised manner, registration in that format is also worthy of consideration. However, it should be noted that, once a trade mark has been registered for 5 years or more, an uninterrupted 5 year period of non-use would render the registration vulnerable to cancellation. A UK trade mark registration confers upon its owner the exclusive right to use the registered trade mark in respect of those goods and/or services for which the trade mark is registered. A UK registration covers the UK and Northern Ireland, including the Isle of Man.
It is possible to seek UK trade mark registration in up to 45 classes of goods and services, but upon the making of a UK trade mark application it is necessary to give a statement to the effect that the applicant either uses or has a bona fide intention to use the mark, and this is for all the goods and services specified. To cover a significant number of classes would increase costs, since official fees are charged per class by the UK Intellectual Property Office (UKIPO). There is the added consideration that, if a mark is registered for multiple goods and services but then not used for some or all of them, the registration could be vulnerable to cancellation on non-grounds at least in respect of those goods or services for which there has been a failure to use the mark.
UK trade mark registration procedure is relatively swift, with it being possible to secure a registration in 4 to 5 months if neither official objection by the UKIPO nor third party oppositions are encountered. Such obstacles would hinder or could prevent the application from proceeding to registration and would give rise to additional costs.
Prior to the filing of any new UK trade mark application and certainly before putting the proposed trade mark into use, trade mark availability searches are recommended to detect any registered trade mark infringement risk as well as potential obstacles to trade mark registration.
UK trade mark applications are examined by the UKIPO to determine whether the subject trade mark is sufficiently distinctive to be monopolised by a single trader or, should the trade mark be too descriptive of the goods and/or services specified, official objection may be raised. A search for earlier applications or registrations of confusingly similar trade marks in the names of third parties is also conducted, but the results of this are for the applicant’s information only. It will be up to earlier trade mark owners to oppose registration should the application be published for opposition purposes.
Examination of an application by the UKIPO usually takes place within a month of the filing of the application and, if no objection is encountered, the application would be published for opposition purposes. There is a compulsory two month period for third party oppositions, although this period may be extended once by one month and upon third party request. Absent any opposition, a registration would usually issue within one month of the close of the opposition period. Any UK trade mark registration secured would be renewable at 10 yearly intervals, calculated from the date of application, and with official fees being payable upon each renewal.
Third party challenge is possible, even after registration. Invalidity applications may be filed on the basis that the subject trade mark is devoid of any distinctive character or is entirely descriptive, or revocation applications may be filed based on earlier third party rights to an identical or confusingly similar mark. There are circumstances in which time a trade mark has been on the Register could deflect these types of attack upon a trade mark registration, such as the mark becoming distinctive since registration even if it was not at its application date or, in the case of earlier rights, a period of acquiescence by the earlier trade mark owner to use and registration of the later registered mark could remove any basis for challenge.
We regularly assist our clients in choosing trade marks which are available for use as well as for trade mark registration in the UK.
Our pre-application services include:
- UK trade mark availability searches.
- Company name and domain name enquiries.
- Arranging investigations into use of third party trade marks for possible vulnerability of registrations on non-use grounds.
- Negotiations with earlier trade mark owners with a view to addressing obstacles posed by their trade mark rights.
In securing and maintaining registration our services include:
- Analysis of goods and services offered for correct classification on the Trade Mark Register.
- Drafting of specifications of goods and services.
- Advice upon appropriate presentation of trade marks for registration, including possible series applications.
- Advice upon official objections raised and preparation of responses thereto, including written submissions and hearings before the UKIPO.
- Representation of clients in opposition proceedings.
- Negotiation of co-existence agreements.
- Coordination of future renewals of trade mark registrations.
- Protection of trade marks beyond the UK.
- Assistance in licensing or assignment of trade mark rights.
- Enforcement of Intellectual Property Rights.
- Setting up watch services to avoid dilution of registered rights.