The use of logos, symbols and marks have become a popular way in which businesses convey meanings and distinguish their goods and services from their competitors. This article will explore what a trademark is, how a trademark can be registered and how to deal with any objections as well as opposing others trademark registrations too.
What is a trademark?
A trademark is governed by the Trade Marks Act 1994 and refers to a distinguishing ‘mark’ or ‘sign’ that a business can use to make its products and services easy for consumers to identify. You can register a word, sign, logo, colour, shape, font, sound, jingle or a combination thereof as a trademark. A trademark enables customers to identify goods or services as coming from a particular source which they might not have otherwise known. For a trademark to be acceptable, it is important for it to be distinctive so that consumers can distinguish your brand from your competitors. A trademark needs to be recognized as a sign that differentiates your goods or services from someone else’s.
What are acceptable and unacceptable trademarks?
There are certain restrictions on what can and cannot be registered as a trademark. If a trademark contains an emblem that has protection under an international agreement such as the Paris Convention for the Protection of Industrial Property which protects and prevents the registration and use of trademarks that are identical or similar to armorial bearings, flags and other state emblems, official signs, hallmarks and abbreviations of international government organizations. More information on the Paris Convention can be found on the World Intellectual Property Organization’s (WIPO) website.
A domain name that a company is known for on the internet must be registered with an accredited Registrar. A list of accredited and accreditation-qualified Registrars can be found on the Internet Corporation for Assigned Names and Numbers website. Being the owner of a registered trademark does not mean you can automatically use that mark as a domain name. Moreover, if a domain name has been registered, it does not mean that a similar trademark will always satisfy the requirements for trademark registration. An important distinction also needs to be made between company law and trademark law. A registered company name does not stop anyone from using a trademark that is similar to the name of a company.
There is a trademarks database available online free of charge on the Intellectual Property Office’s (IPO) website which can be used to see if your trademark is already registered. However, it should not be used to conclusively determine whether a conflicting trademark already exists as a thorough examination of all existing trademarks will be conducted upon an application for registration.
How do you apply for a trademark?
It is important to register your trademark to protect your brand. Registering a trademark enables you to take legal action against anyone who uses your brand without permission and guarantees protection against counterfeiters as well. Post-registration you can sell and license your brand as well as put the trademark symbol next to your brand as a warning to prevent others from using it.
To register a trademark, an application must be made to the IPO which will examine the application to see whether it satisfies the statutory requirements for registration.
Three important steps need to be taken to register a trademark:
- Checking if your brand qualifies as a trademark:
A trademark must be unique and can include words, sounds, logos, colours or any combination thereof. It cannot be offensive, misleading, non-distinctive or describe the goods or services it will relate to. For example, the world ‘technology’ cannot be a trademark for a technology-based company. Moreover, if you have a similar version of your trademark, you can make a series of application for up to six months. A series application requires all marks to look, sound and mean the same with little room for minor differences. You must also search the trademarks database to check if your trademark is already registered. A letter of consent can also be obtained from the holder of an existing trademark which gives you permission to register yours.
- Applying to register your trademark:
Prior to making an application for a trademark, it is important to read the guide to new applications provided by the IPO if you have not made an application before. All applications to register a trademark can be made here. To register a trademark, you will need to have the details of what you want to register and the trademark classes you want to register in, for example, food (class 43) and drink (class 1) services.
The classification system to specify the goods or services that need to be used in order to apply to register a trademark. The IPO uses a trademark classification system that groups together similar goods or services into 45 different classes. It is important to plan ahead and choose the right class for your application because once the application is filed, you cannot add more classes or pre-approved items. Choosing the wrong class could result in a worthless registration which provides no protection and adding any extra classes costs an additional £50 per class. If you are unsure regarding how to classify your trademark you can use the classification search tool TMclass which will help you search and classify your goods and/or services. In addition, you can also email the IPO classification team who will provide a response within one working day.
An initial payment of £100 needs to be made plus £50 for each additional class.
- Responding to any objections:
You will receive an examination report in 5-15 days upon submitting your application where you have two months to resolve any problems. If there are no objections it will be published in the trademarks journal for 2 months during which time anyone can oppose it. Your trademark will be registered once any objections are resolved and a certificate to confirm this has been received.
The IPO will notify you if someone has opposed your application. You will then have the opportunity to either withdraw your application, speak to the opposing party or defend your application. It will not be possible for you to register your trademark until the matter has been resolved and could result in legal costs being incurred.
A detailed guide on following an objection to a trademark examination can be found here. You will have several options such as requesting a hearing, filing evidence to overcome objections inclusive of witness statements, where necessary and/or request an extension of time to answer any objections.
The registration process takes about four months if there are no objections and a registered trademark lasts ten years.
Once your trademark is registered, you must report any changes to your name, address or email address and object to other people’s trademarks if you think they are identical or similar to yours. You can also sell, market, license and mortgage your trademark.
How do you object to other people’s trademarks?
There is a two month period in which parties may oppose an accepted registration of any trademark application advertised in the online journal. This can be done in two ways:
- Third-party observations (non-legal action)
Following an accepted and published application for registration but before it is actually registered, anyone can make a third-party observation where the IPO can be informed if there has been an error in accepting the application. However, in order to do this, the third party needs to present any relevant facts. It is important to note that these observations are not forms of legal action and are not binding. The IPO is not bound to act on them and can simply rely on evidence provided to object to an application later on.
- Opposing a trademark (legal action)
To oppose a published trademark that is in the process of becoming registered, legal action is required. A trademark can be opposed on absolute or relative grounds. Absolute grounds cover defects in the trademark itself which include the trademark being generic, non-distinctive and descriptive of the goods and/or services. Relative grounds means that there is an already existing right owned by the opponent which conflicts with the applicant’s trademark. It is important to note that anyone can oppose an application on absolute grounds but only the owner of an earlier trademark can oppose on relative grounds.
|Legal Action||What it is||Form|
|Invalidation||This allows anyone to remove a trademark from the register as if it had never been registered. An application can be made to remove the entire registration or a part of it.||TM26(I)|
|Revocation||This allows anyone to attempt the removal of a trademark from the UK register. You can apply to remove the entire registration or a part of it.||TM26(N) Application to revoke registration for reasons of non-use TM26(O) Applications to revoke registration for reasons other than non-use|
|Rectification||A legal procedure that allows anyone to apply to correct an error that has been made in the recorded details of a registered trademark||TM26(R)|
|Intervention||Anyone other than an owner who claims to have an interest in a registered trademark can intervene become involved in the post-registration of legal actions.||TM27|
For all trademark-related queries, legal professionals from the Chartered Institute of Trade Mark Attorneys can be contacted.
This article is intended for guidance only and must not be relied upon for specific advice.