Trade marks in depth

  • Posted

How can I ensure that my trade mark has the best chances of being registered ?

In order to be registered, a trade mark must be capable of graphic representation, have a distinctive character which is capable of distinguishing the goods or services of one business from those of another, and should not fall foul of the various grounds for refusal.

The trade marks Act 1994 lists the various ‘absolute’ and ‘relative’ grounds for refusal, where marks can be refused if they fall within any of the grounds listed.

Generally, marks will be refused absolutely where they are:

  • Descriptive (for example, “best fone”)
  • Where the term has become customary in current language or within a particular industry
  • Where the mark is deceptive
  • Where the mark is illegal
  • Where the mark is a protected emblem (eg Royal Coat of Arms)
  • Where the mark was applied for in bad faith
  • The relative grounds for refusal apply where a similar or identical mark has already been registered:
  • If the proposed mark is identical to an earlier mark
  • If the proposed mark is similar to an earlier mark and there is a likelihood of confusion
  • If the proposed mark is similar or identical with an earlier mark, where the earlier mark has a reputation in the UK

Where to register a trade mark?

Trade marks may be registered in a single jurisdiction with the relevant national trade mark Registry, which for the UK is the Intellectual Property Office (IPO). However, businesses which are considering expanding overseas, should consider protecting their marks in all of the countries in which they are looking to exploit their goods or services under the proposed brand, either by separate individual registrations, or by using one of the available collective systems in trade mark registration.

PAN-European protection can be achieved by registering a European Community trade mark (EUTM) via the European Intellectual Property Office (EUIPO). The EU trade mark system provides a means of obtaining a single registration covering the whole of the EU, which is significantly cheaper and more efficient than applying for protection separately in the relevant EU member states (although this approach may be viewed in a different way post-Brexit).

Registration can also be achieved in multiple jurisdictions throughout the World Wide Intellectual Property Organisation (WIPO) under the Madrid Protocol. Under this system, applicants must have a pre-existing home/national application on which the application to WIPO is based. The owner can then apply for coverage across all or any of the countries who have signed up to the Madrid Protocol (including China, the USA and the EU).

In each instance, the cost, time and potential opposition is increased with the scope of protection offered.

Time Frames

In the UK the whole trade mark process usually takes between 3 to 4 months, which includes a 2 month publication period. For an EU trade mark, the process will on average take around 6 to 12 months. Finally, for a world wide application, this type of application procedure will usually take around 2 years from the date of application. This is because the home application must be made separately before the international application, and thereafter WIPO will need to contact each national country’s IP office, hence the additional time involved with this particular application.

Should you need assistance with registering your trade mark, or are not sure if it is capable of being registered, then please contact our Company Commercial team.

Please note the contents of this blog are given for information only and must not be relied upon. Legal advice should always be sought in relation to specific circumstances.