Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Not applicable.

What information and documentation must be submitted in a trademark registration application?

The following information must be submitted in a trademark registration application:

  • confirmation of who is filing the application – the representative or owner;
  • the applicant name and address and where a company or limited liability partnership, the country of incorporation;
  • details of the trademark and, where relevant, a jpeg of the logo or device;
  • confirmation of whether or not the application is for a series mark;
  • details of the goods and services;
  • details of any disclaimer; and
  • details of any priority claim.

What rules govern the representation of the mark in the application?

It is a requirement of filing that there is a representation of the mark on the application form. The mark must be represented graphically and this representation cannot be replaced by a description of the mark.

Marks can be filed as:

  • word marks;
  • figurative marks;
  • three-dimensional marks;
  • sound marks;
  • colour marks;
  • holograms; and
  • within the category of ‘other marks’, which includes animated marks or position marks (a sign positioned on a particular part of a product).

Marks can be filed in black and white or in colour.

It is possible to file a series mark with a maximum of six items in the series. A series of marks means a number of trademarks which resemble each other as to their material particulars and differ only as a matter of non-distinctive character which would not affect the identity of the trademark.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

Yes.

What are the application fees?

To file online:

  • £170 for one class of goods or services; and
  • £50 per extra class.

To file on paper:

  • £200 for one class; and
  • £50 per extra class.

Priority

How are priority rights claimed?

A person who has filed a trademark application for protection in a country that is a party to the Paris Convention has a right of priority for a period of six months from the date of filing. This means that if – within that six month period – the person files an application to register the same trademark, that application’s filing date claims priority from (ie, is deemed to be the same as) the filing date of the initial application. A priority claim can relate to all the goods or services covered by the application or a selection of them.

For a UK trademark application claiming priority from an earlier filed mark, the priority claim must be made at the same time as the application for the UK trademark.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Searches are available, and while recommended, are not a requirement.

The type of searches can vary from simple quick searches of the UK Intellectual Property Office (UKIPO) and EU Intellectual Property Office (EUIPO) online databases (eg, to identify identical marks) to in-depth full clearance searches. There is no official fee for carrying out a search on the UKIPO or EUIPO online register.

The cost of a full clearance search will vary depending on the level and detail of search required.

UK clearance searches may also include common law searches to ascertain whether there are potential obstacles to registration and use posed by the use of identical or similar marks. While these are not exhaustive, they are valuable and recommended.

Examination

What factors does the authority consider in its examination of the application?

The authority considers:

  • whether the necessary administrative and procedural requirements have been complied with; and
  • the absolute grounds.

Does the authority check for relative grounds for refusal (eg, through searches)?

The registrar will carry out a relative grounds search and identify earlier registered trademarks, which it considers to be confusingly similar to the application but will not refuse registration on the basis of the searches. The earlier marks are included in the examination report to which an applicant is given the opportunity to respond; to avoid or argue against the requirement that the registrar notify the owner of the earlier rights. Of course, even if the owners of the earlier rights are not notified of an application by the registrar they may still be aware of it through watch services.

Therefore, objections on relative grounds may only be raised at the opposition stage by third parties.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Yes, the applicant is given the opportunity to make representations to the registrar or amend the application.

Failure to respond will result in the refusal of the application. Generally, there are discussions with the examiner as to the possibilities for resolving the objection by – for example – amending the application or filing evidence to show distinctiveness.

Any amendment must not substantially affect the identity of the trademark or extend the goods or services covered by the application. However, obvious errors may be corrected and the specification of the application can be limited.

Can rejected applications be appealed? If so, what procedures apply?

Rejected applications for UK trademarks can be appealed to the High Court or to an appointed person – for example, an experienced IP practitioner appointed by the lord chancellor to hear appeals under the Trademarks Act 1994.

The appeal process is not a complete rehearing, but rather a review of the decision of the registrar. To succeed the appellant must demonstrate that there was a distinct and material error of principle or that the registrar was clearly wrong. It is not open to the appeal tribunal to substitute its own view in the absence of these principles.

Appeals to the appointed person are generally less formal and less costly and can – if the parties agree – be made on paper.

If a party wishes to appeal to the court, the procedure involved is set out in the detailed rules of procedure applicable to the court. It is a more formal process and likely to be more costly than an appeal to the appointed person.

If the appointed person hears and determines the appeal his or her decision is final. The appointed person may refer the appeal to the court to be heard instead if it appears to him or her that a point of general legal importance is involved.

Decisions of the High Court may be appealed to the Court of Appeal with permission. Permission is granted only provided that:

  • the appeal has a real prospect of success,
  • the appeal raises an important point of principle or practice, or
  • there is some other compelling reason for the appeal to be heard.

Registration

When does a trademark registration formally come into effect?

A trademark, once registered, formally comes into effect as at the filing date of the application.

What is the term of protection and how can a registration be renewed?

A mark is protected for 10 years from its application date, renewable indefinitely for further 10-year periods.

UK trademark registrations are renewed through the UKIPO by either the owner or its representative filing the necessary form and paying the renewal fee.

What registration fees apply?

No registration fees are payable on top of the application fee.

The official renewal fee is £200 for the first class and £50 for each additional class.

What is the usual timeframe from filing to registration?

Provided that there are no objections or oppositions, it takes approximately four months from filing (ie, the date the application is submitted) to registration.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Anyone can oppose an application on absolute grounds, but only the owner of an earlier trademark or other earlier right may oppose on relative grounds. An opposition may relate to all the goods and services covered by the application, or only some of them.

Procedurally, the opponent sets out why he or she objects to the application in a notice of opposition and statement of grounds; the applicant replies by filing a defence and counter-statement. Each party then has the opportunity to file one or more rounds of evidence. Decisions may be made on the papers (where legal argument is submitted in writing by the UKIPO) or at an oral hearing (at the parties’ option, this is generally only used for more complex matters).

What is the usual timeframe for opposition proceedings?

It takes two years to reach an initial decision. This timeframe can be extended considerably if the parties enter into a cooling-off period in an attempt to settle the opposition.

Are opposition decisions subject to appeal? If so, what procedures apply?

UKIPO opposition decisions can be appealed to the appointed person or to the High Court.

The relevant procedure is set out in the Trademark Rules (2008) and the detailed rules of procedure applicable to the court respectively. In summary, the appellant party is required to file a notice of appeal and statement of grounds. The respondent can either choose to do nothing – if he or she is satisfied with the decision – or file a respondent’s notice explaining why the decision should be upheld for additional or different reasons to those of the decision.

Click here to view the full article.