Registration of marks
Registered protection for a trademark in the UK may be obtained by one of three routes:
- an application filed at the UKIPO to obtain a UK trademark registration;
- an application filed at the EUIPO to obtain an EU trademark registration; and
- an application filed at WIPO to obtain an international registration designating either the UK or the EU.
The focus of this chapter is on procedure before the UKIPO.
The official fees for a UK trademark application are £170 (assuming the application is filed online), and an additional £50 for each class of goods or services covered in addition to the first.
The application should set out the mark applied for (in jpeg format if a logo element is included), the goods and services specified, set out in class order, according to the Nice Classification, and the name and address of the proprietor (including state of incorporation for a company). An address for service in the European Economic Area must also be provided.
When an applicant claims priority under the Paris Convention, it should include basic details of the priority applications, but it is not necessary to supply a certified copy of the priority application unless requested to do so by the UKIPO.
If a logo mark is shown in black and white, the UKIPO will not consider these colours to be a feature of the mark unless there is an express indication in the application to that effect. Sound marks may be acceptable either where they are applied for by way of, for instance, musical notation clearly describing the mark or, as of 1 January 2019, by way of a sound file in MP3 format. Similarly, moving image marks may be filed in the form of multiple representations with an accompanying description. Alternatively, they and multimedia marks generally may now be filed in MP4 format.
It is a particular feature of UK trademark law that the applicant must make a declaration on the application form, at filing, that:
the trade mark is being used, by the applicant or with the applicant’s consent, in relation to those goods or services, or that there is a bona fide intention that it should be so used.
This declaration applies to both UK trademark applications filed at the UKIPO and international applications designating the UK filed at WIPO.
Although this declaration is not tested or examined by the UKIPO, any application or registration may be opposed or sought to be declared invalid by a third party on the basis that the application or registration was obtained in bad faith, where the applicant did not have the requisite intention to use (see Section VI.ii).
Once an application has been filed at the UKIPO, a filing receipt will be issued promptly and the application will be examined within three to six weeks. If no objections are raised, it will be published in the Trade Marks Journal. Publication opens a period of two months (extendible by one month at a potential opponent’s request) during which third parties may oppose registration. If no oppositions are filed, the application should proceed to registration within approximately five months of filing the application.
The process and timeline are very similar for an international application designating the UK.
It should also be noted that applications filed at the UKIPO (but not at the EUIPO or WIPO) may also seek registration in respect of a series of marks, that is to say variations of the mark (where those variations do not include differences in distinctive character). A maximum of six marks may be included in a series (with additional official fees of £50 for each of the third to sixth marks in the series). If the UKIPO holds that one of the marks does not constitute a series (i.e., it differs in its distinctive features from the other marks), that mark must be deleted in order that the others may proceed to registration.i Inherent registrability
The UKIPO examines an application to assess whether the mark applied for is inherently registrable. An objection will be raised if the mark is:
- devoid of any distinctive character;
- descriptive of any characteristic of the goods or services in respect of which the mark is to be used (or worse, where it has become customary for the relevant goods or services);
- a shape (or any other mark with a characteristic):
- resulting from the nature of the goods themselves;
- necessary to obtain a technical result; or
- giving substantial value to the goods;
- contrary to public policy or principles of morality;
- such that its use is prohibited by any rule of law;
- such that it is or contains, for example, the royal coat of arms, the royal flags, heraldic arms, flags of the UK or national emblems of Paris Convention countries; or
- one where the application has been made in bad faith.
Most objections will be raised in respect of categories (a) to (c), above. The Manual of Trade Marks Practice sets out the UKIPO’s approach to certain categories of marks but, in recent years, emphasis has been placed more on assessing each mark on its merits and less on a particular category of mark. For instance, it used to be the case that common surnames were considered prima facie unregistrable and the number of examples of any given surname in a UK telephone directory was considered a relevant rule of thumb in assessing registrability of a surname. That type of approach is now out of favour. Nevertheless, the Manual still indicates that names of famous people will require careful assessment. A famous name is more likely to be held to be unregistrable, particularly for goods such as posters or other image carriers, but each case will be assessed on the facts.
If an objection is raised under category (a) or (b) above, the applicant will be given two months to provide submissions or evidence in response. That period can be extended upon request for good reason. It may be appropriate to seek to overcome the objection by providing evidence of how the word is used in commerce, or technical explanations if either the word or the relevant goods are technical.
Alternatively, an applicant may seek to argue that the mark has acquired distinctiveness through its use. The applicant will need to provide evidence to support that argument. As a rule of thumb, at least five years’ use of a mark, across the majority of the UK, would be required to put forward a reasonable argument for acquired distinctiveness. A shorter period may suffice if, for example, there has been high-profile advertising. If the word applied for is particularly descriptive, evidence of the applicant’s use on its own may not be sufficient and it may be helpful if third-party evidence is obtained as well, such as how the mark is used in the media and perceived by the consumer. In practical terms, the UKIPO requires evidence to be filed in the form of a statement by a relevant witness, such as a director of the applicant, and exhibiting relevant documents.
An objection raised under categories (c) to (h) above (including objections relating to the shape of the mark) may not in law be overcome by acquired distinctiveness.ii Prior rights
The UKIPO will not of its own motion raise any objection to an application on the basis of any conflict with an earlier trademark or other right (except, for example, emblems of Paris Convention countries, etc., as described in subsection i). The UKIPO does, however, conduct a search of the UK trademark register, the EU register and the international register (if the UK or EU is designated). If any conflicting mark is revealed, it is forwarded to the applicant for information. A period – typically two months – will be set for the applicant to confirm whether it wishes to limit its application or withdraw it (in view of the prior right revealed), seek consent from the prior rights owner, or seek to persuade the UKIPO that the conflicting right has been incorrectly raised.
If the applicant makes no response, the UKIPO will, after that period, permit the application to proceed to publication in the Trade Marks Journal, and that publication opens a period of two months during which third parties may oppose the application if they so wish. At the same time, the UKIPO writes to the prior rights owner (if the prior right is a UK trademark or a UK designation of an international trademark) alerting the owner to the publication of the later, possibly conflicting application.
Under current practice, it is much less common for an applicant to seek express consent from the proprietor of an earlier conflicting trademark or to seek to persuade the UKIPO that in fact no conflict exists, at the examination stage. It is more likely that this type of conflict will be addressed in any later opposition proceedings, either in a decision by the UKIPO or in settlement discussions alongside those proceedings.
It should be noted that whereas the UKIPO conducts a search of UK trademarks, EU trademarks and international trademarks (designating the UK or EU), and while these properties may form the basis of a third-party opposition, these are not the only rights that may be relied upon in opposition proceedings. An opponent may also rely on any other earlier right, including a copyright, design right or registered design with effect in the UK or any rule of law. The most common rule of law relied upon is the law of passing off. An opponent here may claim that it is the prior user of a mark, such that the opponent has established goodwill represented by the mark, before the filing of the application, and that the use of the mark applied for (since it is, for example, confusingly similar, for similar goods) would amount to a deceptive misrepresentation liable to damage the goodwill of the opponent. Note that the opponent does not seek to pursue a claim for passing off as such (which would need to be brought in the courts), but, instead, seeks to argue that registration of the later mark should be refused because its use would amount to passing off.iii Inter partes proceedingsOppositions
Any party may oppose registration of a trademark on the grounds that it does not meet the inherent registrability criteria. The proprietor of an earlier trademark or other earlier right may also oppose registration on the grounds of its right. In the standard procedure, an opponent is required to file form TM7 and pay a fee of £200. If the rights relied upon are registered or pending trademark rights, it may be sufficient to outline the details of those rights and claim that the use of the applicant’s mark will result in a likelihood of confusion or dilution.
If the earlier registered trademark rights are more than five years old, it is necessary to state in respect of which goods or services the earlier trademark has been used. In practice, it is possible to indicate that this information will follow and can instead be provided in response to the UKIPO’s indication of deficiency in that information.
If other rights are relied upon, such as an earlier passing-off right, more detail is likely to be needed, such as when the mark was first put to use, in what geographical area and in respect of which goods or services.
The UKIPO will examine the form TM7 and notice of opposition and, if it is acceptable, will set a period of two months for the application to file its counterstatement on form TM8. The counterstatement will respond to the pleaded grounds of opposition, either admitting or denying them or putting the opponent to proof and, where relevant, pleading its alternative case.
Once the UKIPO has assessed that the applicant’s counterstatement fulfils formality requirements, it sets the following timetable:
- a period of two months for the opponent to file any facts or submissions in support of its opposition. Evidence of facts must be in the form of a witness statement signed under a statement of truth;
- upon filing of the opponent’s evidence, a period of two months for the applicant to file any evidence or submissions in support of its application; and
- upon filing of the applicant’s evidence, a further period of two months for the opponent to file any evidence or submissions in reply.
Each of these evidence periods can be extended upon request and for good reason. Any request must clearly specify what action has been taken to date to meet the deadline, why further time is needed (i.e., what further action needs be undertaken) and how long that will take. In practice, in the absence of very good reasons, the UKIPO is unlikely to extend any deadline by more than one month.
Once the evidence stages of the proceedings are closed, the parties may agree for a decision to be made by a hearing officer from the papers on file; an opportunity for the parties to provide written submissions will also be provided at this stage. Alternatively, either party has a right to request a hearing. This may be held in person but may also be held by video link with the hearing officer in the UKIPO’s Newport office.
A decision is likely to be issued within 12 months of the filing of the opposition refusing the application, partially refusing the application or rejecting the opposition. The hearing officer will also make an award of costs in the prevailing party’s favour. The level of the award is taken from a limited set scale and is not intended to fully compensate the prevailing party for the legal costs incurred. A typical award may be in the region of £1,500 to £2,000.
It should be noted that the initial deadline set for the applicant to file a counterstatement can be met by the parties instead consenting to and filing a request to enter a cooling-off period. This is for an initial nine months (which can be extended to 18 months) and postpones the evidence stages of proceedings.
There is a more streamlined fast-track procedure, which may be suitable for some earlier trademark proprietors, particularly if they have pre-prepared evidence of their use of their mark to accompany the initial notice of opposition.Post-registration application for declaration of invalidity or declaration for revocation
The same basic procedure is provided for a post-registration application for a declaration for invalidity, which may be sought on any of the grounds that could have been pleaded in opposition. A similar procedure applies to a post-registration revocation on the grounds that a mark has not been put to genuine use within five years of the mark being registered, or that the mark has become generic.
It should be noted that an application for a declaration of invalidity or an application to revoke a registration may be brought in the courts as well as the UKIPO. The UKIPO proceedings again have a limited cost award regime, so bringing a case in the courts is likely to be more expensive, but with a greater opportunity to recover more of the legal costs incurred during the proceedings.iv Appeals
Decisions by the UKIPO may be appealed to the High Court of England and Wales, to the Court of Session in Scotland or to the High Court in Northern Ireland. Of these, the High Court of England and Wales (High Court) is used most frequently. Decisions by these courts may also be appealed further to appellate courts.
Generally, none of the aforementioned courts will rehear a case, but will instead review the UKIPO decision. That means that there is a high hurdle for any party to clear in filing additional evidence at the appeal stage. Costs orders issued at the end of any appeal are not taken from the UKIPO’s limited set scale but, instead, are issued in accordance with the Civil Procedure Rules (CPR) and are intended to compensate the prevailing party to the extent that its legal costs have been proportionately and reasonably incurred.
As an alternative to the court system, a party may appeal a UKIPO decision to an ‘appointed person’. This is a tribunal, established by statute, consisting of a small number of leading trademark practitioners (typically barristers and academics) designated as appointed persons, who sit individually to hear appeals. Although appointed persons have broadly the same powers as the High Court on appeal, the tribunal is intended to be a low-cost forum. On that basis, costs orders that may be made in the prevailing party’s favour are again made on a set limited scale. Decisions made by an appointed person are final and, accordingly, there is a power for cases of general legal importance to be transferred to the courts.