The law and practice referred to in this article or webinar has been paraphrased or summarised. It might not be up-to-date with changes in the law and we do not guarantee the accuracy of any information provided at the time of reading. It should not be construed or relied upon as legal advice in relation to a specific set of circumstances.
We provide a full trade mark registration service including:
- Advice on appropriate trade marks and their registrability,
- Advice on the goods and services to be covered by the trade mark and drafting of the specification of goods and services,
- On-line identical mark clearance searches in order to identify potential conflicts with existing, trade marks registered in the UK, the EU or individual Member States of the EU as appropriate (subject to availability of on-line databases) and advice on potential conflicts,
- Preparation and filing of trade mark applications before the UK Intellectual Property Office (UKIPO) and World Intellectual Property Organisation (WIPO),
- Prosecution of trade mark applications in Opposition proceedings filed against an application and conduct of Opposition proceedings against other people’s applications,
- A network of overseas lawyers specialising in trade mark registration for advice on country-specific applications and other issues.
We are happy to offer fixed fees for trade mark application work and to discuss cost budgeting on a case-by-case basis for substantial trade mark filings involving significant numbers of classes of goods and services and multiple jurisdictions.
Further information on our services and the process for obtaining a trade mark registration is set out below.
An application for a trade mark can be rejected if the mark is deemed by the relevant intellectual property office (IPO) to be descriptive and/or not distinctive of the goods or services to which it will be applied. Usually this can happen with word marks, although it is also possible for logos to be rejected on the grounds of banality.
Objections can also be raised by the IPO in relation to the descriptions of goods and services if they are not sufficiently clear or appear to be too broad.
Trade mark applications need to specify the goods and/or services for which the mark will be protected. In discussion with you, we undertake the drafting of the specification of goods and services which forms part of the application. It is important to tailor the specification of goods and services to the needs of your organisation, taking into account longer-term development of those services within the next five-year period.
Trade marks which have been registered for five years or more can be challenged on the grounds of non-use in respect of goods or services for which the marks have not been used for a continuous period of five years following registration. It is therefore preferable to register only what you need or think you are likely to need within the next five years.
As part of our registration service, for word marks we carry out an initial trade mark search against your trade mark in order to identify any immediately obvious conflicts with identical or very similar marks which are registered within or cover the UK and registered within conflicting classes. There is no guarantee that the owner of an earlier mark would not oppose your applications, but we hope to eliminate the most obvious conflicts and hopefully any serious objections would come to light during the application stage and therefore avoid an infringement claim later on.
It is impossible to eliminate all possible conflicts with owners of earlier trade marks without conducting full trade mark clearance searches which include similar marks. More detailed clearance searches, including image searches, can be conducted using search agents.
We can provide strategic advice as required in relation to any conflicting marks identified by our initial searches.
Once an application has been filed, it will be examined by the IPO for registrability. Once it has been accepted, it will be published for Opposition purposes to enable the owners of earlier rights to oppose it on the basis of earlier rights. In the UK, the Opposition period lasts for two months. International applications are dealt with differently and publication for Opposition purposes will only take place once the application has been examined by WIPO and by the relevant, national IPO(s).
Please note that even where applications are straightforward, i.e. they do not face any serious objections from the IPO or any Oppositions from third parties, we would not expect a UK trade mark to be registered for at least three months after the filing date.
If any Oppositions are filed by third parties, this can delay things substantially, depending upon whether a settlement agreement can be reached with the Opponent or whether the Opposition proceedings need to be decided by the IPO and then whether the decision of the relevant IPO is appealed. Full Opposition proceedings can take 18 months or more.
However, once you have a filing date for your application, you are protected against anyone else filing for the same or a confusingly similar name for the same or similar goods and services after you (unless your application is ultimately refused).
In addition, if you have filed an identical trade mark application in another country within the last six months, you might be able to obtain an earlier application date by claiming priority from the date of that earlier application.
Once a mark is registered, the protection dates back to the filing date of the application, so you can then take action against anyone infringing your trade mark during the application period.
- Clearance searching and strategic protection advice
- Trade mark and design registration at UK and international level
- Domain name registrations
- Image rights, merchandising and endorsement
- Advertising laws and clearance issues
- Brand portfolio management
- Licence agreements
- Dispute resolution, litigation and Trade Marks Registry proceedings
- Anti-counterfeiting advice and management of counterfeiting/infringement investigations
- Trading Standards and HM Customs seizures
- Policing of on-line marketplaces and assistance with Notice and Take Down procedures
- International protection strategies through our network of trusted advisers
- Fixed fee IP audits
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