What is a trademark?
It is a sign which identifies the products or services of a business and, may consist of words, slogans, logos, shapes, numerals, colours or any combination of these. In essence it is a badge of origin that allows customers to distinguish the goods or services of one trader from those of another. In layman’s terms a trademark is the name of a product or service.
Can any name or sign be registered as trademark?
In order to be acceptable and registrable a trade mark must:
- Be distinctive for the goods or services in relation to which it is or will be used. In other words they must be capable of distinguishing your goods or services from those of others
- Not describe your goods or services or any characteristics of them in any way. In particular it must not describe kind, quality, quantity, nature, purpose, value, geographical origin, or any characteristics of your goods or services is concerned.>
- Not be generic, deceptive, misleading, offensive, contrary to law or morality
- Not be a specially protected emblems (such as national flags, coats of arms, hallmarks, official sign, and state emblems);
- Not be identical or confusingly similar to any earlier trademark applications or trademark registrations for the same or similar goods/services
When can’t a name or sign be registered?
Trade marks cannot be registered if they:
- describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
- have become customary in your line of trade;
- are not distinctive;
- are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods;
- are specially protected emblems (such as national flags, coats of arms, hallmarks, official sign, and state emblems);
- are offensive;
- are against the law, for example, promoting illegal drugs; or;
- contrary to morality
- are deceptive or misleading. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.
What names make good trademarks?
Trademarks which are highly distinctive and unique make the strongest trademarks and offer the best protection. These often consist of invented words which mean absolutely nothing in relation to the goods or services in respect of which they will be used. Some examples of very distinctive trademarks are:
- Kodak, Xerox, Sony, Facebook, Google, Nike, Accenture, Ebay, Revomark, Viagra, Adidas, WH Smith, and TiVo.
Examiners will also accept word marks involving known names, if none similar have already been registered, such as:
- Pinder Technology
- Alan Hannah
- Hannah Consulting
Also, common words used in unfamiliar ways:
- Bicycle playing cards
- Sky Broadcasting
- Floppy Sausage
- Tickling Trout
- Comparison Mole
Do you have examples of names or words that cannot be registered as a trademark?
Trade mark applications will be refused if the trade mark describes your goods or services or any characteristics of them:
- Leather shoes X
- French food X
- Cheap jewellery X
- Best clothing X
- Reliable Builders X
- Cheap Car Insurance X
Examiners will also refuse to register trade marks which are made up of descriptions customary in your line of business or is non-distinctive:
- Grime 2 Shine X
- Ghost Hunters X
- Fairy Goodies X
- Van-Locked X
- Macqui Supreme X
- The Pure Solution X
Trying to get around the distinctiveness or common phrase barrier by intentional misspelling is not acceptable:
- Supa Food X
Can a non-distinctive trademark ever qualify for registration?
- If a trademark has become distinctive by virtue of prior use then it may be accepted for registration. However, the prior use will have to be extensive, significant and is normally required for at least 5 years. You will also be required to file evidence of this trademark use.
- Adding a distinctive logo to an otherwise non-distinctive name, word or slogan could elevate the trademark to an acceptable level of distinctiveness.
Can emblems and symbols be registered as a trade mark?
We are unable to register any sign as a trademark if it consists of or contains an emblem that has protection under an International agreement. One such agreement is Article 6ter of the Paris Convention for the Protection of Industrial Property.
The purpose of Article 6ter is to protect, and prevent the registration and use of, trademarks that are identical with, or very similar to,
- armorial bearings
- flags and other State emblems
- official signs
- other emblems
- abbreviations and names of international inter-governmental organizations
How do I register a logo as a trade mark?
A logo trade mark application has to pass additional criteria before it can be registered: for example, a logo trade mark cannot be:
- A three dimensional shape which is typical of the goods you sell, has a function or adds value to the goods;
- A specially protected emblem, such as national flags, royal insignia, coats of arms and the rings of the Olympic Games;
- A mark which is descriptive of the origin of the goods or services
- A mark that is deceptive as to the country of the product’s origin;
There is no extra charge for filing a logo trademark application.
If I register the logo in black and white, does that mean that the registered trade mark would be valid for all colours, or do I need to specify colours that I intend to use?
If you register a trade mark your registered rights are for that mark as filed i.e. in black and white. If you file in a specific colour combination your registered rights will be in that mark in those colours.
The best option would be to file a series trademark by including both the black and white and colour version of the trademark/logo in the registration.
However, your trademark rights extend to similar marks so protection may extend to other colour combinations. This really depends on the mark, the goods and/or services and the impact the colours may have. There are no hard and fast rules as each application is considered on its own facts.
Is it better to register a logo or just a text trade mark?
It is normally recommended to register them both as separate trademarks. However, this will be treated as two separate trademark applications which would obviously increase the cost.
However, if you had to choose one over the other then registering a text only trade mark will give you the best possible protection. So where possible a text only trademark registration is best. If you have a word mark no one else can use those words, with or without a design, so wherever we can we try to register a text trade mark.
Registering a logo, where your rights are in the combined words and graphical elements dilutes the protection given to the text within the mark. For example, if a third party uses or registers similar words but with a totally different design/logo then it is arguable that the respective trademarks, when compared as wholes, are not confusingly similar (and you may not be able to stop them from using the trademark).
In certain circumstances you will have no option but to register the trademark in a logo format. This is particularly relevant when the text is not sufficiently distinctive to qualify for protection in its own right. The logo would therefore serve to elevate the whole mark to an acceptable level of distinctiveness.
What is a series mark?
A series of trade marks means a number of trade marks which resemble each other as to their material details and differ only as to matters of non distinctive character that does not affect the identity of the trade mark.
An application for a series of marks can include a maximum of six marks with the first and second marks being included in the application fee. If there are 3 or more trademarks in a series additional costs will be incurred.
Marks comprising a series are acceptable if they are substantially the same. In the example below the mark applied for clearly consists of two separate words.
Mark Applied for: “Trade Mark”
The same applies to the mark where the capitalisation of the second word makes it clear that the mark is really one word even though they are conjoined.Different considerations apply to the remaining two marks where the two words are not separated but are in the same type case i.e. one in lower case throughout and one in upper case.When examining such marks the examiner must decide if the two words “separate naturally”.To do this the examiner will consider how the average consumer of the goods and/or services in question will perceive the marks. If they will all be perceived as the two words you quote as a trade mark then they will form a series, if not then an objection would be raised although there are ways to overcome such an objection.
Series trademarks are only accepted in the UK. A CTM cannot be filed as a series mark.
How are trademarks classified?
Trademarks are classified into 45 different classes. There are 34 goods classes and 11 service classes. Ensuring that your trademark is protected in the correct classes is imperative. If you register a trademark in the incorrect class then your trademark registration may not give you any protection at all. In most instances you are only likely to find this out during a dispute with a third party in which case it is usually too late.
Unless you are specialists like us, properly classifying goods and services can sometimes be confusing and difficult. Choosing the correct classes is merely one of the difficulties that needs to be negotiated. The second aspect is ensuring that the drafted specification accurately reflects the goods and services to be protected. We will ensure that you get the best possible protection by ensuring that you are protected in the correct classes and by drafting accurate and comprehensive specifications.
The cost of an application will depend on the number of classes in which it needs to be filed. Each class usually attracts an additional fee.
What is the list of trademark classes?
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; unprocessed plastics in the form of liquids, chips or granules.
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting; combustible fuels, electricity and scented candles.
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; unwrought and partly wrought common metals; metallic windows and doors; metallic framed conservatories.
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
Hand tools and hand operated implements; cutlery; side arms; razors; electric razors and hair cutters.
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; sex aids; massage apparatus; supportive bandages; furniture adapted for medical use.
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus; electric kettles; gas and electric cookers; vehicle lights and vehicle air conditioning units.
Vehicles; apparatus for locomotion by land, air or water; wheelchairs; motors and engines for land vehicles; vehicle body parts and transmissions.
Firearms; ammunition and projectiles, explosives; fireworks.
Precious metals and their alloys; jewellery, costume jewellery, precious stones; horological and chronometric instruments, clocks and watches.
Musical instruments; stands and cases adapted for musical instruments.
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; semi-finished plastics materials for use in further manufacture; stopping and insulating materials; flexible non-metallic pipes.
Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing for animals.
Non-metallic building materials; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; non-metallic monuments; non-metallic framed conservatories, doors and windows.
Furniture, mirrors, picture frames; articles made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum or plastic which are not included in other classes; garden furniture; pillows and cushions.
Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steel wool; articles made of ceramics, glass, porcelain or earthenware which are not included in other classes; electric and non-electric toothbrushes.
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks for transporting bulk materials; padding and stuffing materials which are not made of rubber or plastics; raw fibrous textile materials.
Yarns and threads, for textile use.
Textiles and textile goods; bed and table covers; travellers’ rugs, textiles for making articles of clothing; duvets; covers for pillows, cushions or duvets.
Clothing, footwear, headgear.
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile); wallpaper.
Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; childrens’ toy bicycles.
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared meals; soups and potato crisps.
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; sandwiches; prepared meals; pizzas, pies and pasta dishes.
Agricultural, horticultural and forestry products; live animals; fresh fruits and vegetables, seeds, natural plants and flowers; foodstuffs for animals; malt; food and beverages for animals.
Beers; mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages; shandy, de-alcoholised drinks, non-alcoholic beers and wines.
Alcoholic wines; spirits and liqueurs; alcopops; alcoholic cocktails.
Tobacco; smokers’ articles; matches; lighters for smokers.
Advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; retail services connected with the sale of [list specific goods].
Insurance; financial services; real estate agency services; building society services; banking; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information.
Building construction; repair; installation services; installation, maintenance and repair of computer hardware; painting and decorating; cleaning services.
Telecommunications services; chat room services; portal services; e-mail services; providing user access to the Internet; radio and television broadcasting.
Transport; packaging and storage of goods; travel arrangement; distribution of electricity; travel information; provision of car parking facilities.
Treatment of materials; development, duplicating and printing of photographs; generation of electricity.
Education; providing of training; entertainment; sporting and cultural activities.
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design, drawing and commissioned writing for the compilation of web sites; creating, maintaining and hosting the web sites of others; design services.
Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; retirement home services; creche services.
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; dentistry services; medical analysis for the diagnosis and treatment of persons; pharmacy advice; garden design services.
Legal services; conveyancing services; security services for the protection of property and individuals; social work services; consultancy services relating to health and safety; consultancy services relating to personal appearance; provision of personal tarot readings; dating services; funeral services and undertaking services; fire-fighting services; detective agency services.
I have registered my name at Companies House. Do I still need to register it as a trademark?
A common misconception among entrepreneurs in the process of incorporating and establishing a business is that the registration of a company name entitles them to the use the registered company name or trade mark or gives protection to that name. This is not the position. A company registration purely serves to establish a separate legal entity (particularly for limited liability purposes) and does not in any way protect the name that is registered. The only way to secure exclusive rights to use of a name is through a trade mark registration.
I have registered the domain name. Do I still need to register it as a trademark?
A domain name does not protect the brand. So yes you do have to register the trademark.
Why should I do a trademark search?
It is imperative to first conduct a trade mark search. This allows us to ascertain firstly whether the mark is available for registration and secondly whether or not your use of the mark infringes a third party’s registered rights. The consequences of not searching are potentially severe. If you’re in the middle of launching a new product or service, when suddenly you find you’re infringing someone else’s trade mark, it could mean litigation, re-branding, or even withdrawal from the market.
Which countries do I need to register my trademark in?
The simple answer is the countries in which you intend to provide your services or sell your products. Trademarks are territorial and only confer protection in the country is which the trademark is registered. Therefore a UK trademark registration only gives rights to the owner in the UK. A Community Trade Mark (CTM), on the other hand, gives the trademark owner rights throughout the European Union (which of course includes the UK).
Can I register a trademark before the business commences trading?
Absolutely. Registering the trademark is one of the first things you should do. File the application before you start trading. The failure to do so will expose you to significant risk.
Can a trademark be owned by me in my personal capacity or must it be owned by a company?
A trademark can be owned by a person, a company, a partnership, a charity, a trust or any legally recognised entity. It can also be owned jointly by more than one person, company or other legally recognised entity.
As a general rule the trademark should be owned by the entity, company or person that will use it.
What is included in the cost to register a trademark?
The fees you pay at the outset cover the official government fees, our fees for preparing the specifications, drafting the application , filing the application, paying the official government fees due, reporting examination or acceptance of the application and sending you the trademark registration certificate. There are no hidden fees and no additional costs will be incurred unless the application runs into problems such as objections from the registry or third parties.
Can you guarantee that my trademark registration will be successful and do I get a refund if the application fails?
As a general rule we cannot guarantee that an application will be successful. However, 98% of the applications we file proceed to registration so the risk of being unsuccessful is very small indeed. In certain circumstances we do offer a money-back guarantee. If your trademark qualifies for the money-back guarantee and you have paid the premium for this service then we will refund our fee to you if the application is unsuccessful. This is subject to our standard terms and conditions. Please note that the government fees are not refundable. At the end of the day we are flexible and give you various options. You choose the package that best suits your needs and budget.
What is trademark priority?
If you file a trademark you may then within six months of the application date apply for the same mark in a different country and claim priority from that mark. This means that the new application would then be given the same filing date as the first trademark. This is called a priority application. You may still file a trademark application in any other country after six months but the new application would then be given its own filing date.
Why you must register a trademark
What are the benefits of a registered trademark?
- The most important benefit is that it gives the trade mark proprietor the exclusive right to use the mark in the territory in which it is registered. The owner of a registered trade mark is therefore entitled to prevent a third party from using an identical mark or using a similar mark in circumstances where confusion is likely to arise.
- Other benefits are that it is easier and less expensive to protect a registered mark (as opposed to an unregistered one) against infringement.
- It acts as a deterrent to potential infringers.
- Licensees, franchisees are more likely to be attracted if the business has a registered trademark.
- Allows the abbreviation ® to be used thereby clearly demonstrating ownership of a brand.
- A registered trade mark can also provide the owner thereof with a defence to a trade mark infringement action.
- A registered trademark gives you an exclusive monopoly to the name for 10 years, which can be renewed at 10 year intervals if required.
- A registered trademark is an asset and adds value to a business.
- Trademark registration ensues that your trademark or brand cannot be hijacked or stolen by manufacturers, licensees, distributors, agents, or ex-employees.
- Trademark rights can be extended internationally.
What can happen if I do not register a trademark?
The commercial and financial consequences in failing to obtain a trademark registration can be extremely damaging to a company. Here are merely a few possibilities:
- Use of a trade mark may end up infringing a third parties right which could mean litigation, re-branding or even withdrawal from the market. This can be an expensive exercise as it could mean the re-packaging goods, changing stationary and redesigning letterheads, websites etc. In fact any goodwill that you may have accumulated in the name through use etc would have to be forfeited, which could be very damaging
- Very little protection (and absolutely none if there is no reputation) is given to an unregistered trade mark as one has to rely on common law rights (as opposed to statutory rights) to prevent another entity trading under or using an identical or similar name. Even if there is a reputation the legal requirements are notoriously difficult and very expensive to prove. As a result few passing off actions are successfully instituted. The reality is that for most small to medium sized businesses there will be no protection.
- If someone registers your name as a trade mark (before you do) the worst case scenario is that the third party could prevent you using your name altogether (depending on the circumstances). They could certainly prevent you using it outside the area in which you have a reputation (e.g. if you trade in London you will not be able to trade in Manchester, for instance, under the same name (unless you are able to prove that your reputation extends to Manchester).
- Failure to obtain a trade mark registration could severely hamper an owner’s ability to grow the business and expand into other regions. This is particularly important from a franchising or licensing perspective but is equally important in circumstances where a business expands into other regions or territories due to organic growth or acquisition.
- A trademark registration is an intangible asset that adds value to a business. Failure to register a trade mark could have negative implications on the value of a business in the event of a business sale (unregistered marks are often “deal killers” when negotiating with third parties).
- Your unregistered trademark could be stolen by a competitor, distributor or manufacturer. I have recently been dealing with a matter where the licensed manufacturer of a product intentionally and deliberately registered the trademark of the product he was contracted to manufacture.
Does an unregistered trademark give me any rights or protection?
If you have an unregistered trademark you will have to rely on your common law rights (and not statutory rights as is the case with a registered trademark) to prevent a third party from using an identical or confusingly similar mark. This remedy is known as an action for passing off. In order to succeed in a passing off action you need to prove the following:
- You have goodwill and a reputation
- Your opponent has made a misrepresentation in the course of trade
- You have suffered consequential damage
The above requirements are notoriously difficult and can be extremely expensive to prove. Consequently passing off actions are generally far more costly to litigate than trade mark infringement actions. Furthermore, and more importantly, if you do not have a reputation (as is the case with many small to medium sized companies) you cannot succeed in an action for passing off. In other words no reputation means no protection.
What happens if a 3rd party registers my business/product name as a trademark before I was able to do so?
Although the answer will depend on the facts and circumstances of each individual case, the commercial and financial consequences to you or your business could be extremely damaging. For example, depending on the extent of your use of the mark, the 3rd party may even be able to prevent you from even using the trade mark altogether. He could certainly prevent you from using it in areas outside those in which you have acquired a reputation (i.e. severely limiting your ability to expand the business and operate in extended geographic locations). Furthermore you will not be able to stop the 3rd party from using the trade mark in areas outside of those in which you have a reputation in the mark. You will also incur significant legal costs in trying to solve the problem (assuming it can be overcome!).
Applying for a Trademark
How do I go about registering my trademark?
Leave the registration to us. We do the work and you get the trademark registration certificate! All you need to do is contact us. We do the rest.
What is the process for registering a UK trademark or a Community Trade Mark (CTM)?
- You contact us
- We ask the questions and you give us the requested information. We prefer discussing the matter in depth so that we get an accurate and correct understanding about the trademark and what goods or services it will be used on. This is very important as it will enable us to properly classify the trademark and ensure that an accurate and comprehensive specification is drafted for the trademark application. We will make sure that you get the best possible protection. We therefore prefer to avoid the automated processes as this often results in crucial information being omitted by you which would result in your protection being compromised.
- We do availability and inherent registrability checks.
- If the prospects for securing a trademark registration are good and you wish to proceed with the trademark application then we will issue and invoice.
- We will prepare and file the trademark application as soon as payment is made. This is normally done on the same day.
- Once the trademark application has been filed the UK registry issues a reference number. The application number will be issued within a few days. If a CTM is filed the EU registry will issue an application number immediately.
- We corresponded directly with the appropriate registry and keep you informed about developments as soon as they take place.
- The application is usually examined within 3 weeks of filing.
- If no objections are raised by the registry your trademark application will be accepted.
- If accepted the trademark application is published in the Trademark Journal for opposition purposes. This gives third parties the opportunity to oppose the trademark application.
- If no oppositions are filed within 2 months (for a UK application) or 3 months (for a CTM application) then the trademark will proceed to registration.
- The trademark registration certificate is issued and will be sent to you.
How long does the trademark registration process take?
In the UK and EU the trademark registration process is taking approximately 5 months provided no objections or oppositions are encountered.
What does it mean when the trademark registry examines a trademark application?
The registry examines a trademark application in order to determine whether or not the trademark qualifies for registration and can be accepted. After an application is filed it is examined on absolute and then relative grounds. The former refers to the inherent registrability of a mark per se (i.e. is the mark descriptive or non-distinctive) whereas the latter looks at whether or not any existing registrations/applications conflict with the mark applied for (i.e. are identical or confusingly similar to). They will also check to make sure that the formalities have been complied with and that the goods and/or services listed in the specification are acceptable.
When will the trademark office or registry raise an objection?
The UK and EU registries will only object to a trademark application on absolute grounds (i.e. inherent registrability such as descriptiveness, non-distinctiveness etc). If an objection is raised you will be given an opportunity to file arguments or make representations in an attempt to overcome the objection. They will not object to an application on the basis of earlier marks which may be the same as or similar to the trademark application under examination. However, if similar trademarks are found, they will inform you of this and give you the opportunity to continue with or withdraw the application. They may also notify the proprietors of the earlier marks of the later application thereby giving the proprietors of the earlier marks the opportunity to oppose the application during the trademark opposition period. The onus is therefore on the proprietors of earlier marks to protect their registrations by opposing subsequent applications which may infringe or conflict with their earlier trademark rights.
What is trademark opposition and what happens if my trademark application is opposed?
The onus is on the proprietors of earlier marks to protect their registrations by opposing subsequent applications which may infringe or conflict with their earlier trademark rights. A trademark opposition can only be filed during the opposition period. In the UK the opposition is 2 months from publication of the trademark application in the Trademark Journal. In the EU the trademark opposition period is 3 months from the date of publication.
The most common ground on which an opposition is that the opposed application is identical or similar to an earlier registered trade mark and covers identical or similar goods (or even different goods if the earlier mark has “a reputation”).
Filing or defending a trademark opposition requires specialist knowledge. Trademark oppositions are a particular forte of ours. Having won or settled 96% of the matters we have been involved in our track record speaks for itself. We pride ourselves in giving honest and accurate advice. Your best interests are at the heart of everything we do.
Can I amend a pending trademark application?
You cannot make any amendments to the actual trademark once it has been filed. You can make changes to the name and address of the applicant for the trademark. You can also restrict the specification but you cannot add further goods or services.
What do I get when my trademark is registered?
You get a trademark registration certificate. The UK registry issues paper certificates. The EU registry issues electronic certificates.
How long is a trademark registered for?
In most countries, including the UK and EU, the period is 10 years. A trademark can be renewed every 10 years on payment of the renewal fees. So effectively a trademark can last forever provided it is renewed every 10 years.
Managing your Trademark Registration
What is a trademark watch and do I need it?
Most trademark registries do not automatically refuse applications on the basis of earlier conflicting marks. The onus is therefore on you to protect your trademark rights. Our trademark watching service allows us to monitor all relevant databases. We will inform you of any potentially conflicting trademark applications that have been filed thereby giving you the opportunity to oppose the relevant application timeously.
Can a registered trademark be renewed?
Yes. If you want to maintain your trademark registration it must be renewed every 10 years. The earliest a trademark registration can be renewed is 6 months before the expiry date.
Do annual fees need to be paid to maintain my trademark registration?
No. The only fee that has to be paid after registration is the renewal fee. As aforementioned in the UK and EU the renewal fee is payable every 10 years.
I missed the renewal deadline for my registered trademark. What can I do?
You can still renew the mark within 6 months of the expiry date on payment of the trademark renewal fee and a penalty fee.
Can an expired trademark registration be restored?
If you do not renew your trade mark in the 6 months after the renewal date, you have a further 6 months to apply to restore your registration. So you can restore a trademark provided it is done within one year of the expiry date. You will however be required to provide valid and acceptable reasons as to why you failed to renew the trademark registration timeously. You will obviously also be required to pay the trademark renewal fee and a penalty fee.
Can my registered trademark be revoked or invalidated by a third party?
It is possible for third parties to apply to revoke or invalidate a registered mark.
In the UK and EU a trademark can be revoked if the owner fails to use the mark for a continuous period of 5 years from the date the trademark was registered. A trademark can also be revoked if it has become a term commonly used in the trade (i.e. it has become generic or descriptive). ‘Escalator’ suffered this fate.
The onus is therefore on you to make sure that your trademark registration is used within 5 years of it being registered. It must be used on all the goods or services for which the trademark is registered.
Third parties can apply to have a mark invalidated if they can show that the mark should have been refused under the absolute or relative grounds for refusal. In other words that the trademark in question should not have been registered in the first place.
Can I sell my registered trade mark?
Yes, a trade mark like any other “intellectual property” can be sold. It is similar to other property you may own. We can advise you on the legal requirements when transferring ownership. We will draft he required agreement and attend to recording the transfer of ownership against the registered trademark.
Can I amend my registered trade mark?
You cannot make any amendments to the actual trademark once it has been filed or registered. You can make changes to the name and address of the proprietor of the trademark. You can also surrender certain goods or services that are covered by the trademark registration. However, you cannot add further goods or services.
Once I have a trademark registration, can I extend it later by adding other goods or services if my business expands?
You cannot extend an existing trademark registration but you can obviously file another trademark application to cover the extra categories of goods or services. However this is not very cost-effective. We therefore recommend that you consider the likely future scope of your business and make sure your first application adequately covers additional goods/services that you intend to provide in the future.
What happens if there are changes to the name or address of the trademark owner?
These changes can and must be recorded against your trademark registration. We can obviously do this for you.
Can I cancel my registered trade mark?
Yes a trademark registration can be surrendered at any time.
What is the difference between the symbols ‘TM’ and ®? When can I use them?
”TM’ denotes that the mark is a trade mark and is being used as such. This symbol can be used in relation to both registered and unregistered trade marks.
® indicates that the mark is registered. This symbol can only be used in relation to registered marks. It is an offence to use it in conjunction with an unregistered mark.
If I have a trademark registration for one kind of product or service, can someone else get a trademark registration for a different kind of product or service?
Yes they can provided the goods/services their trademark is used on are sufficiently different and distinguishable from the goods and services covered by your trademark registration. However, if a trademark is well known it qualifies for additional protection and you cannot use a well-known mark on dissimilar goods or services in circumstances where the distinctiveness of the mark is likely to be diluted or when it is likely to give rise to an unfair advantage.
How can I exploit my trademark?
Trademarks can be licensed or mortgaged.
- If you licence your trademark to someone else you are giving them the right to use it subject to the terms and conditions of the licence agreement. It is compulsory for a licence agreement to be in writing. If a licence is granted you should record it against the trademark registration.
- You can use your trade mark as security for a loan. The mortgagor has a legal right in your trade mark until you repay the loan. You or your mortgagor should register the mortgage with the IPO and record it in the register. When the loan has been repaid you can cancel the details from the register.
Enforcing your Trademark & Trademark infringement
What is trade mark infringement?
If you use, in the course of trade, an identical or similar trade mark for identical or similar goods and services to a registered trade mark – you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. This includes the case where because of the similarities between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.
Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.
When are trademarks similar?
The test is whether or not the average consumer is likely to be confused. Confusion is likely if the average consumer wrongly believes that the respective goods come from the same or economically linked undertakings.
It is clear from case law that:
- the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
- the matter must be judged through the eyes of the average consumer of the goods/services in question;
- the average consumer normally perceives a trademark as a whole and does not proceed to analyse its various details;
- the visual, aural and conceptual similarities of the trademarks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components;
- a lesser degree of similarity between the trademarks may be offset by a greater degree of similarity between the goods, and vice versa;
- there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it;
- assessment of the similarity between two trademarks means more than taking just one component of a composite trade mark and comparing it with another mark; the comparison must be made by examining each of the marks in question as a whole;
- In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.
Can an unregistered trademark be infringed?
There is no available remedy for trade mark infringement if the earlier trade mark is unregistered. Some unregistered trademarks may be protected under Common Law and this is known as Passing off. However, whether or not they are protected will depend on the particular circumstances, in particular:
- Whether, and to what extent, the owner of the unregistered trade mark was trading under the name at the date of commencement of the use of the later mark;
- Whether the two marks are sufficiently similar, having regard to their fields of trade, so as to be likely to confuse and deceive (whether or not intentionally) a substantial number of persons into thinking that the junior user’s goods and services are those of the senior user;
- The extent of the damage that such confusion would cause to the goodwill in the senior user’s business.
What are the remedies for trademark infringement?
The most common remedies are an injunction, damages, delivery up, removal of the infringing sign from the goods or even destruction of the infringing goods themselves.
EU Trademark Registration
There are three ways of protecting your trademark in the European Community:
- Separate national trademark registrations in the individual European countries of interest to you
- Community trademark registration (CTM)
- International registration (Madrid Protocol) designating the European Community or the individual countries within the EU in which protection is required
The Community Trade Mark (CTM) IS the most commonly used method due to its administrative ease and cost effectiveness.
What is a CTM or Community Trade Mark?
The Community Trade Mark Regulation provides for a single Community Trade Mark (CTM) registration which will be enforceable in all 27 countries of the European Union. The registration will extend to all new member countries as they join the European Community. The unitary nature of the CTM also means that it can only be registered, transferred, surrended, revoked or declared invalid in respect of the whole of the EU.
The CTM system is administered by the Office for Harmonisation in the Internal Market (Trade Marks & Designs) – OHIM, based in Alicante in Spain.
Applications are multi-class. This means that is a single application can cover whatever goods or services interest the applicant.
Who can apply for a CTM and what is the trademark registration process?
Virtually any individual or company has the right to apply for and own a CTM registration. You do not have to be based in the UK or EU.
After a CTM application is filed it undergoes examination. OHIM only examines whether the applicant is entitled to be a proprietor of a CTM and whether there exists absolute grounds for refusal (i.e. the mark is descriptive or non-distinctive). It is important to note that OHIM does not examine on relative grounds (i.e. for earlier conflicting marks). Official searches for earlier conflicting trade mark applications and registrations are, nevertheless, performed. However, the results of these searches are sent to the applicant for information only. The CTM Office has no power to reject a CTM application on the basis of identical or similar marks found in these searches (but see CTM opposition discussed below). If there are no objections from the registry the application is then published in the CTM journal for opposition purposes. The opposition period is 3 months. Third parties in any EU Member States may oppose the CTM on the basis of earlier CTM or national trademark applications or registrations. For CTM opposition purposes, a prior trade mark right is one of the following:
- an earlier filed Community, EU national or international trade mark application or registration (the international trade mark application or registration must designate an EU country);
- a well-known trade mark;
- an unregistered trade mark that has acquired sufficient reputation through use in the EU; or
- an EU company name
A notice of opposition can only be filed at the OHIM.
If no opposition are filed within 3 months of publication then the registration certificate issues.
How long is a CTM registered for and how do I maintain my CTM registration?
The initial period of protection is 10 years, renewable for successive 10 year periods in a single transaction prior payment of a single renewal fee. There is no requirement to certify or prove use of the mark to renew the registration.
However, in order to maintain the validity of a CTM registration, the registered mark must be brought into genuine use in the EU within five years of the registration date. If this is not done, the CTM registration becomes vulnerable to cancellation on the ground of non-use. It is important to note that use in one country is sufficient to satisfy this requirement.
It will be an infringement of the rights given by a CTM registration to use an identical or similar mark on goods or services that are identical with or similar to those covered by the registration. If the marks or the goods/services are not identical, it will be necessary to establish a likelihood of confusion. Furthermore, if the registered mark has sufficient reputation in the EU, it will also be an infringement to use the identical or similar mark on goods or services not covered by the registration. In this case, to prove infringement, the CTM owner must show that use of the competitor’s mark ‘takes unfair advantage of or is detrimental to the distinctive character or repute of the CTM’ (more commonly called dilution).
What are the advantages of Community Trade Mark registration?
- A CTM provides cost-effective protection throughout the EU.
- Any individual or company can file a CTM application. This differs from the Madrid Protocol route which is limited to nationals of Madrid States or those with a place of business in a Madrid State (separate bulletin available).
- The CTM will enable consolidation of registration in each of the Member States, and enable simplified maintenance (i.e. only one renewal fee) while retaining national seniorities.
- Use in only one Member State will be sufficient to defeat a non-use attack.
- OHIM will notify Community Trade Mark proprietors of any later conflicting CTM applications. This will facilitate watching for potential conflict situations.
- The future expansion of the EU will automatically be reflected in the coverage of existing CTMs. This is particularly important with the imminent growth of the European community.
- Not necessary to base a CTM application on a national registration or application (which is a requirement of the International System).
- Ability to convert a CTM into national applications in the event of a rejection.
What are the disadvantages of Community Trade Mark registration?
- If a CTM application is rejected in any of the EU member states the entire application fails. The trademark must therefore be available in every member state in order to be registered.
- The unitary nature of the system means that the trade mark cannot be assigned or transferred for only part of the EU. It must be assigned for the whole EU.
- Since the only way of dealing with prior conflicting rights before registration is via opposition, a fair proportion of CTM applications have been opposed. However, most oppositions do appear to have been settled by agreement.
- Because a Community Trade Mark application will not be refused in view of prior CTM registrations it is the responsibility of proprietors to police their own trademarks and oppose later CTM applications in the event that a conflict exists. This can be expensive.
International Trademark Registration
There are three ways of protecting your trademark internationally:
- If you just want protection in the EU then the Community trade Mark registration (CTM) is the best option
- If you want protection outside the EU then you will either have to register your mark separately in the individual countries of interest to you or
- File a Madrid Protocol application designating the countries you want protection in. However, only countries which have signed up to this agreement can be included in the application.
What is a Madrid Application or a Madrid Protocol Application?
1. A Madrid Protocol Application is an international trademark application that allows you to extend protection of your trademark to countries of your choice by filing a single application to the World Intellectual Property Organisation (WIPO). However, only countries which have signed up to this agreement can be included in the application. Under the Madrid Protocol it is now relatively inexpensive for small and medium-sized businesses to obtain a broad global ownership of their trademarks that was previously only available to large multi-nationals.
2. For an International application to be considered:
- you must have an application or a registration in the UK or EU on which to base your application
- the International application must be for the same mark as the UK or EU application or earlier registration
- the goods or services in your International application must be covered by your UK or CTM application/registration
- The proprietors details must be the same (and they must be domiciled or have a real and effective business interest in the UK or EU
- the countries you want protection in must be signatories of the protocol
3. The cost to apply depends on which or how many countries you want your trade mark to be protected in. For any international application you will have to pay:
- a basic fee.
- additional fees if your mark is in colour
- additional fees if your mark contains more than 3 classes (in certain cases you may have to pay extra fees for more than one class of goods or services).
- a fee for each country you want protection in. Fees differ from country to country
The International Registration is reliant on the base application/registration in the Office of Origin for the first five years of its life. If the base registration is:
either partially or in totality during this period, the International registration will cease in respect of the goods/services effected. The dependence is absolute and is effective, regardless of the reason for the total or partial failure.
5. To soften the consequences of this dependency WIPO have a provision called transformation. This allows the holder to change the designation to become a national application/registration on the payment of a fee.
6. Opposition can also be filed individually against the mark in any of the designated countries, but this will only affect the International Registration in that country, if successful.
What are the advantages of the using the Madrid Protocol to get international trademark protection?
- Provides a convenient and cost-effective way of filing and maintaining trade mark rights in foreign countries.
- Central administration of a collection of national registrations
- Only the countries of actual interest need be included.
- If problems arise in one designated country, this can be dropped without affecting the others.
- Protection for some countries/regions may be obtained more quickly than by using the national route. This is because strict time limits are set under the Protocol.
- It is possible to extend an international registration to further Protocol countries after registration. An application for territorial extension (known as a subsequent designation) can be filed at any time after registration. The effective filing date of such a subsequent designation is the date the extension request reaches the national office.
- No need to appoint agents in designated countries unless problems arise
- It is possible to assign some designations and not others.
- An International Registration can replace a corresponding national/regional registration without loss of rights.
What are the disadvantages of the Madrid Protocol for international trademark registrations?
- There is no automatic entitlement to use this system. An applicant (and a subsequent assignee) must have effective business establishment in, domicile in or be a national of, a contracting state. So international registrations under the Protocol could interfere with a sale of assets to an entity based in a non-Protocol country.
- All fees due on filing, rather than being split between filing and grant.
- A home-based trademark application or registration is a pre-requisite for filing.
- For its first five years the International Registration is dependent on the prior application or registration upon which it is based. If the prior application does not achieve registration, or is subsequently invalidated or cancelled, partially or in its entirety, the IR is likewise entirely or partially cancelled. This is called the “central attack”. Therefore, it is critical that the basic application/registration is strong. (To remedy the fatal consequences of the central attack the Madrid Protocol provides that the IR application/registration can be transformed into separate, national applications which will retain the filing date of the original application. However, this transformation is an expensive and slow exercise).
- The dependency on the prior application or registration also means that the specification of goods/services of the International Registration has to be the same as, or narrower than, the prior application or registration.
- The trade mark owner must be able to show use in each of the designated countries once the initial 5 year dependency period expires. If, the mark is not used in that country the registration will be vulnerable to be revoked in that jurisdiction.
Why use Revomark?
- Since 2005 Revomark has been a leading trademark advice and registration company in the UK.
- All work and advice is provided by highly experienced trademark lawyers or trademark agents with specialist knowledge in all aspects of trade mark law and practice. Your work will not be conducted by administration personnel, paralegals, or unqualified members of staff as is the case with many other companies that provide trademark services.
- We have successfully registered many 1000’s of trademarks in the UK, EU and internationally since 2005. In fact 98% of the applications we file have proceeded to registration. We get results.
- A significant proportion of our work comes from existing clients or through recommendations from them. They are clearly very happy with the service we provide. We will impress you to.
- We provide the full range of services relating to contentious and non-contentious trademark matters. We have a particular interest in contentious issues such as trademark opposition and invalidation actions and boast an impressive track record (96% success rate) in this regard.
- We are always available to answer questions and queries whether by email or telephonically and we certainly don’t charge you for this.
- Our flexible and informal approach ensures that we can provide a package that suits your specific needs, requirements and budget.
- Our charges are reasonable and affordable. You don’t have pay the earth to get the best advice.
- We usually provide a same day service. Instruct us before 3pm and your application gets filed on the same day.
- We do the work and you get the trademark registration certificate!
- Thousands of businesses trust us to register their trademarks. Follow the crowd. Try us – you will not be disappointed.