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Seven things to consider when self-filing UK trade mark applications

  1. Registering a trade mark
    iStock/Mike_Kiev
    FrazerBye

    FrazerBye UKBF Regular Full Member - Verified Business

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    More and more people are self-filing UK trade mark applications. The UK Intellectual Property Office (UKIPO) is set up for this and have a very friendly user interface.

    However, it oversimplifies the application and I’ve noticed an increase of the number of people who either land themselves in opposition proceedings or, worse still, find that their registered trade mark doesn’t protect the thing they want it to or that it cannot be enforced.

    This post aims to identify common pitfalls with the application process and ways to avoid them.

    1. What is a trade mark?

    A trade mark is any sign or symbol that is capable of being graphically represented which can distinguish the goods or services of one undertaking (for example a business) from those of other undertakings (other businesses).

    A registered trade mark provides a monopoly that excludes a third party from using a similar or identical mark for similar or identical goods or services where it can be shown there is a likelihood of confusion on the part of the public.

    Trade marks can be registered for any means of differentiating your business from any other, so long as the mark can be represented graphically. Hence, trade marks are not limited to words and names, but can include figures (such as cartoon characters), colours (eg. the colour orange for mobile telephones), music (eg. mobile phone ring tones), product shape (eg. certain triangular Swiss chocolate bars) and packaging. You can, in theory, register a smell as a trade mark, although no one has yet succeeded.

    2. Choosing your trade mark

    Good trade marks are distinctive. The more unusual a mark is the more likely it will be capable of possessing distinctive character – one of the requirements for registering a mark.

    Marks which are descriptive or abstract are not likely to be registerable. The reason for this is that the public needs to be able to refer to goods by their common name, so trying to register either of the marks ‘Apple’ or ‘00785’ for fruit are unlikely to succeed.

    You need to consider in what form you intend to register and use your mark. You must use the mark in the form it is registered. If you fail to use the mark in the form it is registered for a period of five years the trade mark will be vulnerable to revocation and therefore ineffective should you try to enforce it at a later date.

    If you can, apply to register the text of a mark alone (with no colours, figurative elements, or logos). Your registration will then protect the use of that text in any form. This means you can update your logo or style of your trade mark but still be covered by a single registration.

    3. Choosing your goods or services

    One of the options during the UKIPO trade mark registration wizard is to “select goods and services from an approved list”. Using this option decreases the likelihood of the examiner objecting to your application.

    In general, it is a good idea to include anything you think you will use the mark on now or in the future. This is because you cannot add goods or services to the application or registration later, only remove or limit them. Although please note that the cost of the application will increase if you need to add goods in different classes.

    4. Make searches

    Searches ensure a few things:

    • That the mark is not already registered
    • That you will not infringe another trade mark or commit passing off
    • Searches allow you to tailor your application to minimise the risk of opposition

    The trade mark register is crowded, particularly in certain sectors. For example, attempting to register an Italian word that describes food for use on pizzas is very difficult due to the number of other marks on the registers.

    There are multiple risks if the wrong mark is selected. Your mark may infringe a registered right (UK, European or International). Your mark may commit ‘passing off’ of an unregistered mark. If the mark is for a 3D shape, or consists of a pattern, then design rights also need to be considered. Finally, a third party may object to the use of your mark or allege that it is an infringement of their rights regardless.

    It is recommended that you have searches conducted to reduce the above risks. These can be conducted by a professional or by yourself. Any amount of searching is preferable to none. The results of punching your proposed mark into an internet search engine can be the fastest way of ruling the mark out.

    To assess whether a trade mark that is already on register is “similar” to your chosen mark you need to consider the following questions:

    A. Are the marks similar?

    • Are the marks conceptually similar? For example, the word ‘APPLE’ and a picture of an apple both conceptually refer to apples, so there is potentially a high likelihood of confusion.
    • Are the marks visually similar? If the marks are ‘APPLE’ vs ‘APP1E’, replacing a single letter with a number is a banal difference and insufficient to confer a distinctive character. The likelihood of confusion is high.
    • Are the marks phonetically similar? If the marks are ‘APPLE’ vs ‘HAPEL’ there is a likelihood of confusion as the marks cannot be distinguished if a customer walks into a shop and asks for either product.

    B. Are the goods similar?

    • The goods are identical. You intend to use the mark on, for example, ‘clothing, footwear, and headgear’, and there is another mark which is similar to your mark on the register. In this case, there is a very high risk of opposition proceedings if you attempt to register the mark and a high risk of infringement proceedings if you use the mark.
    • The goods are similar. Continuing the above example, you intend to sell ‘headgear’ only and the similar mark on the register is only for ‘clothing and footwear’. If you fall into this category you should seek professional advice from a trade mark attorney who will be able to give a risk profile for your particular situation.
    • The goods are completely different. You wish to sell ‘carpets, rugs, and mats’, and the similar mark on the register is for ‘clothing, footwear and headgear’. Unless the mark has a significant reputation (it is a massive global brand for example), then the risk of opposition to registering the mark is low and the risk of infringement is low.

    The above is by no means a comprehensive method to assess if a trade mark is similar, free to use or free to register. At best it is a rule of thumb. If you are unsure of any aspect you should seek professional advice.

    5. Applying

    The UKIPO offers a Right Start service. Here you can pay half the official fee and have the UKIPO perform a search and provide an opinion on your mark. This service is fast, inexpensive (£100 at the time of writing) and will tell you if there are any knock out registrations already on the register. This service does not, however, provide common law searches (ie. for passing off rights). If the report comes back favourable, you can pay a further £100 and the UKIPO then proceed to register your chosen mark.

    If you have not applied for a UK trade mark before, are unconfident about the mark or your searches, I strongly recommend that you use the Right Start service.

    6. Opposition

    Once your application has been filed and accepted by the UKIPO, it will be published for a period of two months to allow anyone to object to it.

    Normally, a third party will file form TM7A – notice of threatened opposition and extend the deadline by one month (three months in total). You will be notified of the threatened opposition by the UKIPO and will have the one-month extension to decide what to do.

    Before an opposition is launched you can withdraw your application at no further cost. If you enter opposition proceedings and lose you will be liable for costs on a scale between £150-3,000.

    If an opposition is launched you will be able to argue your case or make a limiting amendment (ie. to exclude the goods or services that the opponent considers to be identical or similar). Bear in mind, you cannot add to a specification, only limit it or remove goods or services. You cannot amend the mark.

    7. Summary 

    The above is intended to ensure that if you self-file a trade mark application that you end up with a useful and effective right, as well as to help minimise the risk of opposition proceedings which can leave you liable for costs.

    If in doubt at any time please do contact a professional for guidance. The Institute of Trade Mark Attorneys offer free trade mark advice clinics for those in London, but most registered trade mark attorneys will also offer a free assessment.

    In any case, I consider the following to be the key points:

    • Make searches: is the mark safe to use and free to register?
    • If your mark consists of words attempt to register the words alone (ie. without any logo, stylisation or figurative elements). This provides the broadest scope of protection
    • Use the UKIPO Right Start service to pay only half the official fees to get the UKIPO opinion on your mark before committing to the rest of the official fees
    • If opposition is threatened, to avoid becoming liable for costs, either try to resolve the conflict before an opposition is launched or withdraw the application before the opposition deadline
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