The UK Intellectual Property Office (“UK IPO”) has recently released a document showing the likely timeline of a UK trade mark application, from filing to registration. The timeline can be viewed here.
So is there anything we would add?
The UK IPO suggests that the first step is to “check if you can register your trade mark”. This may sound simple enough but, from a legal perspective, there are a few things to consider. It is important to get this first step right.
Firstly, your trade mark must be considered to be a “sign” capable of being “represented graphically”. There is no statutory definition of what a “sign” is but the term has generally been broadly interpreted. Signs can include words, logos, symbols, 3D marks, colours, sounds, smells and the shape of goods themselves. In practice sound, smell, colour and shape marks are generally more difficult to protect than word or logo marks – oftentimes these marks are considered to be a characteristic of something which already exists as opposed to a distinctive sign, and they are also difficult to “represent graphically”.
Secondly, trade marks must have the capacity to “distinguish” the goods and services of one undertaking from the goods and services of another. In brief, trade marks will not have the capacity to distinguish if they are considered to be devoid of “distinctive character”, if they are descriptive of the goods/services for which they are to be registered or if the mark has become customary in current language or bona fide and established practices of the trade.
If your mark is to be considered to have the capacity to distinguish, you should avoid the following:
Simple signs such as single letters, numbers or grammatical, signs;
Simple colour marks;
Shapes which do not significantly depart from the norms of the sector;
Get-up and trade dress;
Names and signatures;
Slogans which are solely descriptive or promotional;
Marks which are used widely in the trade or profession; and
Marks which designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services.
However, it may be possible to argue that trade marks which are not inherently registrable due to lacking distinctiveness or being descriptive, are in fact registrable if they can be shown to have “acquired distinctiveness” through use. In other words if it can be shown that the mark now indicates the specific origin of a product, the mark may be accepted by the UK IPO.
Trade marks must also not be likely to create confusion in the minds of consumers with other similar marks. A likelihood of consumer confusion will arise if a mark is similar or identical to another mark, and is either:
used in relation to similar or identical goods or services; or
is not used in relation to similar or identical goods or services but is identical or similar to another trade mark with a reputation in the UK, and use of the later mark would take unfair advantage of, or be detrimental to the distinctiveness of, the earlier mark.
An easy way to find out whether there are other similar marks on the UK IPO register is by searching the UK IPO trade mark registry here: https://www.gov.uk/search-for-trademark. A search should be carried out for the mark you intend to register, in relation to the same classes of goods and/or services.
The UK IPO will not reject an application on the basis of similar marks being on the register, but they will provide you with a list of such similar marks following examination. They may notify the owners of such similar marks of the publication of your application. Once published, you mark will be subject to a two month opposition period whereby such owners can choose to oppose your mark.
If you have a mark which you would like to register, do please contact us. Our team of specialist intellectual property lawyers will be able to advise you in further detail in relation to the above.