Applying for a registered trade mark
When applying for registration of a trade mark, along with a representation of the mark itself, it is necessary to specify the goods or services for which the mark is being used or on which you have an intention to use the mark. Goods and services are split into 45 different Classes depending on the nature of the goods and services. The application must list each class of goods or services for which you wish to register the mark. It is important that all potential uses of the mark are covered by the registration as it is not possible to add these at a later date.
Once an application has been filed in the UK or elsewhere, the appropriate Trade Marks Registry examines the application to determine if your mark is suitable for registration.
Although a trade mark can take many different forms, there are certain things that generally cannot be registered; for example, a mark that is descriptive of the goods/services or a mark that misleads people as to the nature of the goods/services.
If the Registry raise any objections, it is necessary to overcome these before the mark will be registered. In some cases it may be necessary to submit arguments to the examiner or to attend a hearing to try and overcome the objections.
Once examination has been successfully completed, the application is published. This then begins a two month opposition period during which time any other parties having earlier conflicting marks may object to your application.
Once the opposition period has finished, and as long as no oppositions were filed or any oppositions have been successfully overcome, the mark will then be registered.
The mark is registered for an initial period of 10 years and may be renewed, by payment of a fee, for further 10 year periods.
Please click here for a flow chart setting out the application procedure in the UK, and here for the procedure in Europe.
Using the International Trade Mark system
An International trade mark application must be based on a national or regional trade mark application or registration, such as a UK or EUTM registration, known as a home registration. The International application must be for the same mark, covering the same goods and services and having the same proprietor as the home registration.
In addition, the application lists the countries in which you wish to register your trade mark, known as designated countries. Once the application has passed a central International examination to ensure that the application meets certain basic requirements, the application is transmitted to each of the designated countries. In this way, the International application may be considered to be a bundle of national applications.
In some situations it may be necessary to apply for an International application together with one or more national applications, as not all countries are party to the International agreement.
Formal examination of the trade mark application occurs separately in each of the designated countries and acceptance or rejection of the application, therefore, happens at a national/regional level. Typically acceptance or refusal of the application will be notified within 18 months.
For the first five years of the International registration the registration is dependent on the home registration. As such, if the home registration is revoked or allowed to lapse, then the International registration will also be lost. If this occurs then it is possible, in some circumstances, to split the International registration into a number of separate national rights. After five years the home registration and the International registration are independent of each other.
It is possible to add further designations to an International registration at a later time. The trade mark application is examined in these additional countries in the same way as the earlier initial designations.
Because an International registration is a bundle of national rights it is possible to buy and sell and licence the registration whole or in part, in one or more of the designated countries.