United Kindom Trademark Filing Guide
I. GENERAL
A. Rights Afforded by Registration
Registration is required to establish rights to a trademark; this is a "first to file" jurisdiction. The exception is if a common law right of passing off can be established.
Use of an unregistered mark for any goods or services is legal.
B. Time Frame for Obtaining Registration
The approximate time from application to registration (for a regular prosecution, without opposition) is: three to four months.
C. Advantages of Registration
The benefits of registering a trademark include the following:
it provides prima facie evidence of ownership and validity;
it provides regional/national/local protection;
it allows use of "Registered Trademark" or other suitable abbreviations to demonstrate ownership of the trademark;
it allows access to bring actions in particular courts;
it helps to deter others from unlawfully using the trademark;
enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
it encourages licensees and provides the opportunity to generate royalties through licensing.
II. FILING
A. Requirements
If the applicant is not domiciled in this jurisdiction, a local address for service must be provided. If the applicant's address is outside the UK, the Channel Islands or the European Economic Area (EEA), it must provide a contact address in one of these areas for receipt of the UK-IPO correspondence. If the applicant appoints a third party, such as a trademark attorney or agent, the party's address for service must be an address within the UK, the Channel Islands or the EEA.
Joint applicants are permitted in this jurisdiction.
Either actual use or intent to use is required for application.
The following information is required to complete an application:
name and address of the applicant;
state or country of incorporation;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
statement of intention to use;
official filing fee;
request for registration.
While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
name and address of the applicant;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
request for registration.
The list of goods and services in this jurisdiction may specify:
a list of the common commercial names for the specific goods or services of interest;
the relevant entire (long) alphabetic class listing.
Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
none.
In this jurisdiction, the following type of registration is available:
national;
regional;
international.
This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.
This country is a member of the European Union; a Community Trade Mark registration is effective in this jurisdiction. (See the entry for the Community Trade Mark.)
No multinational regional registrations are available in this jurisdiction, other than as mentioned above.
An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid Agreement and Protocol.)
Applicants will receive a discount off the application fee if the application is filed online. This discount does not apply to filing by fax or post.
The official file cannot be accessed online.
Applications are not officially searched as to prior trademarks.
B. Priority
If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)
An International registration can be based on a national application or registration in this jurisdiction.
C. Classification
This jurisdiction uses the Nice Classification System.
If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services but separate applications are also permitted.
For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes: one.
D. Representation
An application to register a trademark may be filed directly in this jurisdiction by:
the applicant, even if not a citizen of or domiciled in the jurisdiction (If the applicant is not based in the UK and not represented by someone based in the UK, the applicant must provide an address in the EU or the EEA with which the UK-IPO can correspond. Applicants based in the Channel Islands and the Isle of Man will not be asked to provide an address for service in the UK.);
a trademark representative/attorney/agent, even if not a citizen of or domiciled the jurisdiction (If the representative/attorney/agent is not based in the UK, he must provide an address in the EU or the EEA with which the UK-IPO can correspond.).
III. APPLICATION
A. Publication
The filing particulars of an application are made available to the public.
The filing particulars are made available:
through publication and online.
The following application details are made available to the public:
mark;
name of applicant;
address of applicant;
state or country of incorporation of applicant;
application number;
application date;
goods/services;
priority claim information;
representation of trademark.
B. Examination
Applications are examined in respect of:
formalities: i.e., for compliance with the filing requirements;
classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
clarity: i.e., that descriptions are clear, and are understandable;
descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services).
A search of prior marks is carried out, and the results of such a search and the existence of prior third-party rights are communicated to the applicant. However, they do not form the basis of an objection to registration by the Registry.
This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).
The order of the application process is as follows:
Examination, publication, registration.
C. Prosecution
Accelerated examination may not be requested. In principle, there is an option to file a fast-track application that reduces the registration procedure by about three weeks. However, the fast-track service currently is unavailable for an indeterminate duration, and it has been unavailable for over a year, owing to the current quick turnaround time of the standard examination service.
The following rights are established by a pending application:
the filing date of the application establishes a home filing date for purposes of priority;
the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application. When a trademark is registered, the filing date is deemed to be the date of registration. The rights conferred by a registered trademark have effect from the filing date provided that (i) infringement proceedings may not be launched before the date of registration and (ii) an offense of unauthorized use of a trademark in relation to goods is not committed before the publication of registration.
D. Opposition
An application can be opposed.
The following can be grounds for opposition:
proprietary rights, such as an earlier conflicting registration;
the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;
the mark is not distinctive;
the mark is misleading, deceptive or disparaging;
the mark is functional;
breach of copyright;
rights under Article 6 bis of the Paris Convention (notorious or well-known mark);
rights under Article 6 ter of the Paris Convention (protection of armorial bearings, flags and other State emblems);
rights under Article 6 septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
registered design rights;
the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
the mark consists of a geographical indication;
the mark is against public policy or principles of morality;
unauthorized use of specially protected emblems or national insignia;
passing off (also in relation to company names and personal names);
unregistered design rights;
the mark was filed in bad faith;
the mark is contrary to UK or Community law.
An application is published for opposition purposes after formal examination of the application.
The opposition period begins on the following date: the date of publication of the application in the Trade Marks Journal.
The opposition period ends on the following date: two months from the date of publication of the application in the Trade Marks Journal, unless a request for an extension has been made, which extends the opposition period by a further one month. The request for an extension can be done only through an online form titled "Notice of Threatened Opposition."
Anyone may oppose an application.
Oppositions cannot be filed online. The "Notice of Threatened Opposition" must be filed online, but the "Notice of Opposition" must be sent to the UK-IPO by either fax or post.
E. Proof of Use
Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.
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