Disclaimer: The material on this website is provided for
general information only. It is not intended as legal advice on
any specific factual situation. For such advice, a client must
contact a member of the firm directly. Nothing on this website
constitutes an offer for supply of goods or services and nothing
on the website constitutes any waiver, in whole or in part, of
the firm's Terms of Business,
which govern all services provided to clients by the firm.
A trade mark ("TM") is a sign capable of distinguishing
the goods or services of one undertaking from those of another.
It can, for example, be a letter, a number, a word, a phrase, a
device, a picture, a smell, a sound, a shape, a colour, or any
combination of these. Marks used in connection with services are
sometimes referred to as "Service marks" or identified
by "SM", but in most legislation the term "Trade
Mark" or "Trademark" is used generically to cover
marks whether used in respect of goods or services.
The term "trade mark" therefore embraces:
- brands
- trading styles
- logos
- names and likenesses of real or fictional characters
- marques
- "house-marks"
- distinctive parts of company names
- "trade dress" or "get-up" of goods
- product names
- service marks
- certification marks
- collective marks
- series marks
- internet domain names
and other marketing concepts which have as their objective the
distinguishing of goods and services of one entity from those of
any other.
Q2. How are protective rights to a
trade mark established?
By "protective rights", we mean the rights to stop unauthorised
imitation of a trade mark and to stop unauthorised attempts by
others to protect such an imitation.
Protective rights are usually established in the United Kingdom
by use, by registration, or most effectively by a combination of
use and registration.
Such "use" must be sufficient to establish a trade or
business goodwill (reputation) in the United Kingdom, although
internationally well-known marks can gain a certain measure of
protection without necessarily having any established goodwill
in the United Kingdom. Lawyers refer to use-based rights as "common
law" rights. Their infringement is called "passing-off" (or
considered as "unfair competition" in some jurisdictions).
"Registration" in the UK may be (a) on the Register
of Trade Marks established under the Trade Marks Act 1994
and administered by the Trade
Marks Registry of the Patent Office; (b) on the Community
Trade Marks Register administered by the Community Trade
Marks Office, or more accurately, the European Union Office for
Harmonization in the Internal Market (OHIM);
or (c) on both Registers. In case (b), a Community Registration,
if valid, may be enforced in all countries in the European Union.
A national UK Registration can be obtained either by applying
directly to the UK Trade Marks Registry, or by applying for an
International Registration under the Madrid Protocol and designating
the UK (see Q11, below).
In the case of trade marks which are original artistic works (e.g.
logos), the law of copyright may also establish protective rights.
In the case of trade marks which are novel shapes of articles,
or ornamentation applied to articles, the law of industrial designs
may also establish protective rights. Protection of trade marks
by means of copyright and industrial designs law is dealt with
under the subject categories "Copyright" and "Designs".
It is important that trade mark registration is not confused with
incorporation of a company under UK Company Law, which involves
registration of a company name on the Register of Companies maintained
by Companies
House. This confusion is particularly likely when the trade
mark at issue is the distinctive part of a company name. However,
the principles for establishing protective rights for a trade mark
as outlined in Q2 above, hold good even in this
situation.
Companies
House has issued a revised Policy
on Companies Names. Under the Companies Act 1985, registration
of a company with a name which is essentially "the same
as" an existing registered company name is prohibited,
and Companies House may also require a company whose name is
considered "too like" an existing registered
company name to change its name. The Policy makes clear that
Companies House will normally consider even very slight differences
(other than commonly recognised abbreviations) between company
names to be sufficient to permit registration.
In two limited senses the incorporation of a company under UK
Company Law can confer certain rights in the distinctive part of
the company name. These are as follows:
i) As noted above, under UK Company Law, a later company cannot
be incorporated under a name which is "the same as" or "too
like" the pre-existing company's name. This blocking
effect is, however, often of little practical significance.
A different company name, even if it still includes the distinctive
part of the earlier name, will not be blocked (e.g. Vector
Limited will not block Vector Holdings Limited). Furthermore,
many businesses are carried on by sole traders or partners
in their own names, without any company incorporation; UK Company
Law does not apply to such businesses.
ii) Under Section 11(2) of the Trade Marks Act 1994, a company is given
a statutory right to use its name "in accordance with honest practices" (with
or without the tag "Limited" or "plc" or the like)
where such use might otherwise infringe a registered trade mark. This
is a defensive right - i.e. it is available only in defence of an attack
against the use. Moreover, proof of "honest practices" may
be difficult if the circumstances suggest otherwise, and the defence
does not necessarily work correspondingly against a complaint of "passing-off" based
on a competitor's protective rights established by use.
As with company names, it is important that trade mark registration
is not confused with registering an internet domain name on the
registers maintained by Verisign
(formerly Network Solutions (NSI) or other Top Level Domain
(TLD) and country-code (ccTLD) national
domain namespace registries, such as Nominet
UK, which are responsible for the so-called country-code domains
(those with a geographic relevance, like .uk for the UK and .fr
for France). Confusion is particularly likely when the trade mark
at issue is a prominent part of the domain name. The principles
for establishing protective rights for a trade mark as outlined
under Q2 above, hold good in relation to domain
names.
There are important differences, however. Registration of a trade
mark will generally prevent use or registration of the same or
a similar mark for the same or similar goods or services. It will
not necessarily prevent use of the same mark for different goods
or services. Thus a mark like GUARDIAN, can be registered as a
trade mark by one company for newspapers, for example, and by another
for insurance services. In contrast, in any particular domain namespace
(the namespace may be defined by the Top Level Domain (TLD) e.g.
.com, or by a Second Level Domain (SLD) in country-code TLDs e.g.
.co.uk) there can only be one domain name using the identical mark
(there can only be one guardian.com and one guardian.co.uk). Ownership
of a domain name, therefore, automatically blocks any later attempt
by another party to register the identical domain name in
a given TLD/SLD. However, unlike registration of a trade mark,
registration of an internet domain name does not act as a barrier
to registration of similar domain names - changing a single
letter or altering the punctuation can be sufficient for a separate
domain name registration. This means that Internet domain names
provide plenty of opportunity for creating and exploiting confusion
at the expense of trade mark owners and their customers. Securing
protective trade mark rights is therefore especially important
to businesses which use the Internet.
Courts in the USA, the UK and several other countries have consistently
held that trade mark rights (registered and/or acquired by use)
are applicable and effective against cybersquatting and other abusive
forms of domain name registration which are intended to damage
or unfairly exploit the reputation in an established trade mark.
More information is available on our Internet
Issues pages, which also include details of relevant
UK cases.
To reduce the potential for confusion and the risks of disputes
over domain names, the following steps should be considered:
- including domain name clearance checks when a proposed trade
mark availability search is undertaken (see Q7 below)
- registering a preferred domain name in a generic Top Level Domain (e.g.
.com, .net, .org) and under any relevant country code TLD (e.g. .co.uk)
in countries where you expect to use your trade mark
- registering any closely similar variants of the preferred domain name
which would be likely candidates for misuse by competitors or others (e.g.
with and without a hyphen if the name comprises two or more words)
- using a specialist records service to ensure that the renewal fees for
domain names are paid to ensure the domain names remain registered to you
(we can provide such a service, if desired)
- maintaining an appropriate portolio of trade mark registrations in the
relevant jurisdictions, at least in respect of the distinctive element
of the domain name
If a dispute does arise, the generic Top-Level Domain (gTLD) name
registrars (for domain names ending with .com, .net and .org) now
adhere to the ICANN Uniform
Dispute Resoultion Policy (UDRP),
which can be followed as a first step in resolving a dispute over
registration of a particular domain name in a gTLD. A number of
so-called country-code domain (ccTLD)
registries have also adopted the UDRP (these include .tv (nominally
Tuvalu) and .nu (nominally Niue) which are in fact operated as
pseudo-gTLDs rather than for their originally intended geographic
significance), but otherwise national registries may have their
own individual dispute resolution policies (as does Nominet
UK for .uk) or may have no policy at all. Where policies exist,
they cannot exclude resort to the Courts of a competent jurisdiction,
but they are not always straightforward, and we would recommend
that you take specific advice from a member of the firm with experience
in such matters if you find yourself in a dispute.
If litigation is required to control another party's use of a
domain name, the legal basis for the action will normally be the
protective trade mark rights owned by the claimant (or possibly
by the defendant, if a counterclaim is also brought). However,
such litigation will often be complicated by the question of which
Court should have jurisdiction, as the disputing parties will frequently
reside, and their activities may take place, in different countries.
At present, there is no international Court, or international legal
system for litigation of disputes relating to Internet domain names,
even though the Internet is said to transcend all national borders.
Trade marks which are naturally distinctive and not descriptive
of the particular goods or services in question are easiest to
protect in the United Kingdom and the European Union.
Such trade marks can, for example, be abstract logos, invented
words (e.g. KODAK for cameras) or words which have no meaning relevant
to the goods or services in question (e.g. PENGUIN for chocolate
biscuits).
Trade marks which have a meaning which conjures up only an indirect
allusion to the goods or services in question are considered as
naturally distinctive, and are therefore easily protectable (e.g.
VENUS for insect traps).
Trade marks which directly allude to a characteristic (or possible
characteristic) of the goods or services in question are more borderline.
Thus, for example, trade marks comprising geographical names, surnames
and laudatory words or trade marks which suggest a characteristic
of the goods or services concerned, may be unacceptable unless
it can be shown that the mark has become distinctive in fact as
a result of widespread prior use and recognition.
Q6. What trade marks are most difficult
to protect?
Trade marks which are in some way generic, descriptive or commonplace
in respect of the particular goods or services, or which are unimaginative
(e.g. a mere statement of quality or the like), are unlikely to
be considered distinctive of one particular source of those goods
or services. Such trade marks are therefore difficult to protect
(e.g. EASYWRITE for writing instruments). Similarly, common surnames,
individual letters, simple numerals, and significant geographical
place names are considered relatively unimaginative and not distinctive,
and are therefore difficult to protect.
In some cases, such weakness can be overcome by providing evidence
of the necessary distinctiveness having been acquired, for example
by lengthy prior use.
Obviously mis-spelled versions of trade marks which are difficult to protect
are often also difficult to protect. This is because the mis-spelling will
not necessarily be apparent every time the trade mark is used (in speech,
for example) and people may remember the mark in its correctly spelled (unprotectable)
form.
A trade mark which is a composite of a distinctive component (protectable)
and a generic component (unprotectable) will normally be considered
protectable provided that the distinctive component is not overwhelmed.
As the protective right provided by registration of a trade mark
in relation to particular goods or services is a right of exclusivity,
it follows that trade marks that are identical with, or similar
to, famous trade marks, or other trade marks already protected
by someone else for the same or similar goods or services, are
also difficult or impossible to protect and use.
It can happen that a trade mark that
ought not to be protected is allowed by the relevant Registry (i.e.
the UK Trade Marks Registry or OHIM as the case may be). In that
event, the resultant registration may be invalid and unenforceable.
Such a registration is then liable to cancellation. This may occur
for a number of reasons, because:
(a) of a mistake;
(b) the Examiner in the relevant Registry is unaware of another
party's earlier rights (e.g. because the prior rights are unregistered
- "common law" rights);
(c) the applicable rules do not allow for rejection on certain
grounds (for example, OHIM cannot refuse registration on the
basis of earlier registered rights, it being left to the proprietor
of such rights to monitor and oppose conflicting applications
in such circumstances - in contrast the UK national legislation
allows the UK Trade Marks Registry to refuse applications if
there is a potential conflict with relevant earlier registrations
and it is then up to the applicant to take steps to overcome
the conflict);
(d) the owner of a relevant earlier right fails to oppose registration,
or opposes ineffectively.
If a Community registration is found invalid because of an earlier
national right which does not itself apply in all member states,
it is possible to convert the Community registration into a bundle
of national registrations in those memer states where the earlier
national right does not apply.
An action to cancel a Community registration in circumstances
(b), (c) and (d) above must be brought before OHIM by the owner
of a relevant earlier right. However, this restriction does not
apply to national UK registrations, which may be challenged by
any party.
Q7. How are proposed new trade marks
checked for availability?
An availability search and report is one of the services that
we offer to clients. We would first discuss the level of detail
required in the search, to assess the search strategy best suited
to the client's requirements.
For example, we may look only for identical trade marks initially,
and then go on to search more widely if no identical trade mark
is found. We may be given a list of proposed marks, in decreasing
order of importance, and be asked to work through the list until
an available mark is found. We may need to consider only a limited
range of goods or services of interest, or a much wider range.
It may be appropriate to include other countries in the search.
Searches can be directed only at finding registered rights, or
additionally at identifying the possible existence of protective
rights established simply by prior or concurrent use. It is often
convenient to make searches for the availability of, or possible
conflict with, corresponding company names and internet domain
names at the same time. Searches can be made for non-verbal trade
marks (e.g. devices, colours, shapes, etc), if required.
Naturally, we expect to advise a client of the anticipated costs
of the searches and reporting involved and to obtain the client's
acceptance of our estimates before commencing the work.
In cases of average complexity, it would take about five to seven
working days to complete the search and report. In cases of urgency,
this period can be shortened subject to payment of an urgency surcharge.
The report will include a discussion of the prospects and likely
costs of obtaining registration of the trade mark, in the event
that the proposed trade mark seems to be available.
Q8. What can happen if a trade mark
is launched when it is not available?
The short answer is anything ranging from (a) receiving a High
Court Claim Form (formerly, and more familiarly, known as a writ!)
for trade mark infringement and passing-off and being simultaneously
prosecuted for the crime of unauthorised use of a registered trade
mark to (b) nothing whatsoever!
In other words, it largely depends on the motivation of the earlier
owner. This will clearly depend on the actual effect of your launch
in the market, and whether confusion between your goods or services
and those of the earlier owner begins to take place.
In countries where the earlier trade mark is protected, any application
to register the newly launched trade mark will be at risk of opposition
by the owner of the earlier mark. In addition, if the earlier trade
mark is registered, any application to register the newly launched
trade mark in countries (e.g. the United Kingdom) where a full
examination is conducted will encounter an objection based on the
existence of the earlier registration. This will effectively block
or at least delay registration of the newly launched trade mark,
unless the positive consent of the earlier owner can be obtained.
In summary, therefore, it is advisable to clear all proposed new
trade marks as soon as possible, to establish their availability
and registrability.
Q9. What are the advantages of registration
of a trade mark, as compared with gaining protective rights by
merely using it?
The principal advantage is the possibility of taking civil action
for trade mark infringement (potentially nationwide for a UK registration,
or throughout the European Union for a Community registration),
not merely for passing-off/unfair competition. (In the United Kingdom,
to succeed with a claim for passing-off, a claimant will have to
prove the existence of a significant reputation in its own use
of the unregistered mark, provide evidence of a likelihood of confusion
with the allegedly infringing mark and of damage to its business
as a consequence, which can be expensive or difficult to achieve.)
In the UK, and in other jurisdictions, further advantages of registration
include all or some of the following:
Public searchability of the mark.
A right to use the ® symbol.
Availability of criminal prosecution of infringers, e.g.
by private prosecution, by the police and/or by Trading Standards
Authorities.
Availability of Customs seizure of infringing goods.
Potential to block later third-party attempts to register the
same or similar mark for the same or similar goods/services.
Potential to block later third-party attempts to register an
internet domain name including the same or a similar mark (e.g.
using the ICANN Uniform Dispute Resolution Policy - UDRP),
and to object to incorporation of a UK Company with a company
name incorporating the same or a closely similar mark.
Easier subsequent registration in some overseas countries.
A statutory defence to an action against you for trade mark
infringement (in the United Kingdom, under Section 11(1) of the
Trade Marks Act 1994).
Alternative Types of Registration
Ordinarily, a trade mark will be registered and used by a trader
who provides the relevant goods and services in a particular jurisdiction.
In the UK it is possible for a non-trading association
to register a Certification
mark for use by any business (but not the certifying association
itself) whose goods and/or services meet the applicable standards
or conditions laid down in regulations specified by the non-trading association
and approved by the Trade Marks Registry for such use. Examples
of Certification marks include the well-known Woolmark and
the British Standards Institution's BSI "Kitemark".
The Community Trade Mark system does not provide for registration
of a Certification mark. In this case, only goods and/or services
which are produced or provided by an authorised used and which
are the subject of formal "certification" can be specified
in the application.
A trade association may also register a Collective
mark for use only by members of the association. Use of a
Collective mark may be, but need not be, subject to regulations
specifying particular standards or conditions for the relevant
goods and/or services. The association owning a Collective mark
may use such a Collective mark itself. Examples of Collective
marks include the Federation of
Master Builders' logo and the John
Innes compost manufacturers' mark. The title "Chartered
Patent Attorney" is legally protected under the Copyright
Designs and Patents Act 1988, but is also registered as a Collective
mark. Both UK and Community Trade Mark systems allow for registration
of a Collective mark. In this case, only those goods and/or services
which are actually traded in by the members of the association
may be specified in the application.
UK law further allows registration on the basis of a single application
for a series of similar variants of a mark (provided
the variants do "resemble each other as to their material
particulars and differ only as to matters of a non-distinctive
character not substantially affecting the identity of the trade
mark"). Typically acceptable variants may be word marks
in stylised fonts, or with alternative descriptive text (e.g. XYZ home,
XYZ life etc., for insurance services), or logo marks in
colour and in black and white. Among the advantages of a series registration
are that legitimate use of any one of the variants in the series
will validate the registration for all, and confusingly similar
variations can be explicitly included in a registration in anticipation
of likely forms of infringement. The Registry has issued a Practice
Amendment Notice PAN14/00 which deals in particular with the
possible registration of internet domain names with different domain
suffices (i.e. in different TLDs, such as fairwind.com and
fairwind.co.uk) as a series.
Q10. Are there any differences between
a UK and a Community Trade Mark Registration?
A Community Trade Mark registration has substantially the same
legal effect in the United Kingdom, as a United Kingdom trade mark
registration.
However, enforcement of national UK and Community Trade Mark registrations
can involve differences in procedure. For example, the rules on
jurisdiction to hear infringement actions differ as between UK
and Community registrations. Whereas a continental Court may, in
appropriate cases, have jurisdiction over infringement of a Community
Trade Mark registration, even in respect of infringing acts in
the United Kingdom, this is very unlikely in the case of a national
UK trade mark registration. The option to go "forum shopping" for
a Court more likely to be sympathetic and/or more likely to grant
pan-European relief against an infringer is therefore a potentially
significant benefit for the holder of a Community Trade Mark registration.
Q11. I've heard about International
Trade Marks. What are they?
The International Trade Mark system (sometimes called the "Madrid" system)
is still growing in its effect and popularity. At the present time,
many European countries (including Eastern Europe and Russia) are
in the system, as well as China. However, outside these areas the
coverage is thin and many important trading nations such as the
USA and Commonwealth countries are not currently parties to the
system, although the USA is expected to join by 2001. For more
details of the Madrid system coverage in Europe, see our Europe-Madrid pages.
The International Trade Mark system provides for a centralised
registration and register-maintenance procedure, administered by
the World Intellectual Property Organisation (WIPO)
in Geneva. The registration designates whichever country or countries
in which protection is required, and these designations can be
added to as a trade mark develops internationally. A full
list of those countries which have ratified the Madrid
Agreement and/or the subsequent Madrid
Protocol and which can be designated in an International application
is maintained by WIPO. Each designated member country has the opportunity
to object if the trade mark is not valid in its territory (e.g.
because of an earlier registered trade mark owned by another party),
but otherwise the International Registration has the full effect
of a national registration in any particular designated territory.
The procedural aspects of obtaining and maintaining an International
Trade Mark Registration are often simpler than obtaining and maintaining
a collection of national registrations. However, the costs depend
on which member countries are designated, and there may not be
significant cost savings, at least in the short term.
The International Trade Mark system is only available to residents
and nationals of member countries. In contrast, the national registration
systems are available to all and the Community registration system
to all applicants whose national systems provide reciprocal recognition.
At the present time, United Kingdom trade mark owners generally
find that the International Trade Mark system is less useful than
the Community Trade Mark system as a way of reducing overseas registration
costs, unless protection for a trade mark is also required in Eastern
Europe and China.
Q12. Can you briefly outline the
procedure you would follow for registering my trade mark on the
national UK Trade Marks Register or the Community Trade Marks
Register?
We would start the procedure by filing, on your behalf, an application
to register the trade mark in the appropriate Office.
The application must include:
- the trade mark
- the goods and/or services for which protection is required
- the name and address of the applicant
- the status of an incorporated applicant (e.g. the country or state of
incorporation)
The appropriate filing fee must also be paid at the time of filing,
and a formal authorisation may be required to complete the papers
(the authorisation can be filed later).
The costs of the initial filing would depend on the amount of
work involved, and the relevant goods and/or services for which
you intend to use the mark. Goods and services are categorised
in Classes, according
to the Nice Convention, and the Offices charge additional filing
fees if goods and services are specified in a number of different
classes (the UK Trade Marks Registry charges an additional fee
for each additional class above one, OHIM for each additional class
above three). We may need to discuss the nature of your business
in detail, to determine the extent of the cover you need from the
registration and in which class or classes the application should
be filed. The relevant classes must be stated in the application
papers. See Q14 below, for further information
on likely costs.
If you have an earlier first application for your mark in another
country it may be possible to take advantage of the Priority
system for subsequent applications. If so, further requirements
will need to be met - see Q18 for more details.
The date of filing of the application is the date from which protective
rights may be claimed, although they are not enforceable until
the registration procedure is completed.
The substantive part of this procedure starts - typically after
a delay of a few weeks - with the appropriate Office arranging
a search for prior registered rights and conducting an examination
of whether the trade mark is a sign that may be monopolised in
the particular business area concerned.
The results of the search and the examination are sent to us.
If the Office accepts the application then the application would
be advertised. To the extent permitted by its governing law, the
Office otherwise notifies us of any aspects of the search and the
examination which it considers to justify refusal of the application.
A period would then be set for us to reply to any such refusal.
In the UK Trade Marks Registry, for example, grounds for refusal
can include:
- a conflicting prior UK trade mark registration or pending
application
- a conflicting prior Community trade mark registration or pending application
- a conflicting prior International trade mark registration designating
the UK
- the mark is inadequately distinctive
In contrast, OHIM may raise objections only on the last of these
grounds.
If grounds for refusal of the application have been identified,
we would then report to you and discuss with you how the refusal
could be overcome. Where a number of options exist, you would need
to decide which to try first.
Provided that any such refusal can be successfully overcome, the
application would then be formally accepted and advertised in the
official journal of the appropriate Office. Within a period of
three months following the advertisement, any third party having
grounds for opposing the application may file an opposition to
seek to prevent registration. Any such opposition would then need
to be resolved in the applicant's favour before registration takes
place.
Once the three month period has passed, or any opposition has
been resolved in the applicant's favour, registration of the trade
mark takes place, and the rights represented by it become legally
enforceable back to the original filing date of the application.
In OHIM, registration is conditional upon payment of a fee (Registration
Fee). See Q14 below, for further information
on likely costs.
The procedure is clearly staged, and the likely costs can be discussed
at each stage in the process. At any stage, an application can
be withdrawn if further expenditure is not seen to be warranted.
The application would then be of no further effect. Costs already
incurred are not refundable.
It is not possible to predict accurately how long a registration
procedure may take. For the reasons set out above, this will largely
depend on the complexity of the examination and any opposition
stages. Typically, however, the procedure can take between six
and eighteen months.
See Q18 below for details of what we would
need in order to apply for registration of your trade mark.
The "Priority" System
The Priority system (otherwise known as the "Paris
Convention" or "Convention" system) allows
an applicant to claim the "Priority" of the filing
date of an earlier, first trade mark application in another "Convention" country. "Convention" application(s)
must be filed in the appropriate country or countries of interest
within a period of six months calculated from the date of filing
of the first application in a Convention country, which must
not itself have been expressly withdrawn or abandoned. Otherwise,
the right to claim "Priority" is lost.
Q13. Which route should I choose
- UK national or Community?
For a business with significant European-wide commercial interests
(or national interests in a number of major European countries),
a Community Trade Mark Registration is the natural choice. Cost
savings alone would make a Community Trade Mark highly attractive
by comparison with multiple individual national registrations across
Europe.
Nevertheless, there are some circumstances where it can still
be advantageous to retain a national registration as well. National
UK registrations can provide additional protection simply by re-registration
in certain British dependencies and in some Commonwealth countries
where the local law provides for protection to be extended. Similar
possibilities apply to national French registrations. If a trade
mark owner does business in such territories, it is worth seeking
specific advice on the options for protecting the mark.
Even if a business is only interested in the UK market, other
factors should also be considered before deciding on which route
to take:
(a) is there a possibility that OHIM might allow the application,
whilst the UK Trade Marks Registry would be more likely to refuse
it?
(b) is the Trade Mark close to earlier marks, which might provoke
objections by the Examiner in the UK Trade Marks Registry on
relative grounds (i.e. because there would be a perceived likelihood
of confusion)? As noted in Q6 (c) above, OHIM
cannot raise any such objections.
(c) would competitors or other parties be less likely to oppose
an application if protective rights are only being sought in
the UK? (Presently, about 20% of Community Trade Mark Applications
are subject to opposition.)
(d) is there a possibility that the UK Trade Marks Registry
might allow the application, whilst OHIM would be more likely
to refuse it?
If the answer to (a) or (b) is "Yes", then a Community
Trade Mark Application could be worth considering, if the benefit
of achieving registration justifies the additional costs (see Q14 below
for more information on relative costs).
If the answer to (c) or (d) is "Yes", the balance is
likely to swing in favour of filing a national UK application,
particularly as the potential costs of fighting an opposition,
the consequent delay and uncertainty over the outcome may be considerable.
Q14. What are the costs of UK and
Community applications?
The following cost estimates are effective from 1 May, 2002. HOWEVER,
COSTS CAN VARY OWING TO CHANGES IN OFFICIAL FEES, EXCHANGE RATES,
INFLATION AND OTHER FACTORS BEYOND OUR CONTROL. CONSEQUENTLY, THE
FIGURES HERE ARE PROVIDED FOR GUIDANCE ONLY. CLIENTS MUST CONTACT
A MEMBER OF THE FIRM DIRECTLY TO OBTAIN CONFIRMATION OF THE UP-TO-DATE
COSTS APPLICABLE IN THEIR SPECIFIC CIRCUMSTANCES.
Costs are shown exclusive of Value Added Tax (VAT), which will
be payable in addition at the prevailing rate by clients who are
resident in the UK.
Costs for UK National Trade Mark Registrations (US$ equivalents
are approximate)
Our basic charge for filing an application in the UK to register
a trade mark in one class of the Register is £480 (US$730),
which includes a fee of £200 (US$300) payable to the UK Trade
Marks Registry. If additional classes are designated, the cost
will be £105 (US$160) for each additional class, which also
includes a Registry fee of £50 (US$75) per class.
Thereafter, it would be prudent to budget for subsequent costs
of around £350-400 (approx. US$550-650) to cover the professional
time likely to be required during the examination process to advise
on and prepare responses to any objections which may be raised
by the Examiner. This figure may be revised up or down, depending
on the extent of work required to address any issues which are
raised in the Examination Report. Once the examination process
is complete, the only other routine costs are incidental charges
to cover checking and reporting on publication of the application
(when a three month period is allowed for other parties to file
an opposition) and dealing with the registration formalities. These
costs amount to £110 (US$175).
The risk of an opposition being filed in the UK is relativey low,
and oppositions can be compromised amicably in many cases, but
defending an application against a determined opponent can involve
substantial additional costs (perhaps up to £5000 (US$8000)
or more). It is important to be aware of this risk and to build
it into your budgeting if necessary.
Once registered, trade marks are renewable every ten years (counting
from the original application date). The cost of renewal for a
registration in one class, including official Registry fees, is
currently £360 (US$565), and £105 (US$160) for each
additional class designated in the same registration.
Costs for Community Trade Mark Registrations
Our basic charge for filing an application for a Community Trade
Mark Registration in one, two or three classes is ca. £930
(US$1415) (the exact charges will depend on exchange rates at the
time of payment), which includes a fee of €975 (Euros) (US$885)
payable to the OHIM (the Community Trade Mark Office). If additional
classes are designated, the cost will be ca. £175 (US$265)
for each additional class, which also includes an OHIM fee of €200
(ca. US$180) per class.
Thereafter, it would be prudent to budget for subsequent costs
of around £200-300 (approx. US$300-500) to cover the professional
time likely to be required during the examination process to advise
on and prepare responses to any objections which may be raised
by the Examiner. This figure may be revised up or down, depending
on the extent of work required to address any issues which are
raised in the Examination Report. Once the examination process
is complete, there is a charge of £110(US$175) to cover checking
and reporting on publication of the application (when a three month
period is allowed for other parties to file an opposition). Finally,
there is a charge of ca. £1105 (US$1685) for dealing with
the registration formalities including payment of the OHIM Registration
fee of €1100 (ca. US$1000) . Again, if registration is required
in more than three classes in the same application, there will
be additional charges of ca. £175 (US$265) for each class
over three, including an OHIM fee of €200 (US$180) per class.
The risk of an opposition being filed against a Community Trade
Mark Application is presently between 20-25%, which is relatively
high compared with the UK. The OHIM opposition procedure specifically
allows for a "cooling-off" period (initially two months
from notification, but extensible on mutual agreement), which parties
are encouraged to use to reach an amicable compromise if possible.
Many oppositions can be resolved in this period without significant
additional costs. However, as in the UK, defending against an opposition
by a determined opponent can involve substantial additional costs
(perhaps up to £5000 (US$8000) or more). It is important
to be aware of this risk and to build it into your budgeting if
necessary.
Once registered, Community trade marks are renewable every ten
years (counting from the original application date). However, as
the Community Trade Mark system has only been in operation since
1996, the first renewals will not be due before 2006. At this stage,
therefore, we have not set the level of fees for renewal.
Q15. How long does a trade mark
registration last?
A national UK trade mark registration, a Community Trade Mark
registration and an International Trade Mark registration all last
for an initial period of 10 years calculated from the filing date.
This may be extended indefinitely for periods of 10 years at a
time, on payment of renewal fees. Most clients instruct us to enter
the registration on our computerised renewal diary system, and
to attend to renewal (after first having obtained instructions
that renewal is still required) at the appropriate time.
Clearly your use should not infringe another party's protective
rights, or a complaint and/or legal action can be expected. Similarly,
your use should not mislead the public, for example as to the nature,
quality or origin of goods or services.
You should not claim a trade mark registration when you do not
have one. This is an offence under the Trade Marks Act. Many businesses
use the designation TM to identify an unregistered trade mark,
and the designation ® to identify a registered trade mark.
It is good practice to do this.
Alternatively, or additionally, a formal notice can be included
wherever convenient, e.g.
"VECTOR is a trade mark of Vector Limited"
or:
"VECTOR is a registered trade mark of Vector Limited"
as appropriate.
In printed material, resist the temptation to distort trade marks
or confuse them with ordinary English words. Always CAPITALISE
trade marks or use them in quotation marks. Never use them in a
possessive or plural form. In other words, keep them special and
distinctive.
If a trade mark happens to have a somewhat descriptive or laudatory
meaning, always accentuate the trade mark significance. Never use
the word in the purely descriptive or laudatory sense in the same
text.
For example:
"CLASSIC copying machines do a great job"
is correct, whereas
"CLASSIC copying machines do a classic job"
dilutes the trade mark and weakens its legal force and exclusivity
to that trade or business.
Where two trade marks are used in close conjunction - e.g. KODAK
INSTAMATIC - always ensure that both words are given equal prominence
and, wherever possible, follow the words with a description of
the product, for example
Q17. What can happen to it if I
do not use my trade mark properly and do not accentuate its special
and distinctive nature?
In time, a misused trade mark can enter into the common vocabulary
of a trade or business or even a complete language.
Once this happens, it cannot function to distinguish the goods
or services of one undertaking from those of another, and any person
can have it removed from the Register by applying to the Trade
Marks Registry or the OHIM.
Examples of registered trade marks which have had to be removed
from Trade Mark Registers because they have been allowed to enter
the common vocabulary are "escalator", "gramophone", "aspirin" and "linoleum".
The moral of this is that, if you find a salesman, marketing manager,
customer, supplier or member of the public misusing your trade
mark, put them right (in the nicest possible way, of course!)
Finally, if a registered trade mark is not genuinely used at all
in the United Kingdom (or in the European Union in the case of
a Community Trade Mark registration) for a continuous period of
five years or more, and there are no proper reasons for that failure
to use the mark, any person can have it removed from the Register
by applying to the appropriate Office.
Q18. What do you need to apply to
register my trade mark?
For a UK or a Community Trade Mark application we need:
- a graphical representation of the trade mark (i.e. in words
or an image if it is a logo) which must be capable of clear reproduction,
ideally to fit in an 8cm square;
- the full name and address of the or each party (individual
or other legal entity) who is to be the registered proprietor
of the mark, and the state/country of incorporation if the proprietor
is a corporate entity;
- a list of the relevant goods and/or services for which you
intend to use the mark (see Q12 for information
on Classification of Goods and Services
for trade marks) - note that under UK law an application may
be refused or a registration revoked if there is no bona-fide intention
to use for the specified goods and services;
- if the application is to be based on an earlier application
(a "Priority Application")
filed in a Convention country within
the previous six months, then we will also need to know the filing
date, country and application number of the earlier application
and to have a certified copy of the application within three
months of filing the corresponding UK or Community Trade Mark
application;
- if you are a new client with no established credit account
then we will also need you to complete the Client
Record Sheet (.pdf version)
in our Terms of Business and you will need
to provide us with an advance payment on account of an amount
sufficient to cover the anticipated filing costs (see Q14).
Additionally, for a Community Trade Mark Application, we will
need a completed form of Authorisation (.pdf
format) (preferably a General Authorisation) to act on your behalf
before the Community Trade Marks Office (OHIM).
Notes for overseas Attorneys and Trade Mark Agents intending
to instruct us for a UK or
Community Trade Mark application
A UK or Community Trade Mark Application can be filed:
(a) as a non-Convention application,
without priority; or (b) as a Convention application,
with priority;
Additionally, a UK national application may be designated
In case (a), we will
initially need a graphical representation of the mark;
the full name and address of the or each party (individual
or other legal entity) who is to be the registered proprietor
of the mark; the state/country of incorporation if the proprietor
is a corporate entity; and a list of the goods and/or services
to be specified, grouped by Class. A
signed Power of Attorney is not required for a UK application,
but for a Community Trade Mark Application, a form
of Authorisation (.pdf format) (preferably a General
Authorisation) completed on behalf of the applicant(s) is
required, although this can be filed later if not available
at the date of filing. See Q12 above for
details of subsequent procedure.
In case (b), we will
additionally need the filing date, country and application
number of the earlier application from which priority is
to be claimed. A certified copy of the earlier application
will be required for submission to the UK or Community Office
(as the case may be) within three months of the date of filing
the subsequent application.
In case (c), if we
are to respond to an adverse Examination Report from the
UK Trade Marks Registry reporting a partial or total refusal
of protection, then we will need a copy of the International
Trade Mark Registration together with the UK Examination
Report within the time limit given by the UK Trade Marks
Registry for reply. A signed Power of Attorney is not required,
but may be desirable if we are instructed to take over representation
from another previously appointed UK agent.
- availability searches and reports
- registration in any country or countries
- record-keeping to establish and record use-based rights
- watching searches for later third-party attempts to register similar
marks
- trade mark licensing
- validity enquiries on third-party protective rights
- defending a trade mark against a complaint by another business (e.g.
opposition or litigation)
- making a complaint against another business about trade mark issues (e.g.
opposition or litigation)
We have a printed booklet on trade mark rights, which can be provided
free of charge on request.
If advice or assistance on any other aspect of intellectual property
- particularly patents, designs, licensing and copyright - is required,
we would be pleased to answer your queries in these areas also.
