Registration
Trademark registration is undertaken by the Controller General of Patents Designs and Trademarks. The procedures are published in trademark rules from time to time. The effect of registration of a trademark is that the registered owner can prevent any other person from using it within the United Kingdom without his consent.
Registration of a trademark is for initial period of 10 years. There is an option to renew for further 10-year periods, without any ultimate limitation in time. This is provided that the relevant mark continues to be able to distinguish to particular goods or services in question and is kept in use.
The proprietor of a registered trademark has the exclusive right in the trademark. This right is infringed by the use of the trademark in the United Kingdom without his consent.
Registration as a trademark makes it easier to enforce against infringement. In contrast, a passing off action at common law is significantly more onerous. There must be an established reputation. In contrast a trademark can be registered in advance of being used, provided that there is an intention to use.
Trademarks exist publicly and are registered. This enables searches so that third parties can see their existence and avoid marks which might tend to cause confusion. The registration establishes a certain permanence and protects the quasi proprietary right. Registration of itself is likely to deter third parties from registering the same or a similar mark.
Requirements for Registration
Under UK legislation trademark may be registrable if it is
- capable of being a trademark within the definition
- not subject to one or more of the absolute grounds for refusal of registration
- not subject to one or more of the relative grounds for refusal of registration.
In relation to the (EU) Community Trademark, it is a matter for objectors to object to registration rather than for the registrars to make searches. In accordance with this EU legislation, the UK registry now proceeds primarily on the basis of relying on objections by third parties who are affected by the registration of the mark as a UK trademark.
A person or company may apply for registration of a trademark regardless of whether they own the trademark as such, provided they use the trademark for goods and services or intend to use it. There are significant formalities and procedures involved in the registration process.
The trademark is registered in respect of one or more classes of goods or services. The legislation sets out 45 classes. It facilitates searching in the registers. Goods may be registered in more than one class.
The classifications of trademarks are common internationally and follow from an international agreement establishing an international classification for classification of products and an agreement establishing international classification of the figurative elements of marks. (The Vienna classification)
A trademark must be capable of being reproduced in an 8 cm² square for publication in the Trademark Journal. Accordingly, signs must generally be capable of being expressed in words symbols numbers or described in words in order to be registrable. To some extent sounds may be capable of registration. This requires representation graphically by music notes.
Searches
Trademarks are registered in respect of particular goods or services categories. Accordingly, the search should focus initially on those categories. However, the search may require significant interpretation and consideration of wider classes.
A trademark which is identical with or similar to an earlier trademark shall not be registered if and to the extent that the earlier trademark has a reputation in the United Kingdom (or in the case of the community trademark in the European Union) and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character of the earlier trademark.
Accordingly, an applicant for registration should undertake a comprehensive trademark search with a view to ascertaining the risk of breach of the above ground.
Must Be Distinctive
The mark must be distinctive. This may facilitate common words with particular symbols being registered.
A signature may be registered provided that it is distinctive. A made-up word may be registerable. However, a made-up word or signature may infringe an existing trademark due to similarity.
The question of distinctiveness is considered with reference to the particular facts taking account of the likely use, the area of use, the range of products and customers assuming that they are well informed and aware
Generally, a person may use his own personal or business name and address provided he does so fairly and honestly without infringing a trademark. Most names are not be capable of distinguishing goods or services for the purposes of the definition. If it is combined with some other indications such as an address it may be capable of registration.
Registration may be refused on the above grounds in respect of descriptions or names of aspects of the goods. Descriptive aspect of goods may be registrable if combined with some other distinctive element.
Signs which describe the goods such as an image of them are unlikely to be registrable. Made up words which sound descriptive in nature may be refused registration.
Words which indicate quantity or value especially if they are exhalative or convey praise. Trademarks may be successfully registered if they indirectly suggest qualities of characteristics. Ultimately a line is drawn.
Shapes
Trademarks may be registered in respect of the shape of goods or the packaging. This must not consist exclusively of shapes which results from the goods themselves, the shape of goods which is necessary to achieve a technical result or a shape which give substantial value to the goods.
Some shapes and distinctive characteristics of that nature may be registered as industrial or commercial designs. However, they may be protected for a limited period up to 25 years only. In contrast, were they to be registrable as trademarks, the registration be potentially indefinite.
Opposition and Denial of Registration
On the initial examination, the trademark registrar may refuse registration if an objection is made by the owner of an existing mark.Following the examiner’s own searches, it may give notice to the applicant who may thereby withdraw or amend the application
The application may proceed notwithstanding potential opposition. The application is published in the Trademark Journal. However, the holders of the earlier mark who have been identified will be notified of the application.
A three-month period commences in which a person any person may object on relative grounds in respect of earlier prior registered marks. The matter may be the subject of a hearing before an officer of the registry. Appeals are taken to an appointed person or the Chancery Division of the High Court.
Collective and Certification Registration
Geographical names are not usually registrable as trademarks. There is a separate system for protection of geographical designations of origin under EU law. Geographical designations of origin are collective marks. see the separate section in this regard.
The UK trademark legislation provides for the registration of collective marks. They may contain indications of geographical origin. A collective trademark may not prevent others engaged in normal business practices from using that geographical indication in the business.
Certification marks may be registered which show particular descriptive characteristics of the goods
