The official government body responsible in the U.K. for the protection of intellectual property rights is the Intellectual Property Office (IPO) which receives and processes trademark applications and registers trademarks. IPO is the government body which has the authority to consider if the words, logos, pictures or other signs which constitute your mark have associated a high probability of being seen by the general public as a trademark. Trademarks which are simple descriptions of goods or services, which are not distinctive and used often in a line of trade will not be considered as acceptable for registration as trademarks. Words that have been purposely invented to distinctively represent goods or services are considered acceptable for registration.
Before submitting a trademark registration application in U.K. it is indicated to carry out a search for identifying eventual conflicting with trademarks already registered. The search can be carried out by using IPO website (which will return CTM’s and UK marks identifiable by the prefix “E”), through the Intellectual Property Office in Newport, the British Library’s Business and Intellectual Property Centre in London and on the website of the Office for Harmonization in the Internal Market (OHIM) responsible for registering Community Trade Mark (CTM) which include also the right for use in UK. An identical or similar trademark already in the register is a valid reason for rejecting your application according to the rules of conflicting trademarks set out in Section 5 of the Trade Marks Act 1994
. You can also try to register a trade mark conflicting with an already registered mark, case in which the owner will probably decide to oppose the application. A more difficult issue to clear out is the possibility of your trademark conflicting with a mark that has not been registered yet but it is in use for some time. The only way to prevent this is to obtain comprehensive information about the industry and search various sources such as trade directories, even if this still doesn’t mean there is no mark in use out there conflicting with yours which you haven’t found. This is why it helps to let the search in the responsibility of a trademark services company.
Filling the application form correctly the first time is essential, since once you have formally submitted it you can make only certain types of amendments such as restricting the scope of the goods and services covered by the application. Among the limitations of an already submitted application is the inability to later add classes of goods and services covered by the mark, so it is very important that you take into consideration present and future business plans when specifying goods and service classes. You can submit your application either in hard copy using the TM3 form downloadable from the IPO website or electronically using the form eTM3. Regardless of the method chosen you will need to attach an illustration of the mark. You will also need to specify if your mark is a part of a series which can include a maximum of six marks. Your application also needs to specify the goods or services that your mark will cover using the Nice Classification including 45 classes from which classes 1 to 34 cover goods and 35 to 45 cover services. If you need a complete description of the 45 classes you can find it on the IPO website. Once IPO receives your application it will carry out its own search and send you a report. IPO may raise objections if it considers your mark is not really a trademark or if it discovers potential conflicts with an already existing trademark, in which case its owner will be notified about your application to register a similar one. In this case you have the right to send a single written submission to the IPO examiner suggesting ways in which your application can be carried out without the necessity of announcing the owner of the conflicting trademark. You only have the right to send one such written submission, so it is advices to discuss the suggestions on the phone with the examiner before sending it. Or you can contact the owner of the existing trademark yourself and obtain his consent to register, in which situation you must take into consideration the possibility that you will be refused or asked to pay a certain amount or money for their consent. In the best case scenario, where you meet no objections or the existing objections are overcome, your trademark will be published in the Trade Marks Journal
and you will have to wait for a period of two months set aside for any objections that might appear and which can be extended. If your application receives no challenges or all challenges are overcome, your trademark registration is completed and you will receive a registration certificate.
Starting with October 2009, you can submit you application online with the Right Start application procedure which provides additional assistance for non-professional applicants. You can also require telephone assistance for filling in the TM3 form. You will need to pay half of the standard fee upfront. Usually within 10 days after submitting the application the examination report will be emailed to you. At that time, the balance of the application fee becomes payable if you decide to proceed with the application (you have the right to abandon the application at this point). If you are using the Right Start applications, you must know that the online filing discounts are not available in this case. You will also not receive your money back if your application is unsuccessful, because IPO uses the fee to cover the cost of examining your application and other administrative costs. If your application doesn’t rise any objections, the entire process will take around six months. If objections are raised, the process will take longer and the precise time taken will depend on the number and complexity of objections. The application process has been known to last for as long as two years in some cases, so you need to make sure you carry out your search correctly before submitting and you have enough time and resources set aside if the process becomes protracted.