A UK trademark application is filed at the UK Intellectual Property Office by post, fax or most often, electronically. It includes a representation of the trademark applied for, the name and address of the applicant and a list of the goods and/or services in respect of which registration is sought. After the application has been filed, a filing receipt is issued.
Next, the UK trademark application is examined. The application is examined on the following grounds: –
- “Relative grounds” – this is for conflict with earlier UK trademark applications or registrations, which are identical or confusingly similar, and cover overlapping or similar goods and/or services;
- “Absolute grounds” – this includes an assessment of whether the trademark applied for is distinctive, descriptive or customary in the relevant trade. A monopoly right will not be granted in such terms, which should be available for all traders to use to describe or refer to their goods or services.
If any examination objections are raised, the applicant or his representative will be notified and a period of time set for response.
In the case of examination objection on absolute grounds, the applicant or his trademark attorney can make written submissions or conduct an oral hearing with a senior examiner. If any of these objections are maintained, the application will be refused.
With regard to relative grounds examination objection, again, the applicant or his trademark attorney has the opportunity for discussion with the examiner. If the examiner maintains any of these objections, he will send notification of the later application to the owner of the earlier UK trademark applications or registrations located, in order that opposition can be filed, if the trademark owner is concerned. The opposition period lasts for two months. Opposition can be filed on various grounds including: –
- lack of distinctive character;
- bad faith;
- that the trademark applied for is identical with an earlier trademark and for identical goods or services as the earlier mark;
- that the trademark applied for is identical with an earlier trademark and for similar goods or services as the earlier mark;
- that the trademark applied for is similar to an earlier trademark and for identical or similar goods or services as the earlier mark;
- that the trademark applied for is identical or similar to an earlier trademark which has a reputation;
- that the trademark applied for contravenes the law of Passing Off, which protects unregistered trademarks; and/or
- that the trademark applied for contravenes copyright, design right or registered designs.
The opposition rate against a UK trademark application is quite low, presently about 5% of all applications published.
If no opposition is filed, the application will be registered and a registration certificate issued. A UK trademark registration remains in force for ten years and can be renewed for subsequent ten yearly periods.