Procedure following application

Procedure following application

Contents

Examination of UK applications

Once an application has been properly filed, the IPO will issue an official filing receipt. This recites the key details of the application supplied by the applicant and sets out the application number and filing date. There is then a substantive examination of the application. This includes consideration of the mark by an examiner to see if it meets the registrability criteria (i.e. that there are no absolute grounds for refusal) and also whether there are conflicting registrations of identical or similar marks (i.e. if there are any relative grounds for refusal). Note, though, that the IPO does not reject applications on relative grounds. But, they can form the basis of an opposition.

Once the examination is complete, a report is sent by the IPO detailing any objections and setting a period of two months for a response. The objections may be of a minor nature, perhaps requiring small editorial changes to the specification, or substantive (for example, a finding that the mark is not distinctive because it is a generic word describing the goods in question).

The IPO notifies conflicts to the applicant and to owners of conflicting UK and international (UK) trade mark applications and registrations. This notification does not include conflicting marks that have expired within the 12 months preceding the application, even though these could still potentially be renewed or restored to the register. It is therefore prudent for prospective trade mark applicants to conduct their own searches to identify such marks.

Examination of EUTM applications

The EUIPO examines the application and may refuse an EUTM application on absolute grounds, or for non-compliance with formalities. The EUIPO does not apply the absolute grounds as rigidly as some national offices; nonetheless, descriptiveness in any one of the 24 official languages of the EU will be an obstacle to registration.

All EUTM applications undergo a search against other EUTM applications and registrations to establish the nature and extent of any prior conflicting rights. They can also, at the request of the applicant and on payment of a fee, be the subject of searches for prior conflicting marks on the national trade mark registries of the Czech Republic, Denmark, Lithuania, Hungary, Romania and Slovakia. The search, if requested, is automatically conducted in all these offices; the applicant cannot select particular ones. The offices making such searches will prepare reports within two months, setting out details of existing conflicting trade marks, and the EUIPO sends these reports to the EUTM applicant together with the EUTM search report.

The search for prior rights is conducted after the substantive examination and the results are not used as the basis of official objections to the EUTM application. However, EUIPO notifies the proprietors of conflicting prior EU (but not national) rights of the new EUTM application on publication, which gives them the opportunity to consider whether to file an opposition.

Overcoming objections

A common way of overcoming an objection is to narrow down the specification of goods and/or services contained in the application. An applicant also has the option of dividing the application so that they can proceed with that part of the specification for which there is no objection, and continue dialogue regarding that part that is objectionable.

Advertisement

Once any objections raised by the examiner have been overcome, the application must be advertised before it can be registered. In the UK, there is a two-month period, beginning on the date of the advertisement, during which interested parties may object to the registration of the mark, in relation to all or some of the goods and/or services listed in the application. This period is extendable on request by a further month by filing electronic form TM7a (Notice of threatened opposition) within the initial 2 months.

The objection may take the form of 'observations' to the IPO regarding absolute grounds for refusal, or formal opposition proceedings. If a person submits observations, this does not make them party to any proceedings, nor give them any right of appeal if the observations are not successful in leading to rejection of the application.

Assuming there is no opposition, the mark will proceed to registration and a certificate of registration will be issued.

The procedure is similar for EUTMs, except that the opposition period runs for three months rather than two. Any natural or legal person, and any group or body representing manufacturers, producers, suppliers of services, traders or consumers can submit observations on absolute grounds for refusal.

Opposition to UK applications

Anyone can oppose an application on absolute grounds, but only the owner of an earlier trade mark or other earlier right (all of the earlier rights relied on in an opposition must belong to the same owner) may oppose on relative grounds. The most frequently used grounds of opposition are the relative grounds.

Opposition proceedings must be started within two months of advertisement unless a request for an extra month's extension has been made. Once an opposition has been filed, the application will not proceed to registration until the opposition has either been withdrawn or lost by the opponent.

The opposition may relate to all the goods and services covered by the application, or only some of them.

Oppositions begin with the parties stating their positions, followed by the service of evidence to support the stated positions, and then a hearing. The opponent sets out why they object to the application in a notice of opposition and statement of grounds; the applicant replies by filing a defence and counter-statement. Assuming the parties do not wish to enter a 'cooling-off period' (the parties to an opposition may agree a 'cooling-off' period which in effect suspends the opposition timetable to allow time to negotiate an amicable resolution to the opposition. This is a single nine-month period, extendable for another nine months at the request of the parties), each party will then have the opportunity to file one or more rounds of evidence.

If the opposition (on the relative grounds) is based on a registered trade mark which is more than five years old on the date of the trade mark application (or the priority date of the application), the statement of grounds must contain a statement of use.

Where oppositions are based on an earlier registered trade mark where reputation is not in issue, the registrar may give a preliminary indication notifying the parties whether they consider that the mark in question should be registered for any or all of the goods and/or services in respect of which registration has been sought. If a preliminary indication is given, the parties then have one month in which to decide whether to proceed to the next stage of the proceedings and, if they wish to do so, a notice of intention to proceed must be filed.

The IPO has a fast-track procedure for oppositions where the opponent claims that the mark applied for is the same as or too close to their own mark, but where reputation is not in issue. The procedure involves a reduced opposition fee and requires the opponent to file evidence of use in respect of any cited marks that have been registered for five years or longer. No opponent is permitted to cite more than two earlier marks, and the procedure takes an average of three months from start to finish. Awards of costs are capped at £500 plus official fees.

Opposition to EUTM applications

An opposition to an EUTM application can only be based on relative grounds. If there are absolute grounds for objection, any challenge must be made through the observations procedure or by means of an invalidity action after registration.

The EUIPO can only refuse registration on relative grounds (that is, due to the existence of an earlier mark) if the owner of the prior relevant EU or national right successfully opposes the application within three months of its publication. An opponent whose first language or mother tongue is different from the 'first language' of the application may choose to file an opposition in the 'second language' of the application.

An applicant for an EUTM may request proof that an opponent's earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the priority or filing date of the EUTM application against which the opposition has been filed.

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