Procedure for application

Procedure for application

Contents

Procedure for application

It is sensible to make searches before adopting a mark, to ensure that the mark (or one similar to it) is not already registered or in use for the same, similar or related products. Ideally, searches of the relevant trade marks register and the market should be arranged. Market searches to ascertain the existence and use of an unregistered mark should include checks of the relevant trade outlets (whether manufacturers, wholesalers or retailers), the media, a dictionary, telephone directories, companies register (for company names which include the chosen mark) and internet searches.

In the UK, an application for registration is made to the IPO on an official form (Form TM3) or online accompanied by the appropriate application fee.

An EUTM application is made on an official form which may be submitted either to one of the national trade mark offices or directly to EUIPO. The application can also be filed electronically. The application may be filed in any one of the 24 official languages of the EU, but the applicant must also specify a second language for the application which must be one of the five official languages of EUIPO, namely, French, English, German, Spanish or Italian. This language will be available for opposition and cancellation proceedings.

Information required to complete the application includes:

  • A representation of the mark.
  • Details of the applicant: full name, status (that is, whether it is a company, a partnership or an individual), country of incorporation (if appropriate) and address.
  • A statement of the goods or services for which protection is sought. This is known as the 'specification' of goods or services.

Classification

The specification of goods and/or services needs to be sufficiently comprehensive to cover not only products/services of immediate interest, but also those which are anticipated to be of future interest.

However, it is not in the owner's interest to make the specification so broad as to cover goods/services which the owner does not in reality intend to market, since this would risk the validity of the mark becoming vulnerable to an attack post-registration. And, in any case, a UK application must be supported by a statement that the mark is in use in relation to the relevant goods or services, or that the applicant has a bona fide intention to use the mark in such a way.

When registering marks, the IPO and EUIPO use a classification system for goods and services known as the International Classification. This system provides for a total of 45 classes: 34 goods and 11 services classes. The applicant must select the appropriate class or classes for its goods or services. It is possible to file one application covering a number of classes. This is the most cost-effective way of protecting a mark in a number of classes.

In the UK, applicants can specify territorial or other limitations for their marks, such as waiving the right to the exclusive use of any part of the mark, or limiting it to a particular market. In some cases, these exclusions/limitations can increase the chances of the success of the application.

Fees

There is a fee for UK applications (which is cheaper if done online), plus a fee for each additional class.

For EUTM applications, there is a fee per class.

Priority

A trade mark applicant may backdate the filing date by up to six months by claiming the date of an earlier trade mark application as the date of the present application (known as 'claiming priority'). The present application is deemed to have the earlier filing date for the purpose of assessing whether any earlier identical or similar marks exist which will prevent registration.

Priority for UK registered mark

The earlier trade mark application must have been made within the previous six months in any of the following:

  • A country or region that is signatory to the Paris Convention for the Protection of Industrial Property 1883, as revised.
  • A country that is not party to the Paris Convention but with which the United Kingdom has a reciprocal, and equivalent, priority arrangement.
  • A country that is signatory to the Agreement establishing the World Trade Organisation, to which the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) is annexed.

The earlier application must also be for the same mark, in respect of the same goods or services. It is possible to claim priority from an EUTM application, or from an international trade mark application designating the EU or the UK.

Any priority enjoyed by an EUTM or international mark designating the EU is also enjoyed by the corresponding comparable mark.

Applicants for EUTMs whose applications were pending at the end of the Brexit transition period can take advantage of that application's filing or (if there is one) priority date when applying for the same rights (or for the same mark covering just some of the relevant goods and services) in the UK, as long as the UK application is made within 9 months of the end of the transition period. There are equivalent provisions relating to international trade mark applications designating the EU, giving 9 months from the end of the transition period to file an application in the UK.

Priority for EUTMs

It is possible in an EUTM application to claim priority from an earlier trade mark application on a similar basis as applies for UK marks. The priority claim must be filed within 3 months of the trade mark application for which it is being claimed.

Where an EUTM had a seniority claim, that claim will be honoured in relation to the corresponding comparable mark. Although seniority claims based on UK trade marks filed until the end of the transition period will be processed and published, claims based on UK trade marks filed after 1 January 2021 will be refused.

A seniority claim entitles an EU trade mark proprietor to retain the rights it enjoyed under a national registration that has lapsed or been surrendered, as long as that national mark is identical with the EU trade mark and covers identical goods and services.

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