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Obtaining Registration

Introduction

Although trade marks may be protected by the action for passing off, registration has several advantages. Not least among them is the fact that, by registering your trade mark, you protect yourself against the possibility of someone else registering an identical or similar trade mark for the same or similar (or perhaps dissimilar) goods or services – which could limit your ability to use your business name.

This chapter deals with the procedure for registration of a trade mark in the UK. The procedure for a Community trade mark is not very different, but do not rely on it being the same.

The Application

The process of application for registration of a trade mark is dealt with by a series of provisions starting with section 32. It provides for the application to be made to the Registrar – that is, the Comptroller-General of Patents, Designs and Trade Marks. The application must be filed at the Patent Office, of which the Trade Marks Registry is a part.

The application must be filed online or using Form TM3 (or an approved imitation of it)1 and must contain certain matter set out in the Act:

  • a request for registration of a trade mark;

  • information about the identity and address of the applicant;

  • a statement of the goods and/or services for which the applicant wishes to register the mark; and

  • a representation of the mark.

As far as the last of these is concerned, if the mark is just a word or words, not in a particular font, the word is all that must be stated. If the mark contains pictorial matter, or the word or words is or are depicted in a particular font or script, a representation of the actual mark will be needed. If the mark is something else, such as the shape of the goods or their packaging, music or a smell, there must be a graphical representation of the mark: how this is achieved is up to the applicant.

The application must state that the mark is being used for the goods or services for which registration is sought. The use may be by the applicant, or by someone with the applicant’s consent. Alternatively, it suffices if the applicant has a bona fide intention of using the mark: no evidence of such intention needs to be provided, although the applicant or representative must sign the form to confirm that the mark is in use or there is an intent to use it, and if there is in fact no intent the application would be in bad faith (see Error: Reference source not found).

This prevents speculative registration of trade marks, which would block the register for anyone seeking protection for a similar mark. There is no need for actual use to precede registration, so a business can register its trade marks as soon as it starts up (or even before).

The applicant is also required to pay the requisite fees. There is a basic application fee, set initially in 1994 at £225, but later reduced to £200 (£170 for online filings) plus additional class fees of £50 (originally £125) for multiclass applications, which were allowed for the first time in the 1994 Act (previously an applicant who wanted protection in several classes had to file multiple applications, which is still the case in some countries though because the Madrid Agreement and Protocol provide for multiclass applications it is now quite rare to find it necessary to do this). The pre-1994 application fee was £185, the increase being justified by the increase in the initial term of protection from 7 to ten years.

Date of Filing

The date of filing of an application is important because it gives the applicant precedence over later applications. It is the date on which all the documents containing everything required by the Act have been presented to the Registrar. If they are filed on different dates, the key date will be the one on which the last was filed.

Clearly, rights may not begin earlier than the date on which the application is filed, identifying the applicant and giving that person’s address, specifying the goods or services for which registration is required and showing what the mark looks like.

Classification

Goods and services are classified for the purposes of registration of trade marks. Section 34 provides for this, although it does not say what classification is to be used: it will be the ‘prescribed’ one. The Registrar is given powers to decide on classification issues.

The classification system used under the 1938 Act is continued under the 1994 Act. Each of the countries which is party to the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Trade Marks, of 15 June 1957, must apply the system and use it in official publications on trade marks.

The UK has used the Nice system, and its predecessor, since 1938, and the Community Trade Mark system uses it too. In fact, the only significant country which does not use it is Canada. It divides goods and services into 45 classes, and all goods and services are in one or another class. None should be in more than one. In the jargon of trade mark practice, goods or services are said to be ‘proper’ to a particular class, and the examiner will often raise an objection on the grounds that some goods or services are proper to a different class from that stated in the application. Classification problems are sometimes avoided by including the words ‘all within class [number]’ after words describing specific goods or services. Omega Engineering Inc v Omega SA2, a skirmish in a thirty-year dispute between the parties, established that where the specification of a trade mark expressly incorporates a reference to the class, the question whether any particular goods fall within the specification is to be answered by reference to the Registrar’s practice at the date of registration. In that case, the parties had agreed (in what is referred in the jargon to as a co-existence agreement) what they could and could not do with their trade marks, and it illustrates how agreements of that nature can be overtaken by changes in technology. Another example is an equally long-running trade marks saga, the dispute between Apple Corps and Apple Computers: when The Beatles’ company agreed to allow the new computer company (not, as is sometimes reported, so-named because Steve Jobs was a Beatles fan, but to secure first place in alphabetical listings such as telephone directories) to use the name there was no connection between music and computers.3 Times change.


It has long been common practice when filing trade mark applications to use the ‘class headings’ in the Nice Classification as a sort of shorthand. Applying to register a trade mark for the goods or services mentioned in the class heading was assumed to cover all the goods in the class. In class 25, for example, ‘clothing, footwear and headgear’ would leave no doubt about the scope of protection (though few applicants would be able to convince the Registry that they really intended to use the mark for all those goods, and the specification would usually have to be narrowed). Most classes, however, go into greater detail, in some cases much greater. Class 41 is not a very detailed one, headed ‘Education; providing of training; entertainment; sporting and cultural activities’. The detailed classification set out in the Agreement makes clear that translation services are proper to Class 41, but they are not mentioned in the class heading. To discover whether the ‘class heading includes all’ rule was correct, the Chartered Institute of Patent Attorneys filed an application for the trade mark IP TRANSLATOR for the services in the class heading. If that included all the goods in the class, the application had to be rejected for lack of distinctiveness or descriptiveness, and the aim was to obtain a referral to the Court of Justice for a ruling. As usual with Court of Justice rulings, what resulted was rather delphic: on 19 June 2012 the Court delivered its ruling in Case C-307/10 IP Translator1, saying:

1 – Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;
2 – Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;
3 – an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

So, depending on the class, the class heading will sometimes cover all the goods in the class (perhaps class 25 is an example of this) but in others more detail is required. In May 2013 the Appointed Person upheld the applicant’s appeal, on the grounds that the refusal had been based on the mistaken belief that the ‘class headings cover all’ principle applied.2

1http://curia.europa.eu/juris/document/document.jsf?text=&docid=124102&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=4032351

Priority

Section 35 deals with claims to priority under Article 4 of the Paris Convention. This gives an applicant who files an application in one Convention country a right of priority during the following six months. If, within that period, she files an application in another Convention country, that application takes precedence over any application filed by another person in the interim, unless that later application actually has an earlier priority date itself.

The new section replaces section 39A of the 1938 Act, with the change that it makes identical provision for trade marks and service marks.

The priority application (i.e. the application which claims priority from the earlier application) must cover goods or services included in the first application (but not necessarily all of them). The system will not allow an applicant to increase the scope of protection in the priority application: such extended protection can only be claimed from the date of filing for those goods or services, and would have to be the subject of a separate application.

The Act uses the expression ‘Convention application’ to mean an application in a Convention country, which in turn is defined as a country which is a party to the Paris Convention (section 51(1)).

If an application is made in the UK within the six-month period, and a claim is made to priority from a Convention application, the date of filing of the first Convention application will be the relevant date for establishing when the exclusive rights accorded by registration will commence, and whether any earlier trade marks provide relative grounds for refusal. No use of the trade mark between the filing in the Convention country and the priority filing in the UK will affect the registrability of the mark in the UK: a third party cannot establish use of the mark in the UK during that period, but equally if the distinctiveness of the mark the subject of the application depends on its having been used by the applicant, no use during that period will be taken into account.

According to sub-section (3), any filing in a Convention country which is ‘equivalent to a regular national filing’ is treated as giving rise to the priority. ‘Regular national filing’ means one which is adequate for establishing the date on which the application was filed in that country, either under the domestic laws of that country or under an international convention.

Where two applications concerning the same subject have been filed in the same Convention country, priority could normally be claimed only from the first of them. However, this will not be the case where the first application has been withdrawn abandoned or refused without having been laid open to public inspection and without leaving any rights outstanding. It must not have been used as the basis for a claim to priority, either. If these conditions are met, priority can be claimed from the later application.

A right to priority may be transferred to another person, either with the application or independently. Thus, the owner of a foreign application may assign the right to file an application in the UK claiming priority from the foreign application to someone else. It is not necessary to transfer the foreign application as well.

Priority may also be claimed from an application in a non-Convention country.4 The right to claim priority in such a manner may be conferred by Order in Council. It may extend to a person who has filed an application for protection in:

  • one of the Channel Islands[, the Isle of Man?] or a colony, or

  • a country or territory with which the UK has entered into a Treaty, convention, arrangement or engagement for the reciprocal protection of trade marks.

The Order may make provision corresponding to that made by section 35 relating to Convention countries, or such other provision as Her Majesty may consider appropriate. An order will be made by statutory instrument: section 36(3) provides that this is to be subject to the negative resolution procedure.

Registration procedure

Examination

An application for registration will be examined in the Registry: if it complies with the requirements of the legislation it will be accepted, and if not it will be refused. The Registrar no longer has any discretion. Time taken in examination causes delay in pursuing infringers, and the pre-grant search requirement also prevents the UK joining the Madrid Union (see below).5

The Registrar is required to examine all applications to see whether they comply with the requirements of the statute. This includes both absolute grounds for refusal and relative grounds. There may also be procedural requirements stipulated in the Rules.

The Registrar carries out a search of earlier trade marks (required by section 37(2)) to such extent as he thinks necessary. This qualification the government says it included for practical reasons: the Registrar might reasonably be expected to search in the UK register, the international register, and the Community register. But he could not be expected to try to search for earlier unregistered rights. Moreover, the Registry has never looked for section 5(3) conflicts, an omission justified because that provision lacks the consumer protection dimension of other sub-sections of section 5.

Since 1 October 20076, the Registrar has not been required to do anything with any conflicts with earlier trade marks that the search might reveal except notify the applicant that they might expect trouble (and may therefore decide to withdraw or amend the application) and to notify the owner of the earlier trade mark, giving them an opportunity to oppose the application.

Apart from relative grounds, the Registrar is obliged to tell the applicant if any requirement has not, in his view, been met. The applicant may contest this view, and may also amend the application to overcome the objections. The Registrar must specify a time limit for this to be done.

If the applicant neither satisfies the Registrar that the requirements have been met, nor amends the application to meet them, the Registrar must refuse the application. The same consequence will follow if the applicant does not respond within the time set by the Registrar. The applicant may request an ex parte hearing at which a hearing officer will consider whether the application should be allowed.

On the other hand, if it appears to the Registrar that an application complies with all the requirements for registration, it will be accepted. This has the important consequence of removing the discretion given to the Registrar under the 1938 Act.

Publication

Once an application is accepted, the Act provides that it must be published. At that point registration may be opposed by other parties, and written observations can be made.

Opposition was provided for in the 1938 Act, but there was no provision for written observations to be made.

The manner in which accepted applications are to be published is a matter for the Rules. These provide for publication in the Trade Marks Journal, a weekly publication, now issued online.

Opposition

Within the prescribed period from the date of publication (three months, the same as in the Community trade mark system, but in the UK comprising a fixed period of two months plus another month that can be requested by a prospective opponent), any person may file an opposition to the registration of the mark. This must be in writing, and must state the grounds on which it is based. These may be absolute grounds or relative grounds. The Community Trade Mark Regulation provides for oppositions only on relative grounds.

Under the 1938 Act, a period of a month was given for oppositions, but extensions were liberally granted. The three-month period will not be extended at all.

The applicant is entitled to require an opponent who relies on a trade mark registered more than five years earlier to prove that the trade mark has been used with the relevant goods or services in that time7. If it has not been used, it is vulnerable to revocation (see Error: Reference source not found) and therefore it should not be used as the basis for an opposition.

Written observations

Any person may also file written observations on whether a mark should or should not be registered. There is no such provision in the 1938 Act (although in practice such observations may be submitted informally), but there is a parallel in the Patents Act 1977 section 21, and the Community Trade Marks Regulation (Article 41) also contains such a provision.

Observations will be treated in the same way as under the Patents Act: the Registrar will pass them on to the applicant, who may comment on them, and will also consider whether they constitute grounds for refusing the application. The person who files the observations will not, however, become a party to the proceedings.

If the Registrar considers that the observations reveal grounds for refusing the application, he may raise fresh objections: then the section 37(3) procedure will apply.

Withdrawal

At any time prior to registration, the applicant may withdraw the application. The range of goods or services covered by the application may also be limited. The Act specifies other ways in which the application can be restricted, which are limited. If the application has already been published, the fact that it is withdrawn or limited will be advertised.

Restriction

Restrictions may be effected either by deleting material contained in the specification as filed, or by replacing the specification with a narrower one.

Amendment

Amendment of an application is permitted only in limited circumstances. The 1994 Act allows the applicant’s name and address to be changed, errors of wording and copying to be corrected, and obvious mistakes to be put right. The identity of the trade mark must not be substantially affected, and the specification of good and services must not be extended.

The 1938 Act was much more liberal. About the only way in which a mark for which an application for registration has been made can be amended is now if the applicant’s name or address appears as one non-distinctive element in a more complex mark, so that altering that element does not affect the overall identity of the mark.

If any of the goods or services specified in a published application, or the representation of a published mark, is altered as a result of an amendment, the amended application may have to be re-published. Objections could then be made by anyone claiming to be affected by the amended application.

Registration

Once any oppositions have been overcome, or the time for filing oppositions has expired, section 40 provides that the mark will be registered. It replaces section 19 of the old Act.

Once the conditions are met, the mark must be registered. The Registrar has no discretion in the matter, unless it appears to him that an application has been accepted in error. This is rare, but would happen if the new information becomes available, for example, when observations are filed.

Registration may be made conditional on the payment of a registration fee: the Act includes a power to require a fee at this stage. However, no such fee is charged at present.

Under section 9(3) the rights which stem from registration run from the date of registration.

The Registrar is empowered to issue a certificate once the application has been registered and this happens automatically. For CTMs, OHIM only issues a hyperlink from which a PDF certificate may be downloaded: the UK Registry still sends out paper certificates by post. It may also be published in the manner prescribed by the rules, namely in the Trade Marks Journal, and by reference to the published application. Details of the mark and the goods or services for which it is registered will only be published if they have changed since the application was published.

Divisional applications

Divisional applications, well-known in the patent field, were introduced for trade marks in the 1994 Act. With multi-class applications, there is more likelihood that there will be objections applicable to only some of the goods covered by an application. An application can in that situation be divided, so part of the application could proceed to registration for those goods or services which do not face objections while the rest is argued over (section 41 and rule 19).

Re-combining

Section 22(2) of the old Act provided for applications to be split, but did not deal with re-combining them. So a mark could be divided if a business were split up, but could not be re-united if the business came back together or the part-mark was transferred to the owner of the other part. In fact, the rules made under the 1938 Act appeared to prohibit re-combining marks: the Madrid Protocol embraces the notion, however, so the new Act applies the principle to all types of mark.

Merger

Section 41 also introduces the notion of merger. Where a number of marks applied for are the same, have the same filing date and are in the same ownership, they can be merged: but registrations cannot be merged with applications (rule 20). Application must be made to merge applications before the applications are advertised.

Appeals

An appeal from a decision of the Registrar lies to the Chancery Division of the High Court or to an ‘appointed person’ (sections 76 and 77 of the Act). The appointed person is in practice usually drawn from a small panel of Queen’s Counsel practising in the Chancery Division and having special experience of trade mark law – in effect a specialised deputy judge. In the case of an appeal to the Chancery Division a further appeal lies (but only with the permission of the Court of Appeal under section 55 of the Access to Justice Act 1999) to the Court of Appeal. The approach to be taken in such an appeal is decribed in the VIRGIN CARBON case.8 This is the classic multi-factorial evaluation undertaken by a specialist tribunal to which an appellate court must show real respect: see REEF9 [2003] RPC 5 at paragraph [28].

Series

A series of trade marks is a number of marks which resemble each other in their material particulars but which differ in non-distinctive matters which do not substantially affect the identity of the mark. A soft drinks manufacturer might use a single style of label for all its products, with only the descriptive element (‘Lemonade’, ‘Orange Crush’, ‘Dandelion and Burdock’) differing. Registration of a series of marks avoids the need for multiple registrations, but gives no protection over the variable element.

Disclaimers and Limitations

A trade mark may be registered subject to:

(a) a disclaimer, over the exclusive right to use any specified element of the trade mark (for example, a descriptive word in a figurative trade mark); and

(b) a limitation, often but not exclusively territorial

Term

Duration

A trade mark is registered initially for 10 years (seven under the old law) and is renewed for 10 year period thereafter (formerly 14). This period is measured from the date of registration, which by section 40(3) is the date on which the application was filed. Claiming priority makes no difference to this date, only to the possibility of an intervening mark constituting a relative ground for refusal.

This provision brings UK law into line with most other national systems, which operate 10- year terms: this is also the duration of an international registration under the Madrid Agreement. The Community Trade Mark will last for this period too, and so will international registrations under the Madrid Protocol.

There is no limit on the number of times a registration may be renewed, provided that the conditions for renewal are satisfied.

Renewal

The procedure for renewing a registration, and the duties of the Registrar, are set out in section 43. This section also provides for the removal of a registration which has not been renewed, and for restoration. It is in effect identical to the old law.

Renewal of a registration is subject, inevitably, to payment of the renewal fee. Unlike renewal fees for patents, which are progressive through the life of the patent, trade mark renewal fees are level, though the affects of inflation are likely to make themselves felt during the 10 year intervals between renewals.

The renewal procedure is governed by rules made under powers granted by the section, which states that they may require the registrar to inform the proprietor of the mark of the date of expiry before it arrives, and of the manner in which the registration may be renewed.

The request for renewal must be made, and the fee paid, before the expiry of the registration. The rules may prescribe an additional period, not more than six months, during which late renewal may be requested and an additional fee paid: such a period of grace is required by Article 5bis of the Paris Convention, for all manner of intellectual property rights which it covers.

Renewal takes effect from the date of expiry of the previous registration.

Removal

If a registration is not renewed as required, the Registrar must remove it from the register. The Act provides for rules to be made governing the restoration of a removed mark, which maybe subject to conditions.

One likely condition would be that no applications have been filed in good faith during the hiatus. Such an application would be prejudiced by the restoration of the earlier registration: this provision follows the 1938 Act and practice under it.

Publication

Renewal and removal are both matters which have to be publicised in the prescribed manner: this means in practice in the Trade Marks Journal.

1Trade mark forms can be downloaded from the Patent Office web site.

2[2010] EWHC 1211 (Ch) (28 May 2010). There Arnold J set out in some detail – probably more than most readers need, though it was not with the casual reader in mind that he wrote it – the history and development of the classification system.

4Section 36, and the Trade Marks (Claims to Priority from Relevant Countries) Order 1994 (SI 1994 No. 2803) as amended by SI 1995 No. 2997. The list of countries now comprises Antigua and Barbuda, Bahrain, Belize, Bolivia, Botswana, Brunei Darussalam, Colombia, Djibouti, Dominica, Ecuador, Guatemala, Hong Kong, India, and Jamaica.

5Section 17(2) of the 1938 Act left the matter of acceptance or rejection to the discretion of the Registrar. The government considered this approach to be inconsistent with the Directive, since it prescribes an exhaustive list of grounds for refusal.

6Trade Marks (Relative Grounds) Order 2007, SI 2007 No. 1976.

7

8Virgin Enterprises Limited v Casey [2001] EWHC 1036 (Ch).

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