TRADEMARK REQUIREMENTS IN THE UK. IS YOUR BRAND AVAILABLE FOR REGISTRATION?
Registered trademarks provide owners with powerful rights, and they are very important and valuable assets for businesses. Once you have decided to trademark a business name in the UK, you have to file an application form to the Intellectual Property Office (UKIPO), which will examine your brand name according to the requirements established by the Trade Marks Act. In this article, we would like to provide more information about requirements established especially for a trademark, as well as give you a guide allowing you to answer whether a certain brand name is available for registration.
What is a trademark?
UK legislation defines it as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.” Let’s explain this definition through three points.
- Sign. A trademark can be created in a form of words, designs, letters, figures, symbols, colour shades, sounds or a combination of these.
- Graphical representation. If a sign can not be graphically represented, then it cannot be shown on the trademark register and, while checking trademark availability, third parties will not be able to know whether they are at risk of infringing rights of a certain already registered mark.
- Being capable to distinguish goods or services. This criterion plays a crucial rule for you since it helps to distinguish your goods and services from the goods and services of your competitors, and, thus, to remain unique on a market. Therefore, if a trademark can not distinguish the goods or services of one organisation from another, what is the point of registering a certain brand name then?
Only a mark that falls under the definition established by trademark law has a chance to be registered. However, there are other pitfalls as well. In particular, to register a trademark it must not fall into either the absolute or relative grounds for refusing a trademark application. Let’s take a look at a short overview of these requirements to register a trademark in the United Kingdom.
What are the absolute grounds? Your trademark cannot be registered if it:
- Is offensive, e.g. it contains swear words.
- Describes the goods or services it will relate to, e.g. the word ‘glasses’ cannot be a trademark for a company that sells or manufactures glasses.
- Is misleading, e.g. it says these goods or services are for vegans, but they are not.
- Is too generic and commonly used.
- Uses geographical regions in its name.
- Uses name, surname or a signature etc.
If the mark applied for registration meets one of the above criteria, it is likely to be cancelled by the examining attorney.
Additionally, there might be an ambiguous basis for a refusal to register the application as well. What are these relative grounds?
- There is an identically registered trademark;
- There is a likelihood of confusion;
- The mark takes an unfair advantage over already registered brand names.
Yes, Intellectual Property Office will not reject your application form immediately on a basis of similar marks being on the register. However, an examining attorney of your trademark will provide you with a list of similar marks following examination. It will allow you to assess the situation and decide whether it is worth continuing the whole registration process. Take into account that UKIPO may also provide owners of these trademarks with the information about the publication of your mark (if you decide to keep following registration), and then, once published, these parties will have a right to oppose it. Thus, this may lead to the cancellation of your UK trademark application.
Why is it so important to check trademark availability?
- Firstly, filing an application for a trademark that might be in conflict with an existing brand name may be cancelled at the application stage, which would be a waste of your money;
- Secondly, if the application was not cancelled at the application stage, but later it was opposed by a pre-existing trademark owner, you could end up re-branding and starting the whole registration process over again.
Following that, we would strongly recommend you to conduct a search on brand name availability. How to check a trademark? You have to pay attention to the next two points: timing and goods or services. This is crucial to know a filing date of a mark applied for registration as trademark protection begins when a legal filing date is given. This means the one who came first is the one who receives its protection first. Also, goods and services allow distinguishing one entity from another. Considering that, look at international classes used for a special mark. Hence, both points will allow you to better evaluate the case and make the right decision. However, be cautious, each case is unique, which means there are might be pitfalls you do not even think about.
NB! Do not forget that when applying for trademark registration this is very principal for you to choose the right class or classes of goods or services that will be identified with the trademark. There are 45 classes under the International Classification of Goods and Services for the Purposes of the Registration of Marks, and you should choose one or more classes under which you intend to use the trademark. This plays a key role as this international class determines a sphere, field under which you obtain the protection of your intellectual property rights. Also, this might serve as significant evidence of differentiation between your and any other trademark, in case of any raised disputes.
To summarize, you should understand that your future trademark is a fundamental thing that will distinguish your company from other market actors. You have to think carefully before deciding to apply for a trademark to the UK Intellectual Property Office. The first step to take is to check whether the above mentioned trademark requirements to register a mark are met. After that, conduct a trademark search in the UK database. Once it is performed, all data is analysed and a special mark is chosen, apply for a trademark to the UKIPO. However, be watchful, this process is full of surprises.
We will get back to you soon!