8 - The application process Flashcards
What is required to obtain a filing date?
Request for registration
name and address of applicant
list of goods/services
representation of the mark (that is clear and precise)
What happens if there is a deficiency in the application?
The applicant is notified and given a term to remedy it. If it’s not remedied in time, the application is deemed never to have been made.
Is there an application fee?
Yes, and additional fees for extra classes if more than one.
What happens if application fee isn’t paid?
Notice will be sent requesting payment within a period of not less than 14 days
When is the filing date?
In practice, the filing date is the date on which the Form TM3 is received by UKIPO but
s.33 defines it as the date on which documents containing everything required by
s.32(2) are furnished to the registrar by the applicant. Thus if documents fulfilling the
essential elements described in s.32(2) (not fees) are furnished on different days, the
date of filing is the last of those days.
How many classes are there?
45
1-34 for goods and 35 -45 for services
What happens if the goods/services are incorrectly classified?
Applicant notified. If fails to do this, goods/services under the objection will be deleted. If all are deleted/under objection, the application may be deemed abandoned.
When can an application be filed which claims priority, and what is required?
within 6 months of earlier application
- A declaration of priority
- country from which priority is claimed
- filing date
- application number (if known)
What is the examination process?
First, a preliminary examination is completed to check formality requirements
Then a substantive examination on absolute and relative grounds.
Objections may be raised in an examination report which includes a deadline.
How may objections be overcome?
- Amending or deleting some of the goods/services claimed.
- Entering a Disclaimer/Limitation/Statement. These are voluntary and are not
guaranteed to be successful but they may serve to reassure the Examiner that the
Applicant will not claim rights. They are entered in the form of statements. - Filing evidence that the mark has acquired distinctiveness though use.
- Filing convincing arguments.
- Precedents (earlier registrations of the same or similar mark by other parties or in
other jurisdictions) are not binding on the Registrar but may be persuasive
What is the examination on relative grounds?
A search is conducted and the examiner will inform the applicant of any relevant registrations or applications. The examiner will also notify the owners of applications/registrations when the application is published.
The citations can be contested within two months.
What can be amended in the applicaiton?
Good and services can be amended at any time
Otherwise, the only amendments permitted are:
- name and address of applicant
- errors of wording or of copying
- obvious mistakes
