Filing And Prosecution - UK

Question 1

What is the geographic coverage of a UK TM?

Answer 1

Great Britain (England, Scotland, Wales) & Northern Ireland
Also automatically extend to
British Indian Ocean Territory
Falkland Islands
Isle of Man
—> however the above have their own local legislation

Question 2

Who can apply for a UK TM?

Answer 2

Any natural person (individual)
Legal persons (or business, capable of holding property)
Any form of company is capable of holding property in its own name
Partnerships (including limited liability partnerships etc) allowed to be recorded as applicants

Question 3

Address for Service

Answer 3

Need to have an address for service in the UK if you are applying for a UK TM
If the applicant is not based in the UK, the Channel Islands or Gibraltar and is not represented by someone in the UK, they must provide an address for service in UK, CI or Gibraltar for UK IPO to correspond with

Question 4

What languages can you file a UK TM in?

Answer 4

English or Welsh

Question 5

What types of marks can you register in the UK?

Answer 5

1. Standard Mark
2. Series mark
3. Certification mark
4. Collective mark

Question 6

What is a series mark?

Answer 6

A series mark - number of trademarks which resemble each other as to their material particulars and differ only as a matter of non distinctive character which would not affect the identify of the trademark

An application can include a maximum of 6 marks in a series

Question 7

What is a certification mark?

Answer 7

Signifies that a product or service meets the standards and requirements of an establishment. The mark indicates that the products or services have been thoroughly tested on quality, material and origin and shows the establishment approves the products quality, e.g. Fairtrade

Question 8

What is a collective mark?

Answer 8

Specific type of trademark that indicates that the goods or services bearing that mark originate from members of an association rather than from just one trader, e.g. CITMA, FA

Question 9

What are the three different filing routes for a UK TM?

Answer 9

1. Regular filing route
2. Right start filing route (don’t pay up front, pay in installments)
3. Designating the UK in an international application

Question 10

What form is a UK TM application filed on?

Answer 10

Form TM3

Question 11

What are the filing fees for a UK TM on the regular route?

Answer 11

Application fees fully paid when filed

ONLINE - £170.00 (1 class)
PAPER FILING - £200.00 (1 class)
CLASS FEE - £50.00 (for each additional class)

Question 12

What are the filing fees for a UK TM on the right start route?

Answer 12

ONLINE only - £200.00 (1 class), paid in two installments, first £100.00 paid at filing, 2nd installment £100.00 only paid if application proceeds after examination
CLASS fee - £50.00, paid in two installments, £25.00 paid at filing, 2nd installment £25.00 must be paid within 14 days of receiving examination report

Question 13

Can you claim priority from an earlier filed mark?

Answer 13

YES - the requirements are :
1. The previous application is a first, regular filing
2. The mark in the earlier application and mark applied for are the same
3. The goods and services are identical or are contained within those of the earlier application (can also claim partial priority if one goods or services is the same)
4. The proprietor is the same
5. The filing date of the mark is within 6 months of the filing date of the earlier application

Priority MUST be claimed when filing the application

Question 14

What are the ESSENTIAL and NON-ESSENTIAL requirements for filing? (I.e being given a filing date?

Answer 14

ESSENTIAL
1. Request for registration (i.e Form TM3 or a letter to the IPO)
2. Name and address of the applicant
3. Statement of the goods or services for which it is sought to register the TM
4. Representation of the Trademark

NON-ESSENTIAL (at this time, but still necessary)
1. Use or bona-fide intention to use (must be currently using mark or allowing someone else to use it, or bona fide intention to use in relation to goods/services requested)
2. Fees
3. Application to specify the class (of NICE classification system)
4. Address for Service (in UK)
5. Form TM3

Question 15

What happens if you do not meet the requirements for filing? (Formalities)

Answer 15

The UK IPO will send an official letter - 1 month deadline - for any deficient applications.

Failure to rectify deficiencies in this time period will result in the application -
1. Deemed never to have been made (if it doesn’t have essential requirements)
2. Treated as withdrawn (if don’t have non-essential requirements)

Possible to extend deadline by filing a FORM TM9 (£100.00)

Question 16

What do examiners look at for SUBSTANTIVE examination?

Answer 16

1. Inconsistencies with the mark (including series objections, e.g. if it doesn’t quality as a series)
2. Applicants legal personality clarification (if there is a question mark over ability to hold property)
3. Absolute grounds (inherent problems with the TM applied for - if mark is descriptive or non-distinctive)
4. Specification queries - where goods and services considered too vague, require clarification or have been put in incorrect class)
5. Searches for earlier marks - examiner will search for similar/identical marks, if any are found they will be sent to you. examiners do not refuse based on prior rights but will inform you if they deem them similar. If application proceeds to publication then owners of earlier marks will be notified of the application by the examiner.

Question 17

What happens if no objections are raised by the examiner during substantive examination?

Answer 17

You will receive an acceptance letter

Then proceed to publication - 2 month opposition period from publication date (can be extended by 1 month by third parties)

If no opposition - application will proceed to registration

Question 18

Typical Examiner Query - classification : Goods/Services not in correct class - what can you do?

Answer 18

1. Add a class to the application
   Form TM3A - £50.00 for each class
2. Divide an application
   Form TM12 - £100.00 and new application fees

Question 19

How to respond to the examination report?

Answer 19

Write, email or telephone the examiner to discuss report
2 month period to respond to a query (extendable by two months if request made in writing)

Can request a hearing with a senior office to discuss matter further

Appeal to Appointed Person - Form TM55, no fees (made within 28 days of a decision)
Appeal to High Court

Question 20

How long is registration of a UK TM valid for?

Answer 20

10 years from application date
Renewable every 10 years indefinitely

Question 21

What are the renewal fees for a UK TM?

Answer 21

£200 for first class, £50.00 for each class thereafter

6 month grace period

£50.00 additional fee for late renewals

Restoration possible between 6-12 months after expiry date but statement needed to explain why mark not renewed

Question 22

If refusal from the Examiner during substantive examination, how can you make an appeal to the Appointed Person?

Answer 22

Appeal to the Appointed Person must be made within 28 days of decision.
Must apply for a Statement of Grounds using Form TM5, £100.00
Only once there is a Statement of Grounds can an appeal be made on Form TM55, no fee.
TM55 must include statement of grounds, I.e. whether and in what represents they wish the AP to reverse/set aside decision.
Appeal deadline can be extended by filing Form TM9, £100.00 (strong/compelling reasons required)
Decision = FINAL