Filing And Prosecution - UK Flashcards
What is the geographic coverage of a UK TM?
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
Who can apply for a UK TM?
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
Address for Service
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
What languages can you file a UK TM in?
English or Welsh
What types of marks can you register in the UK?
- Standard Mark
- Series mark
- Certification mark
- Collective mark
What is a series mark?
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
What is a certification mark?
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
What is a collective mark?
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
What are the three different filing routes for a UK TM?
- Regular filing route
- Right start filing route (don’t pay up front, pay in installments)
- Designating the UK in an international application
What form is a UK TM application filed on?
Form TM3
What are the filing fees for a UK TM on the regular route?
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)
What are the filing fees for a UK TM on the right start route?
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
Can you claim priority from an earlier filed mark?
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
What are the ESSENTIAL and NON-ESSENTIAL requirements for filing? (I.e being given a filing date?
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
What happens if you do not meet the requirements for filing? (Formalities)
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)
What do examiners look at for SUBSTANTIVE examination?
- Inconsistencies with the mark (including series objections, e.g. if it doesn’t quality as a series)
- Applicants legal personality clarification (if there is a question mark over ability to hold property)
- Absolute grounds (inherent problems with the TM applied for - if mark is descriptive or non-distinctive)
- Specification queries - where goods and services considered too vague, require clarification or have been put in incorrect class)
- 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.
What happens if no objections are raised by the examiner during substantive examination?
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
Typical Examiner Query - classification : Goods/Services not in correct class - what can you do?
- Add a class to the application
Form TM3A - £50.00 for each class - Divide an application
Form TM12 - £100.00 and new application fees
How to respond to the examination report?
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
How long is registration of a UK TM valid for?
10 years from application date
Renewable every 10 years indefinitely
What are the renewal fees for a UK TM?
£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
If refusal from the Examiner during substantive examination, how can you make an appeal to the Appointed Person?
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
