UK TMs

Question 1

TM definition

Answer 1

Any sign which is capable:

(a) of being reproduced in the register in a manner which enables the registrar, the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from that of other undertakings.

TM may, in particular, consist of words (inc. personal names), designs, letters, numerals, colours, sounds, or the shape of goods or their packaging.

Question 2

Absolute grounds

Answer 2

(a) not a TM as per definition
(b) devoid of distinctive character
(c) consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity intended purpose, value, geographical origin, the time of production of goods or of rendering services, or other characteristics of goods and services [descriptive]
(d) consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practice of trade

However, (b) to (d) can be overcome if, before the date of application for registration, the TM has acquired a distinctive character as a result of the use made of it.

(e) consists exclusively of the shape or another characteristic which results from the nature of the goods themselves
(f) consists exclusively of the shape or another characteristic of goods which is necessary to obtain a technical result
(g) consists exclusively of the shape or another characteristic which gives substantial value to the goods
(h) is contrary to public policy or accepted principles of morality
(i) is of such nature as to deceive the public (e.g. as to the nature, quality or geographical origin of the goods or services)
(j) if, or to the extent that, its use it prohibited in the UK by any enactment or rule of law or by any provision of EU law other than law relating to TMs.
(k) if the registration is prohibited by:

(k1) any enactment or rule of law
(k2) any provision of EU law, or
(k3) any international agreement to which the UK or the EU is a party

providing for the protection of designations of origin or geographical indication

(l) if the registration is prohibited by:

(l1) any provision of EU law
(l2) any international agreement to which the EU is a party

providing for the protection of traditional for wine or traditional specialities guaranteed.

(m) if it consists of or reproduces in its essential elements, an earlier plant variety denomination registered in accordance with any enactment or rule of law, provision of EU law or international agreement to which the EU/UK is a party providing protection of plant variety rights and is in respect of plant varieties of the same or closely related species
(n) if or to the extent that the application is made in bad faith
(o) in the cases specified in S4 (such as emblems, badges, escutcheons protected by Paris Convention Art. 6ter)

Question 3

Relative grounds

Answer 3

(a) if it is identical with an earlier TM and the goods for services applied for are identical with those for which the earlier TM is protected
(b) if because it is identical with (similar to) an earlier TM and the goods or services applied for are similar to (identical with or similar to) those for which the earlier TM is protected, there exists a likelihood of confusion on part of the public, which includes likelihood of association with the earlier TM
(c) if it is identical with or similar to an earlier TM and the earlier TM has a reputation in the UK (if EU or ITM(EU), in the EU) and the use of the later mark without due cause would take unfair advantage of or be detrimental to, the distinctive character or the repute of the earlier TM, irrespective of whether the goods/services are identical/similar/dissimilar
(d) if its use in the UK is liable to be prevented:
(d1) by virtue of any rule of law (e.g. passing off) protecting an URTM or other sign used in the course of trade; provided that the rights to the URTM or other sign were acquired prior to the date of application for registration/priority date
(d2) by virtue of any provision of EU law or any enactment or rule of law providing for protection of designations of origin or geographical indications; provided that an application for designation/indication has been submitted before the filing/priority date and the designation/indication is subsequently registered
(d3) by virtue of an earlier right other than those above, e.g. by the law of copyright or the law relating to industrial property rights

As for earlier rights, the TM can be registered if the proprietor of the earlier right consents to registration.

(e) if an agent or a representative of the proprietor applies without the proprietor’s consent in the agent’s own name, the application will be refused unless the agent justifies their action

If grounds for refusal apply to only some goods/services, the application is to be refused in respect of those goods/services only.

Question 4

Earlier TM

Answer 4

(a) RTM, ITM (UK), EUTM or ITM (EU), which has a date of application for registration/priority date earlier than that of the later TM
(b) a TM which, at the date of application for registration/priority, was entitled to protection under the PC (or the WTO agreement) as a well-known TM
(c) a EUTM or ITM(EU) which has a valid claim to seniority from an earlier RTM or ITM(UK), even if the earlier TM has been surrendered or its registration has expired
(d) a RTM or ITM(UK), which has been converted from a EUTM or ITM(EU) which itself had a valid claim to seniority from an earlier TM as above, and accordingly has the said claim to seniority

includes applications, subject to registration being completed

Question 5

Application

Answer 5

Filing date:

(a) a request for registration of a TM
(b) the name and address of applicant
(c) a statement of goods or services in relation to which it is sought to register a TM

Also:

(d) a representation of the TM, which is capable of being represented in the register in a manner which enables the registrar, the public and other competent authorities to determine the clear and precise subject matter of protection afforded to the proprietor
(e) a statement that the TM is being used by the application or with consent in relation to those goods or services, or that he has a bona fide intention that it should be so used

Filing fee should also be paid, but not necessary to obtain a filing date.

Question 6

TPOs

Answer 6

after publication of an application but before the registration

any person may make observations in writing to the registrar

as to whether the TM should be register

the registrar shall inform the applicant of any such observations

the party making observations does not become party to the proceedings on the application

Question 7

Opposition

Answer 7

two months post publication (extendable by one month)

absolute and relative grounds

any person can file

notice, in writing, in prescribed manner, include statement of the grounds of opposition + fee

if filed on the basis of one or more earlier TMs or earlier rights, the rights must all belong to the same proprietor and may be filed on the basis of part or totality of the goods or services for which the earlier right is protected/applied for

notice of opposition may be directed against part or totality of the goods or services in respect of which the contested mark is applied for

relative grounds can only be raised by the owner of the mark/right on which the opposition is based

Question 8

Prosecution

Answer 8

The applicant may at any time withdraw the application or restrict the goods/services covered by the application. If the application has been published, the withdrawal/restriction will also be published.

The application may be amended, at the request of the applicant, only by correcting:

(a) the name or address of the applicant
(b) errors of wording or of copying
(c) obvious mistakes

only where the correction does not substantially affect the identity of the TM or extend the goods or services covered by the application.

Amendment after publication must also be published.

Question 9

Raising non-use objections

Answer 9

Applies where the application for registration for a [later] TM has been published and:

(a) there is an earlier TM which satisfies the relevant relative grounds, and
(b) the registration procedure for earlier TM has been completed before the start of the period of 5 years ending on the date of application/priority of the [later] TM

1. In opposition proceedings, the registrar cannot refuse to register the later TM by reason of the earlier TM unless the use conditions are met. They are met if:L
   (i) within the period of 5 years ending on the date of application/priority date of the [later] TM, the earlier TM has been put to genuine use in the UK, by or with the consent of the proprietor in relation to the goods or services for which it is registered, or
   (ii) the earlier TM has not been so used, but there are proper reasons for non-use

Use of a TM includes use in a form (variant form) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether the TM in the variant form is also registered in the name of the proprietor.

Use in the UK includes affixing the TM to goods or to packaging of goods in the UK solely for export purposes.

If the earlier TM is EUTM or ITM(EU), then need to demonstrate use in the EU.

If the use conditions re earlier TM are satisfied in respect of only some goods or services, it shall be treated to be registered in respect of those goods/services only.

Question 10

Registration + renewal

Answer 10

Registered for a period of 10 years from the date of registration.

may be renewed for another period of 10 years (indefinitely)

Renewal: at the request of the proprietor, pay the renewal fee

UKIPO should inform the proprietor before the expiry of the date of the expiry and how to renew the registration

Grace period of 6 months from expiry, need to pay a surcharge

May renew only in respect of some of goods/services

Renewal takes effect from the expiry of previous registration and is published

Question 11

Restoration

Answer 11

If not renewed, TM shall be removed from the register

6 months from expiry (after grace period) - can file a request for restoration, evidence that unintentional + pay the fee

restoration is published

Question 12

TM-specific assignment aspects

Answer 12

1) it is transmissible either in connection with the goodwill of a business or independently
2) a contractual obligation to transfer a business is to be taken as to include an obligation to any RTM, subject to any agreement to the contrary or if it’s clear in all the circumstances that this presumption should not apply
3) assignment of an RTM could be partial (limited to as to apply in relation to):

a) some but not all of the goods or services for which the TM is registered for
b) in relation to use of the TM in particular manner or particular locality

Question 13

RTM - registrable transactions

Answer 13

(a) an assignment of a RTM or any right in it
(b) the grant of a licence under a RTM
(c) the granting of any security interest (fixed or floating) over a RTM or any right in or under it
(d) the making by personal representative of an assent in relation to a RTM or any right in or under it
(e) an order of a court or other competent authority transferring a RTM or any right in or under it

Question 14

RTM - who can apply to have a transaction registered

Answer 14

(a) a person claiming to be entitled to an interest in or under a RTM by virtue of a registrable transaction, or
(b) any person claiming to be affected by such a transaction

Question 15

RTM application for registration of transaction not made

Answer 15

(a) the transaction is ineffective as against a person acquiring a conflicting interest in or under a RTM or any ignorance of it
(b) a person claiming to be a licensee by virtue of the transaction does not have a protection of s 30/31

Question 16

RTM - transaction not yet registered vs infringement

Answer 16

If the mark is infringed before the prescribed particulars are registered, in proceedings for such an infringement, the court shall not award him costs unless:

(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period six months beginning with its date, or
(b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter

Question 17

RTM - amendment of licence particulars on the register

Answer 17

(a) amendment to reflect any alteration to the terms of the licence
(b) removal of such particulars from the register
(b1) where it appears that the licence was granted for a fixed period and that period has expired, or
(b2) where no such period is indicated and after such period as maybe prescribed, the registrar has notified the parties of his intention to remove the particulars from the register

Question 18

RTM - limited licence

Answer 18

limited so as to apply in relation to:

(a) some but not all of the goods/services for which the TM is register; or
(b) use of a TM in a particular manner or in a particular locality

Question 19

Suing a wayward licensee

Answer 19

Proprietor may invoke exclusive rights against a licensee who contravenes any provision in the licence regarding:

(a) its duration
(b) the scope of goods or services for which the licence is granted
(c) the territory in which the TM may be affixed
(d) the quality of goods manufactured or services provided by the licensee
(e) the form covered by the registration in which the TM may be so used

Question 20

RTM infringement (general)

Answer 20

The rights of the proprietor are effective from the date of registration, provided that:

(a) no proceedings may be begun before the date on which the TM is registered
(b) no authorised use of TM in relation to goods is committed by anything done before the publication of registration

Question 21

RTM - primary infringement

Answer 21

If a person uses, in the course of a trade (in the UK, without the proprietor’s consent):

(a) a sign which is identical with the TM in relation to goods or services which are identical with those for which it is registered
(b) a sign where because the sign is identical (similar to) with the TM in relation to similar (identical with or similar to) goods or services, there exists a likelihood of confusion on part of the public which includes the likelihood of association with the TM
(c) a sign which is identical with or similar to the TM, where the TM has a reputation in the UK and the use of the sign, without being due cause, takes unfair advantage of or is detrimental to, the distinctive character or the repute of the TM, irrespective of whether the goods/services are similar/identical/dissimilar.

Question 22

RTM infringement - infringing acts (in respect of a ‘sign’)

Answer 22

(a) affixing it to goods or packaging thereof
(b) offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign
(b) importing or exporting goods under the sign
(c) using the sign as a trade/company name or part thereof
(d) using the sign on business papers and in advertising
(e) using the sign in comparative advertising in a manner which is contrary to the Business Protection from Misleading Marketing Regulations 2008

Question 23

RTM infringement - preparatory acts

Answer 23

Where the risk exists that the

packaging, labels, tags, security or authenticity features or devices or any other means to which the TM is affixed

could be used in relation to goods or services and such use would constitute infringement

a person infringes a TM if the person carries out in the course of trade any of the following:

(a) affixing a sign identical with or similar to the TM on the above, or
(b) offering or placing on the market, or stocking for those purposes, or importing or exporting the above

Question 24

RTM - primary infringement defences/exemptions

Answer 24

(a) the defendant’s later TM would not be declared invalid
(b) the use by an individual of his name or address
(c) the use of signs/indications which are not distinctive or which concern the kind, quality, quantity, geographical origin, intended purpose, value, the time of production of goods or of rendering of services or other characteristics of goods or services
(d) the use of the TM for the purpose of identifying or referring to goods/services as those of the proprietor, in particular where that use is necessary to indicate the intended purpose of the product or service (e.g. accessories/spare parts), provided that the use is in accordance with honest practices in industrial or commercial matters.
(e) Not infringement to use in the course of trade, in a particular locality, an earlier right which applies only in that locality.

Earlier right in the context of (e) means an URTM or other sign continuously used in relation to goods or services by a person or predecessor in title of his, from a date prior to whichever is earlier of:

(a) the use of the 1st mentioned TM in relation to those goods/services by the proprietor or the predecessor in title of his
(b) the registration of the 1st mentioned TM in respect of those goods/services in the name of the proprietor or his predecessor in title

And an earlier right shall be regarded as applying in a locality if, or to the extent that, the use in that locality is protected by virtue of any rule of law, in particular, the law of passing off.

Question 25

RTM infringement - exhaustion of rights

Answer 25

A RTM is not infringed by the use of the TM in relation to goods which have been put on the market in the EEA under that TM by the proprietor or with his consent, unless there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changes or impaired after they have been put on the market).

Question 26

RTM non-use and infringement

Answer 26

The exclusive rights can be exercised only to the extent that the registration of a TM is not liable to be revoked on the basis of non-use at the date the action for infringement is brought.

The below applies to an action for infringement where the registration was completed before the start of the period of 5 years ending with the date the action is brought:

If the defendant so requests, the proprietor of the TM must furnish proof that during that period the TM has been put to genuine use in the UK by or with the consent of the proprietor in relation to the goods or services for which it was registered and which are cited as justification for action or that there are proper reasons for non-use.

Question 27

UK remedies (S15)

Answer 27

If a person is found to have infringed a RTM, the court may make an order requiring him:

(a) to cause the offending sign to be erased,removed or obliterated from any infringing goods, materials or articles in his possession, custody or control.
(b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure destruction of the infringing goods, materials or articles in question

If the above order is not complied with or it appears to the court likely that it would not be complied with, the court may order that the infringing goods, materials or articles be delivered to such a person as the court may direct for erasure, removal or obliteration or destruction.

Question 28

UK remedies (s16)

Answer 28

The proprietor may apply to the court for an order for delivery up to him, or such other persons as the court may direct, of any infringing goods, materials or articles which a person has in his possession, custody or control in the courts of a business.

Question 29

RTM revocation of registration

Answer 29

Grounds:

(a) that within 5 years following the registration the TM has not been put into genuine use in the UK, by or with the consent of the proprietor, in relation to goods/services for which it was registered, and there are no proper reasons for non-use
(b) that such use has been suspended for an uninterrupted period of 5 years and there are no proper reasons for non-use

However, registration should not be revoked if such use is commenced or resumed after the 5 year period following registration and before the application for revocation is made, but this will be disregarded if, after the expiry of the 5 year period but 3 months before the application is made, the proprietor became aware that the application might be made.

(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for product/service for which it is registered
(d) that, in consequence of the use made of it by or with the consent of the proprietor in relation to goods/services for which it was registered, it is liable to mislead the public, particularly in relation to nature, quality or geographical origin of those goods or services

Use includes use in a variant form, i.e. differing in elements which do not alter the distinctive character of the mark in the form it was registered, regardless of whether or not the TM in the variant form is also registered in the name of the proprietor and use in the UK includes affixing the TM to goods or packaging thereof solely for export purposes

Question 30

RTM revocation of registration - specifics

Answer 30

Any person could apply, either to the registrar or to the court, except that:

(a) if proceeding concerning the TM in question are pending in the court, the application must be made to the court, and
(b) if, in any other case, the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.

If grounds exist in respect of only some goods/services, the revocation shall relate to those goods/services only.

If the registration is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent from:

(a) the date of the application for revocation, or
(b) if the registrar or court is satisfied that the grounds existed at an earlier date, that date

Question 31

RTM invalidity grounds

Answer 31

(a) absolute grounds (Section 3), but, where appropriate, a defence would be that in consequence of the use made of the TM, the registration has acquired a distinctive character in relation to relevant goods/services
(b) there is an earlier TM/right, unless the proprietor consented to registration
(c) TM was registered by the representative, without the proprietor’s consent and the representative could not justify his action

If there is an earlier TM, use must be proven (or proper reasons for non-use given) if:

(a) it was registered before the period of 5 years ending with the application for declaration of invalidity,
(b) it was registered before the period of 5 years ending with the registration date of the contested TM

Question 32

PC well-known

Answer 32

to benefit, the owner must have nationality/domicile/real+effective commercial/industrial establishment in a convention country

if UK, mark must merely be known in the UK, so long that the above (in any convention country) is satisfied

same for EU, but enough that the mark is well-known in one MS

can cancel registration/refuse registration/prohibit use

if the TM (or any essential part of it)

constitutes a reproduction, imitation, or a translation

liable to create confusion

of a mark (reg. or unreg.) already well-known in that country

for identical/similar goods/services

at least 5 years post-registration to cancel the contested mark on this basis, unless application made in bad faith, in which case there is no time limit