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IP Cases & Commentary – Details

25 March 2010

Trade Mark Application Procedure and Timescales

To qualify as a trade mark, your chosen sign (whether it be a word, logo, colour, slogan or whatever) must be sufficiently distinctive to distinguish the goods and services that you offer from those of your competitors.

As part of the application process, once your trade mark application is filed, the relevant intellectual property office will examine the application and decide whether it is indeed sufficiently distinctive for registration.

When a trade mark application is examined, evidence may be needed to show that a descriptive or non-distinctive term is entitled to registration because it has 'acquired distinctiveness' as a result of the use made of the term prior to the date the application was filed.

For more information on evidence, see the article titled "Evidence and Proof of Use in Trade Mark Proceedings Before the UKIPO and OHIM" (see linked resources, right).

Some countries also carry out a search for any potentially conflicting earlier registrations or applications on the relevant database. If a potential conflict is identified, this may prevent the further progress of your application in that jurisdiction, unless you can persuade the examiner that this earlier mark is not a problem for whatever reason. Carrying out a search prior to filing a new application will help you identify any potential obstacles in advance and allow you to have devised a strategy before proceeding with your application.

Presently, neither the UK Office nor the Community Trade Mark Office carry out a search for earlier, potentially conflicting trade marks which would block the further progress of your application. However, both offices do notify the proprietors of any earlier trade marks to give these proprietors the option of making their own objections in opposition proceedings.

If any objections are raised during the examination stage, whether based on the distinctiveness of the right applied for or on the basis of a potential earlier right, we will seek to correspond with the relevant intellectual property office to overcome the objection and allow your application to proceed.

Once any objections have been overcome, the application will be published in the journal of the relevant intellectual property office. Once published, the mark will be advertised and made available for opposition by third parties. In the UK, the mark is initially available for opposition for a period of two months. At the Community Trade Mark Office, the opposition term is three months from the date of publication of your application.

If an opposition is launched, we will advise you accordingly and assess your prospects of dealing with the objections. For full details of the opposition procedure see D Young & Co article "Trade Mark UK and CTM Opposition Proceedings" (see linked resources, right).

Alternatively, if no objections are received, your application will be in order to proceed forward to registration.

Assuming there are no objections or delays, both UK and CTM applications currently take around 4-6 months from the filing date to proceed to registration.Time scales in other countries can vary considerably.

If you intend to proceed with a number of trade mark applications around the world for the same trade mark, it is possible to spread the cost of filings by making use of a system known as priority. The first filing you make for a particular trade mark can be used as a priority application. This allows you to make subsequent filings in other countries around the world, claiming the date of this first priority application for up to six months following the date of the filing of the first application. For example, an application made on 1 January in the United Kingdom would allow you to make subsequent filings in other countries around the world, up to 30 June, still claiming the 1 January date. This allows you to retain an early filing date but spreads the costs of the multiple applications.

If you have several existing national trade mark applications in the European Union and have decided to proceed with a Community trade mark application, you may also take advantage of a system known as seniority. The seniority process allows you to lapse your earlier national rights which are deemed to continue through the Community trade mark. This means that you do not lose the benefit of your early filing dates under the national applications but saves you the expense of renewing these marks individually by continuing their rights through CTM. For additional information regarding the seniority process, click here or contact your usual D Young & Co adviser.

In order to prepare a new trade mark application on your behalf, we will require the following information:

  • Details of the trade mark including representations of any devices.
  • The name, full address and country of incorporation of the applicant.
  • A list of goods and services which the trade mark is used upon or will be used upon in the future.

Please note that for some jurisdictions including the UK, United States and Canada, the applicant should have been using, or have a real intention of using, the trade mark in respect of all of the goods and services specified.

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Related Resources

Claiming Seniority in a Community Trade Mark (CTM)
Evidence and Proof of Use in Trade Mark Proceedings Before the UKIPO and OHIM
How to Challenge a Domain Name

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