Making the application
An application for a trade mark to be registered in the UK is made by completing form TM3, which can be obtained from the Intellectual Property Office or downloaded from their website. Not all parts of form TM3 need to be completed. However, if sections 2, 8 and 11 are not completed or the application is not signed at section 13 the application will be rejected.
Once form TM3 has been completed it should be sent to the Trade Marks Registry, which is part of the Intellectual Property Office, together with the application fee and form FS2 (the “fee sheet” which can also be obtained from the Intellectual Property Office or downloaded from their website).
Form TM3, the application fee and form FS2 can be sent to the Trade Marks Registry by post or electronically via the Intellectual Property Office’s website.
The application fee varies depending upon how the application is made (there is a discount for applications made on line), the number of classes of goods or services in respect of which the application for registration is made and how quickly the applicant requires the application to be processed. Up to date information on the fees payable and how payment can be made can be obtained from the Intellectual Property Office or found on their website.
Once an application has been made it can only be amended in very limited circumstances.
Acknowledgment of the application
Once an application has been made the Trade Marks Registry will acknowledge receipt of the application by sending the applicant a “filing receipt” and an application number. This will normally be sent within 6 working days and will be sent by post if the application was made by post or by email if the application was made online.
Examination of the application
The Trade Marks Registry will then “examine” the application. In doing so it will consider whether the application meets the requirements of the Trade Marks Act 1994 and the Trade Marks Rules 2000 (as amended) and will carry out a search of its register of trade marks to check whether there are any trade marks already registered which are the same or similar and for the same or similar goods or services.
The examination report
The Trade Marks Registry will then send the applicant an “examination report”, normally within 10 business days, or in around 5 business days if the application was made using the “online Fast track examination service”.
The “examination report” will set out any objections the Trade Marks Registry has to the application and any requirements they may have.
The “examination report” will be sent by post if the application was made by post or by email if the application was made online.
Dealing with objections
If the Trade Marks Registry objects to the application the applicant will have the opportunity to make representations as to why the application should be granted or to amend the application as regards to the specification of goods and services.
If an objection is made on the ground that a mark is not distinctive (for example, it simply describes the goods or services) if the applicant wishes to proceed with its application it should provide evidence of use of the mark.
If objections are made to some but not all of the classes of goods or services set out in the application the applicant has the option of dividing the application into 2 or more separate applications. This is done by completing and sending to the Trade Marks Registry form TM12, which can be obtained from the Trade Marks Registry or downloaded from Intellectual Property Office’s website together with a fee for dividing the application, the amount of which can be obtained from the Trade Marks Registry or found on the Intellectual Property Office’s website.
An applicant also has, in certain circumstances, the option of merging 2 or more separate applications or registrations into a single trade mark. This is done by completing and sending to the Trade Marks Registry form TM17, which can be obtained from the Trade Marks Registry or downloaded from Intellectual Property Office’s website.
If the Trade Marks Registry objects to an application on the ground that someone else has already registered or applied to register a mark which is the same or similar to that of the applicant and for the same or similar goods or services and the owner of the earlier mark consents to the application, the applicant should obtain a letter from the owner of the earlier mark confirming their consent to the application and send it to the Trade Marks Registry. The letter should be on the letter head of the party who owns the earlier mark and should state the application number for which consent is given and should confirm that consent is given to the registration of the mark. The letter should be signed and if the consent is by a company it should be signed by a responsible person in the company and state that person’s name and position.
If the Trade Marks Registry objects to an application it will inform the applicant how long it has to respond to the objections. If the applicant requires additional time it should apply to the Trade Marks Registry for an extension of time. The Trade Marks Registry may agree to a retrospective extension of time if an application is made within 2 months of a missed deadline.
Acceptance of the application
Once an application for registration of a trade mark has been accepted the Trade Marks Registry will publish the application in their weekly Trade Marks Journal and will write to the applicant stating the publication date and the number of the Trade Marks Journal in which it was published.
Other parties then have 2 months to object to the application or to make observations on its acceptance. This period can be extended to 3 months where another party indicates that they are considering objecting to the application.
The Trade Marks Registry will provide the applicant with details of any objections received.
If another party makes an objection and the applicant wishes to proceed with the application it should, via the Trade Marks Registry, respond to the objection by providing evidence of use of the mark, by applying to divide the application, by applying to merge 2 or more applications or registrations or by filing a letter of consent.
If no objections are received the trade mark will be registered and the Trade Marks Office will send the applicant a registration certificate.