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Ensuring a Complete Trade Mark Application
Every application that is filed undergoes thorough scrutiny by the examiner to verify compliance with the requirements outlined in the Trade Marks Act 1994 (the ‘Act’) and associated Rules. Certain requirements must be met to secure a filing date, while others, though not essential for establishing the filing date, must be satisfied before the application proceeds to examination. The filing date corresponds to the date the application is deemed complete. If any requirements are incomplete, the filing date becomes the date the UKIPO receives the final document that satisfies the criteria. https://www.gov.uk/government/collections/intellectual-property-trade-marks
1. Essential Filing Requirements (Section 32(2) of the Act)
An application is assigned a filing date once all the essential requirements are met. These requirements are:
A formal request for registration can be made through:
- Form TM3, which explicitly includes a registration request.
- A written statement clearly indicating a request for trade mark registration.
(b) Name and Address of the Applicant
Any applicant must provide their legal name and address. For companies, the correct legal entity name must be used, not a trading name or style.
(c) Statement of Goods or Services
Applicants must specify the goods or services for which the trade mark will be used or intended to be used. While providing class numbers is not mandatory for establishing a filing date, they must be included before the Application proceeds. Any unclear specifications will prompt the Application to be rejected and the UKIPO will contact you for clarification.
(d) Representation of the Trade Mark
You must include a representation of the trade mark (or marks, in the case of a series) in the format for which registration is sought. That is, file the Trade Mark exactly as you intend to use.
1.2 Non-Essential Requirements for Filing Date
1.2.1 Declaration of Use or Intention to Use (Section 32(3))
Applicants must declare that they are:
- Using the trade mark or permitting its use with consent; or
- Intending to use the trade mark in good faith for the specified goods or services. This declaration must be signed by the applicant or their representative.
1.2.2 Application and Class Fees (Section 32(4))
Applicants must pay:
- A basic application fee covering one class. £170.00
- Additional fees for each extra class requested. Although payment is not essential for establishing a filing date, it must be submitted before further processing. £50.00 for additional class.
1.2.3 Form TM3 Usage (Rule 5)
If a request meets essential requirements but is not on Form TM3, applicants have one month to transfer the details onto Form TM3 or an acceptable replica and submit it.
1.2.4 Specification of Class (Rule 8(2))
Applications must specify the relevant class under the Nice Classification system (Schedule 3 of the Rules).
1.2.5 Address for Service
Non-UK applicants must provide a correspondence address within the European Economic Area (EEA). Applicants from the Channel Islands or the Isle of Man do not need a UK address for service.
1.3 Handling Deficient Applications
If an application is deficient, the UKIPO will issue a letter under Rule 13 (or Rule 11 for missing addresses for service), giving you one month to correct the issues. Failure to do so results in:
- Applications lacking essential requirements being deemed as never made.
- Applications missing non-essential requirements are being treated as withdrawn.
Note: The one-month deadline is strict and cannot be extended (Rule 77).
2. Additional Queries or Objections at the New Application Stage
2.1 Inconsistencies in Application Form
The UKIPO will verify the application form for consistency and common errors such as:
- Mismatched series mark numbers and representations.
- Errors in priority claims.
- Misstatements about certification or collective marks.
- Obvious errors in the mark or specification.
- Incorrect mark type.
Where possible, inconsistencies are resolved via telephone as part of customer care. However, the onus is on applicants to ensure accurate submissions.
2.2 Mark Type Allocation
The following are the types of Trade Marks:
- Word only
- Figurative
- 3D
- Hologram
- Sound
- Colour
- Other
2.3 Graphical Representation
Marks must be represented graphically in a manner that is clear, precise, self-contained, accessible, durable, and objective (as per Sieckmann, ECJ Case C-273/00). If the representation is deficient, you have one month to remedy the issue. For series marks, deleting the deficient mark retains the original filing date.
2.4 Guidelines for Specific Types of Marks
2.4.1 Series Marks
A series comprises trade marks differing only in non-distinctive elements. Applications can include up to six marks. The first two marks are included in the basic fee; additional marks incur extra fees.
2.4.2 Colour Marks
Applications for colour marks must include:
- A written description of the colours.
- Identification using recognised systems like Pantone®.
- For combinations, a systematic arrangement and description of how the colours are used.
2.4.3 Figurative Marks
If shown in colour, the mark will be registered in those colours unless otherwise stated. Applications in black and white are not deemed to include colours unless specified.
2.4.4 3D Marks
Applications must include pictorial representations. Multiple views (no more than six) are often required to depict complex shapes. Descriptions alone are insufficient unless accompanied by images showing the essential particulars.
2.4.5 Sound Marks
Sound marks must be represented graphically, such as:
- Musical notation showing timing and pitch.
- Descriptions alone, such as “a lion’s roar,” are insufficient. The Registrar has not established a definitive stance on sonograms.
2.4.6 Moving Images
Representations must clarify:
- That the mark is a moving image.
- The sequence of movement and the number of images involved.
2.4.7 Holograms
Hologram applications must include representations of all material features. For simple holograms, a single representation may suffice.
Conclusion
By agreeing to these detailed requirements, you will ensure a smooth processing of your trade mark application and help applicants avoid unnecessary delays. By maintaining clarity and precision in submissions, applicants can secure robust trade mark protection efficiently.
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