CITMA trade mark registration glossary
When you embark on the journey to register your trade mark, you will come across a number of terms that may be unfamiliar.
We have compiled all the key terms into a glossary, explaining what they mean and what else you might need to know as you undertake the process.
General terms
Trade mark
A trade mark is a badge of origin, by which customers can identify your goods and/or services in the marketplace. Most trade marks are words (word marks) or images (figurative marks), but they can also be sounds, shapes, colours, multimedia, motions, and holograms.
Once you have successfully registered your mark in a given jurisdiction, in the classes you have chosen, you have the exclusive right to use it in that jurisdiction. Find out more about trade marks.
Chartered Trade Mark Attorney
A Chartered Trade Mark Attorney in the UK is a legal expert on protecting and exploiting trade marks and designs. They are recognised by the UK Chartered Institute of Trade Mark Attorneys and have undertaken two specific post-graduate qualifications (courses are at Brunel, Nottingham Trent or Queen Mary University) in trade mark law as well as accruing at least two years’ experience in trade mark legal practice. A Chartered Trade Mark Attorney provides highly valuable guidance on the process of applying to register your trade mark, defending your trade mark once it has been registered, renewing your mark, and expanding your portfolio of trade mark rights to fully exploit your brand. Consult our register of Chartered Trade Mark Attorneys to find an attorney who can help you.
The Intellectual Property Office (IPO) of the United Kingdom
The Intellectual Property Office of the United Kingdom (often shortened to “The IPO” or “UK IPO”) is the official UK government body responsible for intellectual property (IP) rights including patents, designs, trade marks and copyright.
The IPO is an executive agency, sponsored by the Department for Business, Energy & Industrial Strategy.
The IPO is the organisation to which you will make your trade mark application. It is responsible for assessing your application, publishing it, and ultimately granting your trade mark registration.
Trade Mark Classes / the NICE Classification system
The NICE (pronounced neess – like the French city) Classification System is an international classification of goods and services applied for the registration of marks. It enables consistency between trade mark jurisdictions, which allows more effective protection of registered marks. Trade mark classes group together categories of goods and services that are broadly similar. There are 45 classes, with classes 1-34 covering goods and classes 35-45 covering services.
When you make a trade mark application, you must select the classes in which you would like your mark to be registered. For example, if you run a beauty salon business you would apply to register your mark in Class 44, covering beauty care services.
You can apply to register your mark in more than one class, so if you are a rock band who plans to give concerts, and also sell branded merchandise, you would be advised to apply to register your mark in Class 41, which includes arranging and conducting of concerts, and Class 25, which includes clothing, footwear and headwear. Read more about trade mark classifications.
The NICE system is used by most jurisdictions, however not all. For example, in China a sub-class system is used.
Distinctive vs descriptive marks
In order to be registered, a trade mark should be distinctive. When placed on a product it should clearly indicate the origin of the goods or services in question. If a trade mark has no distinctive character, it cannot be registered. Whether a mark is distinctive can depend on the class of goods or services the applicant wishes to secure it in. For example, a company selling apples would not succeed in registering a mark for “Apple” in Class 21, which covers fresh fruit-based foods, because the word Apple is synonymous with the fruit; it is descriptive of the goods in question. However, a company registering “Apple” in Class 9, covering computers and peripheral devices, would succeed (and famously has done so) because the word Apple is not descriptive of the product.
Series application- UK
If you have several variations of your trade mark, for example you wish to register a monochrome version and a colour version of your logo, this is called a series application. You can register up to six marks in a single application, at an additional cost if more than two marks.
To be registered as a series application the elements in the series must be closely linked, with only minor differences. The marks must mean the same to the average consumer, with no additions or deletions that change the meaning in any substantial way. They must also sound the same when read aloud, in the case of word marks.
The IPO has published more advice on applying for a series mark.
Madrid System
The Madrid System is a way to simplify the process of applying for trade marks in multiple territories worldwide. It is managed by the World IP Organization (WIPO).
By using the Madrid System, applicants file a single application and pay one set of fees to apply for protection in up to 193 jurisdictions. The applicant must first file an application (or have already obtained a trade mark registration) in their “home” IP office or “office of origin”. This application is known as the “basic mark”.
Once you have an application/registration number you then submit an international application through this office to WIPO. WIPO examines the mark, records it in the International Register and publishes it in the WIPO gazette of international marks. It then notifies the IP offices in all the territories the applicant wishes to register their mark in. Each IP office examines the application and decides whether the mark can be protected in that jurisdiction and communicates its decision to WIPO.
Registers and databases:
Trade mark register
A trade mark register is the official list of all the trade marks registered in a particular region e.g the UK, the USA or the EU. The IPO is responsible for publishing and maintaining the UK’s trade mark register. It is a public record. You can search the UK trade mark register here.
Trade mark database
There are several databases that contain information about trade mark applications/registrations:
- The WIPO IP Portal Global Brand database contains IP rights data from multiple national and international sources.
- eSearch plus enables searching of the EU Intellectual Property Office (EU IPO) database.
- The TMView database contains information from all EU national IP offices, the EU IPO, and a number of international partner offices outside the EU.
- The Trademark Electonic Search System (TESS) contains data on trade marks registered at the US Patent and Trademark Office (USPTO).
There are also searchable national databases of registered trade marks in many jurisdictions. When conducting a clearance search you or your Chartered Trade Mark Attorney will search these databases to identify any existing marks that may be identical or highly similar to your proposed mark.
Before you apply:
Clearance search
A trade mark clearance search, sometimes also called a knockout search or due diligence search, is a preliminary search of the UK, EU and International trade mark registers to see whether the mark you plan to register, or a similar one, is already registered in the relevant classes by someone else.
It is highly advisable to conduct a clearance search before developing and using your brand. This avoids having to change it further down the line if your planned marks are already registered by someone else. Using an identical or similar mark to one already registered would result in trade mark infringement and defending an infringement action can be very costly.
A Chartered Trade Mark Attorney can conduct clearance searches on your behalf and provide valuable advice as to the likelihood that your trade mark can be successfully registered.
Online trade mark application
You can apply online to register your trade mark in the UK. Applying online costs £170 for registration in a single trade mark class, plus £50 for each additional class applied for. (see here for guidance and here for the link).
Form TM3
Form TM3 is the form you must complete to apply to register your trade mark in the UK via email to [email protected] or via post. Applying by this route costs £170 for registration in a single trade mark class, plus £50 for each additional class applied for.
Right Start service
This service is provided by the UK IPO and allows applicants to check that their application meets the rules for registration, by paying only half of the official fees. This services costs £100 initially, plus £25 for each additional trade mark class applied for. The applicant receives a report explaining whether the application meets the rules and they can then choose to continue the application for a further payment of £100, plus £25 for each additional class. Unfortunately, no amendments to the mark applied for can be made. However, this process reduces the financial risk as only half the fees are lost if the application is rejected, and the applicant chooses not to try to overcome said objections.
After you’ve made your application:
Examination report
When you have filed your application to register your trade mark, it will be examined by the IPO. You will be sent an examination report by email (or via post if you have applied via the postal route) within six weeks, explaining whether the IPO considers that your mark is registrable and informing you whether there are any identical or confusingly similar marks already on the register. On receipt of your examination report you have two months (extendable) in which to resolve any problems. If the examiner has no objections, your application will be published in the trade marks journal.
Trade Marks Journal
The trade marks journal is the official journal where the UK IPO publishes accepted applications to register trade marks and those that have been amended/corrected/cancelled publications/restrictions to goods/services. Its purpose is to allow other brand owners to check the new marks being applied for and, if necessary, object to their registration. They may object to a trade mark application for up to two months (extendable by one month), after it has been published in the journal, this is called the opposition period.
It is published every Friday and can be viewed here.
Opposition period
The opposition period is the time during which a third party with prior rights can object to an application to register a trade mark, after it has been published in the trade mark journal. This is two months from the publication of the application. It may be extended by a further month if – during the original two-month period – a party files a notice of threatened opposition with the IPO.
As an applicant you will need to wait for the two-month opposition period to pass, plus an extra two weeks at the end of the period to allow for any late-received objections to be processed. If no objections are received, your trade mark will proceed to be registered.
Notice of threatened opposition-TM7A
Any third party with prior rightsthat intends to oppose a trade mark application may file a notice of threatened opposition. This is not itself a formal opposition, but indicates that the third party may file an opposition. It extends the period of time in which this party has to make an official objection by one month beyond the initial two-month opposition period. The Form TM7A can only be filed online and is accessible here: Give notice of your intention to oppose a trade mark - GOV.UK (www.gov.uk). There is no filing fee attributed to this form.
Objection/Opposition
An owner of a registered trade mark may object to, or oppose your application if they believe its registration would affect their own trade mark or business in a negative way. This might be because they have an identical registration or deem the mark applied for too similar to their own, already registered mark (this is called “opposition on relative grounds”).
It might also be because they deem the applied-for mark does not function effectively as a trade mark. This is called opposition on absolute grounds and is based on the opposers content that the mark is either descriptive of the goods/services in question; a generic word for goods and service in that category; or because they believe the mark is non-distinctive and should remain available for use by all businesses in that industry.
Your Chartered Trade Mark Attorney can advise on what basis you should oppose, the likelihood of success and which route (fast-track or standard).
Once your trade mark is registered:
Certificate of registration
You will receive an electronic certificate of registration confirming that your trade mark is recorded on the trade mark register, unless your application is via post. It will contain the registrant’s details, as well as the mark and the goods/services
Renewals
Your trade mark is valid for ten years from the application date. To maintain your trade mark after this time you will need to renew it. You can renew your UK trade mark registration up to six months before it expires, and for up to six months after it expires, upon payment of a late renewal