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UK Trade Marks - Examination

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17 February 2010

Examination

An application at UK level will be assigned to a Trade Mark Examiner. The Examiner will examine the trade mark application under two sets of grounds (as set out in the Trade Marks Act 1994).

1) Absolute Grounds for Refusal

An Examiner will assess whether the proposed trade mark has sufficient distinctive qualities so as to function as a trade mark. The function of a trade mark is to distinguish the goods /services of one undertaking from those of another.

Trade marks which fall foul of this section are marks which are generic or lack any imaginative thought or marks which indicate the kind, quality, quantity, intended purpose, geographical location or time of production.

It is important therefore to ensure (prior to application) that the mark will not fall foul of these grounds.

2) Relative Grounds for Refusal

The Examiner will conduct a trade mark search of the UK and EU trade mark registries to identify any existing identical or similar registered or pending trade mark which may be cited against the proposed trade mark.

Once the Examiner has examined the trade mark application he/ she will write to the applicant (or its representatives if a firm of solicitors/ attorneys have been appointed) and will provide their report on the above (i.e. whether the Examiner has any Absolute Grounds objections and? or whether the Examiner intends to notify the owner of an earlier similar trade mark).

If an Absolute Grounds objection is raised the applicant will be given 2 months to defend the objection and attempt to overcome it. If it cannot be overcome the trade mark application will be refused.

If the Examiner has raised marks which he/ she thinks are similar and therefore notifications are intended to be sent the applicant will be given 2 months to persuade the Examiner that the owners of the trade marks raised should not be notified.

Once a final decision has been made (or if the applicant decides not to contest the examination report) the applicant must make a decision as to whether it withdraws the application or allows it to go forward which will result in notifications being sent.

 

Jody Tsigarides is a Solicitor who specialises in IP law. jody.tsigarides@lawdit.co.uk


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2010-02-20 16:38:20 in Legal Articles

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