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
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.
