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Forms and trade mark
procedures
Below we have listed the
range of services that are offered in terms of trade marks and its
security for the proprietors by the UK Patent Office. Some of these
services are available on our website where you can make a study
of your current situation and fill out the required form electronically,
which will be sent to the Patent Office for approval by us.
Application
This is a formal acceptance of your application for a trade mark
registration. Prior to this, you will need to fill out a form where
you will be required to enter the specifications of your product(s)
or service(s) that you wish to register. Since a business logo can
also be registered as a trade mark, any products and services that
are offered can be listed on the form.
Assignment
An assignment is the passing on of the trade mark title from the
previous owner to the new owner who has applied or registered for
this move. The assignment may include trade marks which are still
pending (i.e. not registered yet), and those that are already registered.
Altering
the trade mark information
To alter or modify the information on the trade mark forms, you
need to fill out another form which would let you update essential
information on the form, except the technical and practical specifications
of the products and services listed.
Changing
the application of form
You can change the details of the application form submitted with
the trade mark authority. Although the product or service details
cannot be changed, the coverage of the trade mark may be restricted
to certain goods listed on the form.
Caveats
You can issue warnings or notifications to the authority to keep
you updated on the progress on the trade mark registration process.
Certification
Marks
A certification mark is a trade mark that indicates that the goods
and/or services are produced by the proprietor and have originality.
Furthermore, you can also use it as a mark that certifies conformation
to certain standards or performance levels.
Certified
copies
This is a certified statement of fact issued, giving information
of any applications or registered trade marks that remain pending.
The copy will be certified as true by an official of the Trade Marks
Registry.
Challenging
a mark
Before a trade mark is registered by the Trade Marks Registry it
is published so that it may be verified by the office and the public.
The public has the right to express their opinion on the validity
of the proposed trade mark and oppose the application, where required.
When a trade mark is registered, you can apply with the Registry
to have it rectified, revoked or invalidated.
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Change of an agent
if you have been using the service of an agent or attorney to deal
with your trade mark matters, you will be required to inform the
Registrar of any such appointment or change in the appointed firm
or personnel for the purpose.
Collective
marks
Certain trade marks are permissible which have been created by an
entire industry to protect all products and services to establish
a connection between all or some of the supplied goods and services,
which would bear the mark.
Cooling off period
The cooling off period provides the parties in opposition
proceedings the opportunity to negotiate a settlement before the
commencement of the adversarial stages of an opposition.
Counter-statement
An owner of a trademark, or an applicant, wishing to defend him/herself
from an application or registration of an opposition, revocation
or invalidity proceedings before the court must file a counterstatement.
This rebuts the case on which the opposition, revocation or invalidity
has been found.
Dividing
an application
This allows applications to be divided into 2 or more parts, indicating
the goods and services that will be covered by the appropriate divided
application. This is useful where some trade marks have been approved
for publishing and the rest are pending.
Extension
of time
An applicant may require extra time in certain matters concerned
with trade marks and responding to various actions. Therefore, a
request for an extension of time is allowable, although the office
does not guarantee its approval.
Hearings
A hearing is a chance for the applicant to explain why the Registry
should consider accepting the trade mark application for registration
following the objections raised on it in the examination stage.
Inspection
of documents held in the Trade Marks registry
You can inspect the documents held in the Trade Marks Registry ,
to check if your proposed trade mark is still valid or to challenge
another, by applying through the Central Enquiry Unit. Some applications
may however be disallowed based upon the nature of the documentation.
Intervening
in proceedings for the revocation, invalidation or rectification
of a registration
An intervention can be filed by any person who may have an interest
in the mark being registered. This may be any person who may already
a user of the mark and wants to challenge the application.
Invalidation
A person may apply to invalidate an application for or registered
trade mark claiming that the mark does not and should not qualify
the registration procedure and should have been disqualified in
the initial stages. A trade mark may be invalidated if it is in
breach of any provision of legislation or a conflict with an existing
or previously existing mark.
Licenses
This allows applicants to partially or wholly permit others to use
the trade mark by granting them a license to do so. The provision
or issue of a license is an agreement between the proprietor and
the licensee, the Registry has no objection as to how the powers
or authority is transferred or shared.
Merging
trade marks
Two or more separate applications can be merged into a single trade
mark either at the application or registered status. Applications
can be merged if they application has been made on the same date,
for the same mark and in the same ownership. Registrations may be
merged where it is for the same marks and the ownership is the same.
Opposition
A published application of a trade mark may be opposed by anyone,
who can make observations about the proceeding of the application
and even oppose it altogether.
Passing
off and infringement
Any dispute regarding trade marks are not controlled by the Trade
Marks Registry; any issues regarding this must be consulted with
the Trading Standards Office. A passing off occurs when an unregistered
trademarks is being used by another person who misrepresents by
acting as the producer of the goods and services. An infringement
of a trade mark occurs when a registered mark has been unlawfully
used by another person. This includes using an identical or similar
marking to a registered one and for the same goods and services;
and where the public is likely to be misled.
Rectification
This is a correction of a trademark where any errors or omissions
have occurred in a registered trade mark. The application for rectification
of a registration must be supported by a statement describing the
basis for the rectification.
Registrable
transactions
This allows claimants, who have an interest in the registered trade
mark(s), to register details of their claims in the Register of
Trade Marks.
Renewals
A trade mark expires every ten years and must be renewed to hold
its proprietorship. In avoiding a renewal, you give it up for others
to use it if they please by a voluntary surrender.
Request
for statement of grounds of decision
This is a written statement that the Registrar issues after a decision
on the trade mark application, either after a hearing or the consideration
of written submissions.
Restoration
This is relevant to the renewal of a registered trade mark. Where
an applicant has been delayed in renewing his registered trade mark,
s/he is given a maximum period of one year to restore the registration.
Revocation
A revocation provides for the removal or rejection of a trade mark
registration on the grounds of non-use for over a period of 5 years,
a common term in everyday trade, and a misleading use. A revocation
may be filed for either a full or partial registration, along with
reasoning for the application.
Surrender
An application or proprietor may surrender or give up his/her right
to a trade mark, wholly or partially. It is the responsibility of
the trade mark holder to inform all those having an interest in
the trade mark about the surrender at least 3 months prior to the
actual and formal submission of the surrender with the Registrar.
Third
party observations
For all applications of trade marks made under the Trade Marks Act
(1994), the details are published in the Trade Marks Journal, which
may be scrutinised by anyone who thinks the Registry was wrong in
accepting the application, along with their reasoning for their
view. Any valid comments and reasoning is considered in the approval
or disqualification of a trade mark. Any substantial opposition
should be formally filed with the Registrar under the rules of opposition.
For more information and
details regarding any of the issues concerning trade marks and the
legislative process, contact the UK
Patent Office.
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