The trade marks examination process

Once the application for a new trade mark has been filed with the Trade Marks Registry, along with the information requested on the application, it will be examined in detail by one of the Trade Marks Examiners.

You will be informed when the trade mark has been classified as acceptable, according to the Trade Marks Act 1994. The mark will be published in the weekly Trade Marks Journal and will remain open for public scrutiny for a period of three months.

If the examiners consider your application as unacceptable, you will notified by the Registry. You will also be supplied

• a complete Examination Report listing all the objections to the application
  
• an information leaflet explaining the various parts of the report, and
  
• allow a period of six months to attend to the objections laid out in the report.

Grounds for objections

The examiners will be considering the "absolute grounds" for objecting to an application. These are 7 questions, used as tests to judge whether the mark is acceptable in the form of a trade mark to be used in the UK. The following guidelines are available from the Trade Marks Registry.

1. Is the mark a trade mark?

That is, is the mark a sign which can:

• be represented graphically, and
  
• distinguish the goods or services of one trader from those of another trader?

The word "sign" is interpreted liberally to include, for example, words, logos, pictures and devices.

A sign is considered to be "graphically represented" when:

• it is possible to determine from the graphical representation precisely what the sign is without the need for supporting samples, etc.
  
• the graphical representation can stand in place of the sign because it represents that sign and no other,
  
• it is reasonably practicable for anyone inspecting the Register of Trade Marks, or reading the Trade Marks Journal, to understand from the graphical representation what the trade mark is.

2. Is the mark distinctive?

The following may be accepted:

• Marks which consist exclusively of words which describe your goods or services, or any of the characteristics of them, e.g. words which indicate the quantity, quality, or purpose, of the goods or services.
  
• Geographic names and common surnames, because other traders are likely to want to use these words quite legitimately on their goods or services and should be free to do so.
  
• Logos which are common to a particular trade, e.g. a picture of a barber's pole for hairdressing services.

However, you may be able to overcome objections like these if you can prove that you have been using the mark for some time before you made your application, and that the mark has become associated with your goods or services in the public mind. This can be done by providing the evidence of use of the mark. You can get the guidelines from the Patent Office website, or download it by clicking here.

3. Is the mark a shape which has a useful purpose?

Marks which are three dimensional "shapes" will not be accepted if the shape is one which serves a useful purpose, or is one which adds substantial value to the goods. A shape, like a word or device, must still serve mainly as a means of distinguishing your goods from those of others.

4. Is the mark immoral/illegal/deceptive?

Any marks which are one or more of the following will not be accepted:

• offensive,
  
• against the law, e.g. promote illegal drugs,
  
• deceptive, e.g. there should be nothing in the mark which would lead the public to believe that the goods sold, or the services provided, under the mark had a particular quality which, according to the specification, they do not possess.

5. Is the mark a specially protected emblem?

Marks that include, e.g. royal insignia, coats-of-arms, national flags, or the emblems of certain international organisations, will not be accepted unless you can prove you have the owner's permission to use them.

6. Is the mark somebody else's property?

Marks which include, e.g. pictures of well-known buildings or works of art, are not acceptable unless you can prove you have the owner's permission to use them.

7. Is there a genuine intention to use the mark on all the goods/services applied for?

Applications for goods/services will not be accepted where it is believed that you do not trade in them, or have no real intention of trading in them.

Question 8 covers what we call "relative grounds" for refusal, i.e. reasons for not accepting a mark by considering it in relation to other marks.

8. Are there any earlier conflicting marks?

An earlier mark is one which is already registered, or was applied for before yours. This includes Community marks and those for which protection has been sought in the UK under the Madrid Protocol.

Certain marks will not accepted, which are:

• the same as, or similar to, an earlier mark, and
  
• for the same or similar goods or services.

However, you may be able to overcome objections like this if you can obtain the consent of the owner(s) of the earlier mark(s), or can prove that you have been using your mark at the same time as the earlier mark without there being any confusion in the public mind. These circumstances are called "honest concurrent use".

Questions 9 & 10 cover other miscellaneous matters.

9. Is the specification clear and concise?

A specification will not be acceptable if it:

• does not show goods/services within their correct class, or
  
• is not clear and concise, or
  
• cannot be easily understood.

However, you may be able to overcome objections like these by deleting certain items, or adding classes, or altering your specification.

10. Do the marks form a series?

If you have applied for more than one mark, i.e. a series of marks, they will not be accepted unless they look like one another. Marks in a series must resemble each other in their important elements (called their "material particulars"), and differ only in non-distinctive elements which do not substantially affect the identity of the trade mark.