The twists and turns of a trade mark application

It may just seem to be one big waiting game but once a trade mark application is filed, but it will go through a number of stages that are as important as each other.

Stage one: Filing

The first stage is quite self-explanatory and that is the official filing of the application. It is important all details on the application are correct as there is very limited scope for an application to be amended once it is filed. That is why us at Lawdit ensures our clients confirm the application is correct before filing.

Once monies for the application have been successfully received and all the details have been confirmed, we will file your application within 24 hours.

Stage two: the examination stage

Once the application is filed, the mark will first be considered by the Office itself. The Office will allocate an examiner who will look at whether the mark itself is capable of being a registered trade mark. They will assess whether the mark is sufficiently distinctive and not descriptive of your goods and services, amongst other factors.

This stage normally takes between 2 weeks but this is dependent on the UK Intellectual Property Office’s workload at the time of filing.

Stage three: the publication stage

If the UK Intellectual Property Office examiner does not highlight any issues with the marks or any issues are overcome, the mark will then move on to the publication stage. During this stage the mark will be published in the Trade Marks Journal for a period of at least two months in which any existing mark owner can file an opposition against an application if they believe the application mark is confusingly similar to their existing mark.

The UK Intellectual Property Office will first highlight if there are any existing marks which they believe are confusingly similar. They will not refuse the application on the basis of this but will notify the existing mark owner of the application, inviting them to file an opposition.

If an earlier mark owns does have an issue with your application, they will file an opposition, which is a block against your application. The UK Intellectual Property Office will step back in to the process to determine if the opposition has grounds to succeed and make a decision on the application. If an opposition is successful, the application will be refused. However, if the application is not opposed successfully, the application will move on to the final stage.

Stage four: Registration

If the publication stage goes without a hitch, the UK Intellectual Property Office will notify the mark owner (or their representative) of the end of the publication period. The end of the publication period signifies that the mark has been successfully registered. The examiner will generate the certificates and aim to have them sent out within two weeks of the end of the publication period.

The mark has now been successfully registered and the brand has proper protection.

If you need further information on how to protect your brand, please contact the Lawdit team today.

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