If you have had your UK trade mark application refused, fear not – you can still fight for its protection!
Generally, a trade mark application is refused due to one of the following reasons:
1. The mark is too descriptive/lacks in distinctiveness; or 2. there is a high likelihood of confusion with an existing registered trade mark.
One of the first things a trade mark examiner considers during the examination stage of the application is whether the proposed mark is lacking in distinctiveness or if it is wholly descriptive of its goods/and or services under what is known as the ‘Absolute Grounds for Refusal’ as provided by section 3(1)of the Trade Marks Act 1994 (TMA). In accordance with this section, if an application is deemed to be descriptive or devoid of distinctive character, the application will be refused and your fees will not be refunded.
To avoid the risk of rejection based on the above, you will need to change the name and/or logo whilst trying to make the new mark as unique as possible. A good way to do this is by inventing your own word – for example, ‘Google’. You can still add a descriptive word such as ‘fashion’ as long as there are other clearly distinctive elements to the mark – ‘fashion’ cannot be the focal point of the word and/or logo.
A way to overcome this rejection is by providing evidence to the UKIPO that shows how and where in the UK the mark has been used before the application date. Generally, individuals evidence prior use by providing samples of packaging, copies of advertisements and any form of existing marketing for the goods and/or services. This is not a guaranteed route to acceptance but can heighten your chances considerably – the more evidence you provide, the better.
Another detail a trade marks examiner will consider is whether there is already an identical or highly similar registered trade mark out there. In accordance with section 5(1) of the TMA “A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.”
If your mark is refused because of an existing registered mark, you have a couple of options. You can either withdraw your application and submit a new one (bearing in mind the fees are non-refundable) or, alternatively, you can contact the marks owners directly and request to set up a license/co-existing agreement. A co-existing agreement will detail that your mark will be used in unrelated class of goods and/or services and prevent the existing marks’ owner from filing an opposition during the publication period of your application.
You can prevent the above by carrying out prior trade mark searches before making the application. A prior search will highlight any identical or highly similar existing marks before you take the plunge. A trade mark search can be carried out independently or you can have the experts at Lawdit do this for you!
If you have any questions relating to trade marks or need some assistance on determining whether your mark is capable of registration, contact us today.