Applying for Trade Marks in Bad Faith

Piccadilly Circus at Night

Author Jimmy Baikovicius Licence CC BY-SA 2.0 Source Wikimedia Commons

Jane Lambert

One of the grounds on which a trade mark registration can be revoked is "that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use" (s.46 (1) (a) of the Trade Marks Act 1994). Another is that "such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use" (s.46 (1) (b)).

Those provisions mitigate the abuse that Lord Kitchin identified in para [4] of his judgment in SkyKick UK Ltd and another v Sky Ltd and others [2024] UKSC 36, [2025] Bus LR 251 "where a person applies to register a mark without having made any use of it and without intending to use it in the course of trade in relation to the goods or services for which protection is sought."  The only problem is that a party objecting to such a registration had to wait 5 years before he or she could apply for the revocation of the registration.

As a result of the Supreme Court's judgment in that appeal, there is now another option. An application to register a trade mark may be opposed under s.3 (6) on the ground that the applicant does not intend to use the mark for all the goods or services in respect of which registration is sought.  A new Practice Amendment Notice (PAN 1/25) was published on 27 Jun 2025 providing guidance for applicants, examiners and opponents following that judgment.

Para 9 of PAN 1/25 requires applicants to act in good faith. They should use the registration procedure in the manner and for the purpose for which it is intended. The notice continues:

"It is, in the first instance, for applicants to satisfy themselves that they are acting in good faith. Given the Supreme Court’s guidance, a good faith filing will likely not be achieved by filing without an intention to use. That also applies to the use of general terms covering multitude of sub-categories, where intended use covers only one (or some) of those sub-categories"

Applicants should be cautious about filing claims covering vast numbers of goods and services in large numbers of classes. Caution should also be applied when the terms used to describe the listed goods/services are themselves broad.

The notice states that up to now, examiners have not routinely raised bad faith objections to overbroad specifications.  That is about to change. When examining applications (including international registrations designating the UK), examiners will consider whether the specification is so manifestly and self-evidently broad that a bad faith objection should be raised.  If an examiner raises an objection, the applicant will be allowed 2 months to provide an explanation for the specification.

Those unfamiliar with the Supreme Court's judgment should consult my case note, The Supreme Court's Judgment in SkyKick v Sky, which I posted to NIPC Law on 19 Dec 2024.   Anyone wishing to discuss this article or my case note may call me on +44 (0)20 7404 5252 during UK office hours, or send me a message through my contact form at any time.

"Can Somebody register my Sign as a British Trade Mark now that EU Trade Marks no longer apply to the UK?"

Menai Science Park, Anglesey

© 2018 Jane Elizabeth Lambert 

  

Jane Lambert

Last Tuesday I gave talks on what every startup and SME should know about IP to the BradfordNetwork and the Menai Science Park Enterprise Hub. You can download my slides for the BradfordNetwork and the Enterprise Hub from Slideshare.  At each of those talks, I was asked how to protect a brand in the UK now that the European Union trade mark no longer applies to the UK.  As this question is likely to have been asked in places other than Wales and Yorkshire I decided to reply in NIPC Branding. 

The good news to people who hold EU trade marks is that your sign is still protected in the UK in respect of the same goods and/or services even though your EU trade mark ceased to apply to the UK at 23:00 on 31 Dec 2020.  Art 54 (1) (a) of the agreement by which the UK withdrew from the EU provides that:

"the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 of the European Parliament and of the Council1 shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services;"

You do not even have to pay for the registration because art 55 (1) of the same agreement states:

"The registration, grant or protection pursuant to Article 54(1) and (2) of this Agreement shall be carried out free of charge by the relevant entities in the United Kingdom, using the data available in the registries of the European Union Intellectual Property Office, ....."

These articles were carried into effect by reg 2  and Sched 1 of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (SI2019 No. 269) as amended by reg 8 and reg 9 of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (SI 2020 No 1050).

Those regulations inserted a new s.52A and Sched. 2A into the Trade Marks Act 1994:

"Schedule 2A makes provision for European Union trade marks (including certain expired and removed marks) to be treated as registered trade marks with effect from IP completion day and about certain applications for a European Union trade mark made before IP completion day."

"IP completion day" means the end of the transition period when EU law continued to apply to the UK which happened at 23:00 on 31 Dec 2020.  Para 1 (1) of the  new Sched, 2A, provides:

"A trade mark which is registered in the EUTM Register immediately before IP completion day (an “existing EUTM”) is to be treated on and after IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services as the existing EUTM is registered in the EUTM Register."

You don't need to do a thing unless you do not want a British registration in which case you can opt out under para 2 of the Schedule. In its new story, Intellectual property after 1 January 2021, the IPO says:

"receive a UK registration certificate, but you will be able to access details about the trade mark on GOV.UK and can take a screen shot from there as evidence of your right."

So if any chance wants to try to grab your sign in the UK he or she will find his way blocked by your registration just as he or she would have done before 23:00 on 31 Dec 2020.

Your EU registration will continue to apply to the other 27 member states of the EU in the same way as it has always done.  The only problem is that you will no longer be able to seek an EU wide injunction from a court in the UK because the courts of England, Wales, Scotland and Northern Ireland have ceased to be EU trade mark courts.  Happily, the Commercial Court of the Republic of Ireland is still an EU trade mark court and my colleague James Bridgeman SC who qualified as a trade mark attorney before reading for the Irish Bar can continue to represent you in that court as well as the Court of Justice of the European Union, the General Court and the courts of England and Wales.

If you want to learn more about this subject, you may want to consult How Brexit has changed IP Law 17 Jan 2021 and my presentation and handout on the topic on 26 Jan 2021.  If you want to discuss this article with me you cn call me on 020 7404 5252 during office hours or send me a message through my contact form at any time.

The Trade Marks Regulations 2018 - Relative Grounds of Refusal

Jane Lambert

Yesterday being Burns Night I could not resist this photo of an outsize mouse from the Burns Birthplace Museum in Alloway. This mouse may well be "sleekit" but hardly "wee" and not obviously timorous either.

In this fourth article on the new trade marks law, I consider relative grounds of refusal.  These are circumstances in which the Intellectual Property Office can refuse to register a sign as a trade mark on the ground that the registration would be incompatible with an earlier trade mark registration or application or some other intellectual property right.  This article should be read in conjunction with The New Trade Marks Law which I published in NIPC Law on 12 Jan 2019.

Readers will recall that the law has changed because certain articles of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks came into force on 14 Jan 2019. Art 55 repealed Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (Codified version) with effect from 15 Jan 2019. Art 54 (1) required member states to bring into force the laws, regulations and administrative provisions necessary to comply with the Directive by 14 Jan 2019. The legislation that implements that requirement is a statutory instrument known as The Trade Marks Regulations 2018.

The first two paragraphs of art 5 of Directive 2015/2436 are very similar to the first two paragraphs of art 4 of the previous Directive.  Art 5 (3) (a) of the new Directive is similar to art 4 (3) of the previous one.  The main difference is the insertion of new subparagraphs (b) and (c):

"Furthermore, a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where:
..............................................
(b) an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's authorisation, unless the agent or representative justifies his action;
(c) and to the extent that, pursuant to Union legislation or the law of the Member State concerned providing for protection of designations of origin and geographical indications:

(i)  an application for a designation of origin or a geographical indication had already been submitted in accordance with Union legislation or the law of the Member State concerned prior to the date of application for registration of the trade mark or the date of the priority claimed for the application, subject to its subsequent registration;
(ii)  that designation of origin or geographical indication confers on the person authorised under the relevant law to exercise the rights arising therefrom the right to prohibit the use of a subsequent trade mark."

S.5 of the Trade Marks Act 1994 provides for relative grounds of refusal in the United Kingdom and the changes to s.5 that are needed for compliance with Directive 2015/2436 are made by reg 5 of the Trade Marks Regulations 2018.

That regulation goes further than is necessary for compliance with Directive 2015?2436:

"5.—(1) Section 5 is amended as follows. 

(2) After subsection (3), insert—

'(3A) Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.'

(3) In subsection (4) (a), for 'trade, or' substitute 'trade, where the condition in subsection (4A) is met,'.

(4) In subsection (4), after paragraph (a) insert—

'(aa) by virtue of any provision of EU law, or any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or'.

(5) In subsection (4) (b)— 

(a) after 'paragraph (a)' insert 'or (aa)'; and
(b) omit ', design right or registered designs' and substitute 'or the law relating to industrial property rights. 

(6) After subsection (4), insert—

'(4A) The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.
(4B) The condition mentioned in subsection 4(aa) is that—
(a) an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and
(b ) the designation of origin or (as the case may be) geographical indication is subsequently registered.'.

(7) After subsection (5) insert—

'(6) Where an agent or representative (“R”) of the proprietor of a trade mark applies, without the proprietor’s consent, for the registration of the trade mark in R’s own name, the application is to be refused unless R justifies that action.'.

Those changes appear in the IPO's unofficial consolidation of the Trade Marks Act 1994.

The new subsection (3A) inserted by reg 5 (2) reinforces the deletion of the words

"is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected" 

from s. 5 (3) (b) of the Act as originally enacted by reg  7 (1) of the Trade Marks (Proof of Use) Regulations 2004 (SI 2004 No 946) in order to give effect to the Court of Justice's decision in Case C-292/00, Davidoff & Cie and another v Gofkid Ltd. [2003] FSR 28, [2003] EUECJ C-292/00, [2003] ECR I-389, [2003] ECR I-00389, [2003] 1 WLR 1714.

Art 5 (3) (b) of Directive 2015/2436 is implemented by the insertion of the new subsection (6).  Paragraph 9 of the IPO's Guidance Implementation of the EU Trade Mark Directive 2015 explains the reason for the insertion:

"If someone acting as your agent or representative applies for, or has registered, your trade mark in their name without your permission, you can seek to remedy the situation. The options for doing so are changing slightly, and mean that they now apply to any owner of a trade mark, whether they are based in the UK or abroad."

The next paragraph adds:

"If the trade mark has been applied for, but has not been registered, you may seek to have the application refused by opposing it. You can only do so if the mark has been published. If the mark is still pending you can ask the IPO to notify you when it is published, by filing an e-Alert. You can check the status of the mark using the search facility on the IPO’s website."

There are parallel amendments to s.47 to permit invalidity proceedings on that ground.

Reg 5 (4), (5) and (6) implement art 5 (3) (c) of Directive 2015/2436.

Anyone wishing to discuss this article or trade mark law generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

The Trade Marks Regulations 2018 - Absolute Grounds of Refusal

Jane Lambert

This is the third of my articles on the changes to UK trade mark law brought about by the implementation of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks on 14 Jan 2019.  It is to be read in conjunction with The New Trade Marks Law which I published in NIPC Law on Saturday, 12 Jan 2019.

Art 4 (1) of the Directive lists signs that should not be registered as trade marks or, if registered, should be liable to be declared invalid:

"(a)  signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c)  trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:

(i)  the shape, or another characteristic, which results from the nature of the goods themselves;
(ii)  the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii)  the shape, or another characteristic, which gives substantial value to the goods;

(f) trade marks which are contrary to public policy or to accepted principles of morality;
(g) trade marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
(h) trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention;
(i) trade marks which are excluded from registration pursuant to Union legislation or the national law of the Member State concerned, or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications;
(j)  trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;
(k)  trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed;
(l)  trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or the national law of the Member State concerned, or international agreements to which the Union or the Member State concerned is party, providing protection for plant variety rights, and which are in respect of plant varieties of the same or closely related species."

These are known as "absolute grounds of refusal."

There are rather more grounds in this list than in the previous directive.  The main changes are the substitution of the words in art 4 (1) (e) of the 2015 Directive for those in art 3 (1) (e) of the previous one and the addition of paragraphs (i) to (l) in the new directive.  These are implemented by reg 4 of The Trade Marks Regulations 2018:

"(1) Section 3 is amended as follows.
(2) In subsection (2), after “the shape” in each place insert “, or another characteristic,”.
(3) In subsection (4)(7), after “EU law” insert “other than law relating to trade marks”.
(4) After subsection (4), insert—

“(4A) A trade mark is not to be registered if its registration is prohibited by or under—

(a)  any enactment or rule of law,
(b) any provision of EU law, or
(c) any international agreement to which the United Kingdom or the EU is a party,

providing for the protection of designations of origin or geographical indications.
(4B) A trade mark is not to be registered if its registration is prohibited by or under—

(a) any provision of EU law, or
(b) any international agreement to which the EU is a party,
providing for the protection of traditional terms for wine or traditional specialities guaranteed.

(4C) A trade mark is not to be registered if it—

(a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and
(b) is in respect of plant varieties of the same or closely related species.

(4D) Subsection (4C)(a) refers to registration in accordance with any—

(a) enactment or rule of law,
(b) provision of EU law, or
(c) international agreement to which the United Kingdom or the EU is a part
providing for the protection of plant variety rights.”

Those amendments have been incorporated into the Intellectual Property Office's unofficial consolidation of the Trade Marks Act 1994. 

The reason for reg 4 (2) is given in the first paragraph of section 2 of the guidance note Implementation of the EU Trade Mark Directive 2015:

"Marks which consist exclusively of shapes cannot be registered if the shape itself performs a purely technical function, adds value to the goods or results from the nature of the goods. This kind of prohibition has now been extended to cover not just shapes, but any characteristic which is intrinsic to the goods applied for. For example, a repetitive high pitched sound would be considered to be an intrinsic part of a fire alarm. An application for a mark which therefore consists of such a sound, applied for in relation to fire alarms, is likely to be subject to an objection under these provisions."

The reason for the other changes is  in paragraph (15) of the recitals:

"In order to ensure that the levels of protection afforded to geographical indications by Union legislation and national law are applied in a uniform and exhaustive manner in the examination of absolute and relative grounds for refusal throughout the Union, this Directive should include the same provisions in relation to geographical indications as contained in Regulation (EC) No 207/2009. Furthermore, it is appropriate to ensure that the scope of absolute grounds is extended to also cover protected traditional terms for wine and traditional specialties guaranteed."

There is nothing in the recitals on plant breeders' rights

Anyone wishing to discuss this article or trade marks generally should call me on 020 7404 5252 or send me a message through my contact page.  Finally, if anyone is curious about the photo, it was taken at the summit of the West Nab which is near Holmfirth in the Yorkshire Pennines. A beautiful spot  which I strongly recommend.

The Trade Marks Regulations 2918 - Registrable Signs

Jane Lambert

This is the second of my articles on the new trade marks law. It should be read in conjunction with my introduction and overview which I published in NIPC Law on Saturday.  Readers will recall that Directive 2015/2436 repeals Directive 2008/95/EC with effect from 15 Jan 2019 and requires member states to transpose the most important provisions of Directive 2015/2436 into their laws by the 14 Jan 2019. The statutory instrument that implements Directive 2015/2436 is the Trade Marks Regulations 2018 (SI 2018 No 825.

One of the most important changes to have been brought about by the Directive is the widening of the range of signs that can be registered as trade marks.  Art 2 of Directive 2009/95/EC provided:

"A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."

This definition was transposed into s.1 (1) of the Trade Marks Act 1994:

"In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

The words "capable of being represented graphically" excluded marks that could not be described by letters, numbers or any other form of notation.

Art 3 of Directive 2015/2436 offers the following definition in place of the previous one:

"A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a)  distinguishing the goods or services of one undertaking from those of other undertakings; and
(b)  being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor."

Accordingly, reg 3 of the Trade Marks Regulations 2018 provides:

"In section 1, for subsection (1) substitute— 

'(1) In this Act “trade mark” means any sign which is capable— 

(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b) of distinguishing goods or services of one undertaking from those of other undertakings. 

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.'”

The substitution has required a consequential amendment of s.32.  Reg 18 inserts the following words after "mark" in subsection  2 (d): "which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

In its guidance Implementation of the EU Trade Mark Directive 2015 the Intellectual Property Office explains:

"When filing your application, you will no longer be required to always provide a graphic (visual) representation of your trade mark. You can instead present your mark in a wider range of electronic formats, such as in an MP3 or MP4 format. This makes it easier to show more precisely any marks which incorporate, for example, movement or sounds. You will need to ensure that your mark is presented clearly and precisely so that others can understand what it is."

An applicant that wishes to register such a mark must do so online.  The mark may be in one of the following formats:

• Shapes: OBJ, STL and X3D
• Figurative, pattern, colour: JPEG
• Sound: MP3
• Motion, multi-media and hologram: MP4

The note adds the file should be no more than 20 megabytes (MB) in total, per application.  In the case of an application for a trade mark that relates to sound, moving images, hologram or a multimedia trade mark, the MP3 file cannot exceed 2 MB and the MP4 may not exceed 8000 kilobytes per second.

Anyone wishing to discuss this article or the Trade Marks Regulations 2018 generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

The Trade Mark Regulations 2018 - Citation, commencement and interoretation

Jane Lambert

As I pointed out in The New Trade Marks Law 12 Jan 2019 trade mark law in the UK and throughout the EU is changing today.  Directive 2015/2436  repeals Directive 2008/95/EC  with effect from 15 Jan 2019 and requires member states to transpose its most important provisions with effect from today.  Directive 2015/2436 is implemented by the Trade Marks Regulations 2018 (SI 2018 No 825) which came into force today,   I introduced those regulations and outlined their structure in my previous article.  As promised in that article I shall discuss its provisions in more detail in this and subsequent articles in this blog.

The regulations are divided into 5 Parts the first of which concerns "Citation, commencement and interpretation.  Reg 1 provides:

 "(1) These Regulations may be cited as the Trade Marks Regulations 2018 and come into force on 14th January 2019.
(2) In these Regulations—
“the 1994 Act” means the Trade Marks Act 1994;“the CTM Regulations” means the Community Trade Mark Regulations 2006;
“the International Registration Order” means the Trade Marks (International Registration) Order 2008;
“the Rules” means the Trade Marks Rules 2008."

Part 2 of the Regulations, amends the 1994 Act. Part 3 the Rules and Part 4 The Community Trade Mark Regulations 2006 as amended by The Community Trade Mark (Amendment) Regulations 2008, The Treaty of Lisbon (Changes in Terminology) Order 2011, The European Trade Mark Regulations 2016 and the Intellectual Property Unjustified Threats Act 2017 and The Trade Marks (International Registration) Order 2008.

Anyone wishing to discuss this article or the Trade Marks Regulations 2018 generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Auntie Jane's Trade Mark Tips: No 8 - Oppositions in the Trade Mark Registry

Intellectual Property Office in Newport

Jane Lambert

In my last trade mark tip, I talked about publication and some of the consequences. In most cases, there are no consequences at all. Your application is published in the Trade Marks Journal and nobody bats an eyelid. If there are no objections the application proceeds to registration as the infographic indicates. But sometimes the Intellectual Property Office receives third party observations which the examiner considers and or even an opposition.

An "opposition" is an application to the Intellectual Property Office to stop the registration of the sign that you want to register as a trade mark. It can be made on any or all of the absolute grounds for refusal mentioned in my sixth trade mark tip and/or the grounds that the objector has an earlier trade mark or an earlier right under s.5 of the Trade Marks Act 1994. An "earlier trade mark" is a trade mark that has been registered for the UK or the EU, an international mark, an application for any of those marks, or a mark that is protected as a well-known mark under the Paris Convention. An "earlier right" is the right to bring an action for passing off, copyright or any other IP right infringement or some other claim that would prevent your using the trade mark. These are known as "relative grounds for refusal".

Your first inkling that you may have a problem could be a letter from the patent or trade mark attorneys or solicitors for the objector setting out the objection and the reasons for it and inviting you to withdraw your trade mark application.  Sometimes it is accompanied by a form TM7A or notice of threatened opposition. This is one of the times when you may need legal advice either from a barrister or solicitor specializing in IP law or a trade mark or patent attorney.

If you decide to proceed with your application, the objector may issue opposition proceedings which he or she does by filling in a form TM7 or a TM7F. The objector (who has now become an "opponent") will fill in a TM7F if he or she wants a fast track opposition. Fast track proceedings are available where the opposition is based on s.5 (1) or (2) of the Trade Marks Act 1994 and the application to register the earlier mark was made less than 5 years ago. The main advantage is that costs awards are limited to £500 but the disadvantage is that there is not usually a hearing. In all other cases, opposition proceedings are to be launched with a form TM7.  If you want to defend your application you must file a notice of defence and counterstatement in form TM8 within 2 months of the service of form TM7.

I described what happens next in some detail in Oppositions in the IPO's Trade Marks Registry on 12 Aug 2015 in NIPC London. Basically, the case goes before a hearing officer who may give a preliminary indication as to how he thinks the case will go. If the case proceeds, the hearing officer will direct the parties to file evidence. If you are unable to resolve your dispute opposition through direct negotiation or perhaps mediation the hearing officer may decide the case on the written materials only or order a hearing if you or the opponent so wishes. That will usually take place at the Intellectual Property Office in Newport with one or both of the parties sitting in London or occasionally elsewhere. It tends to follow the usual course of civil proceedings with the opponent opening and closing and the applicant responding. Judgment is usually reserved for several weeks and is delivered in writing. An unsuccessful party may appeal either to a tribunal within the IPO known as "the appointed person" or to the Chancery Division of the High Court.

If the opposition fails either before the hearing officer or on appeal the trade mark application to register the trade mark proceeds to grant. If it succeeds the application is stopped in its tracks.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.

Auntie Jane's Trade Mark Tips: No. 6 - Some of the Things that can go wrong

Author Priwo
Source Wikipedia

Jane Lambert

There are all sorts of reasons why your application to register a mark might fail.

The official who examines your application ("the examiner") may consider that your mark falls within a number of statutory exclusions. For a start, the examiner may consider that the subject matter of your application is not even a trade mark, possibly because it is not a sign, or perhaps because it can't be expressed in writing or doesn't distinguish your goods and services from those of your competitors.

Even if it is a trade mark, the examiner may object to it on the grounds that it is not distinctive, that it is descriptive of the goods or services, or common to the trade. He or she may consider your proposed mark to be offensive or it may be too similar to a royal, national or other protected emblem. Those objections are called "absolute grounds for refusal" and are set out in sections 3 and 4 of the Trade Marks Act 1994.

Wherever possible, the examiner will give you an opportunity to overcome the objections. If you fail to take advantage of that opportunity or if the examiner believes that the objection cannot be overcome he or she may refuse your application.

If you think the examiner is wrong you can appeal against his decision to the Registrar of Trade Marks (that is to say the Comptroller or Chief Executive of the IPO). The Registrar will appoint an official called "a hearing officer" to consider your appeal. I have described the appeal procedure in "If the examiner says "no" - ex parte hearings in the Trade Marks Registry" 10 Aug 2015 NIPC London. That is where I or some other specialist intellectual property barrister can often help. We can advise you of your chances of success and, if necessary, represent you at the hearing before the hearing officer.

Even if the examiner has no objection to your application or you manage to overcome any objection that he or she raises, you may not be out of the woods. Someone else may object to your application and I will consider that problem next time.

Until then, I leave you with my case note on T-397/09 Prinz von Hannover v OHIM  [2011] EUECJ T-397/09  (Trade Marks: Prince Ernst August of Hanover and Brunswick etc v OHIM 6 June 2011 NIPC Law). Cheeky wasn't he!

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.