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.  

Auntie Jane's Trade Mark Tips: No. 5 - How do I register a Trade Mark?

Jane Lambert

Probably the best advice I can give to an entrepreneur or some other business owner who wants to register a trade mark is:  consult a trade mark attorney.  In  Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 I advised that it is possible to apply for a trade mark without an attorney, that it has been done many times before and that unrepresented applicants can expect a certain amount of practical help from the Intellectual Property Office ("IPO") but I would not recommend it. I cautioned that it is a lot of trouble to save a few hundred pounds and it could result in a lot of extra expense as there are many pitfalls in the process.

In that article, I directed readers to the "Find an Expert" section of the Chartered Institute of Trade Mark Attorneys' website or suggested that they might attend an IP clinic or even have a word with me. The fee that any of them would charge for taking your instructions, ascertaining your needs and preparing your application would be chickenfeed compared to the cost of your time in learning how to do all that for yourself. If you try to do it yourself there is a much higher risk of something going wrong. And in the very unlikely case that an attorney gets it badly wrong, he or she is regulated and insured against professional negligence whereas you are not.

For those who chose not to take my advice, I gave a number of tips. They are worth reading again even if you do instruct your attorney because you will find it easier to instruct your attorney and the attorney will find it easier to advise you if you know what is going on.  If you want to register an EU trade mark you should also read the EU Trade Mark fact sheet published by the IPR Helpdesk.

Your application to register a mark does not mean that it will be accepted. In tomorrow's tip, I will consider some of the things that could possibly go wrong. Theresa May will tell you all about that.

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.