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As a business owner, when you find the perfect logo or business name for your new UK business, you will likely want to file a trade mark application immediately. However, imagine upon doing so, you receive a trade mark objection from the UK Intellectual Property Office (UK IPO). This article will explain how the objection process works and your options should you end up in a position where your chosen trade mark has had an objection filed against it.
Trade Mark Registration
You can only register a trade mark if it meets the following criteria:
- it is unique and distinctive; and
- is a word, sound, logo, colour, or a combination of these things.
The following characteristics will make a trade mark invalid for registration:
- being offensive, such as using swear words;
- descriptive of the goods or services it relates to;
- being misleading such as using the word woollen when the material is something else;
- if it is a three-dimensional shape that is associated with what you sell;
- resembling a state flag or other state symbol; and
- appearing too common or non-distinctive.
Objections to Trade Marks
When registering a trade mark, you will receive an examination report from the UK Intellectual Property Office (UK IPO). If your trade mark meets the requirements for registration, they will publish it in the trade marks journal for two months. The examiner will notify you if someone else has a similar trade mark and contact that trade mark holder.
There are two kinds of objections to trade mark applications:
- the third-party observation; and
- opposing the trade mark.
A third-party observation is when somebody notifies the IPO with the belief that your trade mark is valid. This objection is not legal action, and the IPO does not have to act on third-party observation, but they can do if they wish.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Grounds for Objecting
There are two different reasons that someone can oppose your trade mark application.
Firstly, an objection on absolute grounds means your opponent does not believe your trade mark is valid for registration. This could be because your brand is not distinctive enough or too generic. An objection on absolute grounds is similar to a third-party observation. However, the IPO has to act if someone files an opposition based on absolute grounds but does not have to for third-party observations.
The second type of objection is made on relative grounds. This is where your trade mark is too similar to an existing trade mark. If another individual or business holds a trade mark that they believe is similar to your proposed one, they are responsible for contacting the IPO and objecting to your application. The IPO will then consider this objection and decide whether the trade marks are too similar. Essentially, the responsibility lies with the other party to oppose your application based on relative rounds.
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Objection Options
If the examiner or a third party objects to your trade mark application, you will have two months to rectify any issues and respond to the objection.
If the objection is on absolute grounds, you must prove how you have been using your (unregistered) trade mark. Examples of evidence that may be helpful include:
- stating the types of products or services;
- product packaging;
- advertising and sales materials;
- evidence of turnover and advertising spend; and
- evidence that shows where in the UK the trade mark has been used.
You will need to give your evidence as a written witness statement with the related evidence provided.
If the objection is on relative grounds, you will have two months to file a defence statement. You can also negotiate with the trade mark holder for permission to continue with your trade mark application. In this case, you can request an extension to the deadline to file a defence statement so that you have some time to negotiate with the trade mark holder.
If they refuse to consent to your application, you may be able to withdraw your application for the class or classes in question that they are opposing but continue with your application to register the trade mark in other classes. Otherwise, you would need to withdraw your application entirely and develop a new trade mark that cannot be confused with the earlier trade mark.
Key Takeaways
When you register a trade mark, it could face opposition either through a third-party observing that your trade mark is invalid or by an examiner or third-party opposing on absolute or relative grounds. Each requires a different type of response from you. If on absolute grounds, you will need to provide evidence about how you have been using the trade mark. If on relative grounds, you will need to file a defence statement and potentially negotiate with the trade mark holder.
If you need help defending a trade mark objection or opposition, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.
Frequently asked questions
An objection to a trade mark on absolute grounds means that the opposing party believes your trademark is invalid for trade mark registration. This is often because the opponent believes that your chosen trade mark is not distinctive enough or is too descriptive of your company’s goods or services.
A trade mark objection on relative grounds means that the opponent believes that your proposed trade mark is too similar to their existing registered trade mark. Only the owner of such a trade mark can file an objection on relative grounds.
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