Written by Alexander Welham | July 26, 2017
Registering your trade mark is an important step to take in protecting the brand and reputation of your business. To avoid setbacks in the application process, it is important to understand the requirements for a successful trade mark application before going ahead.
This article sets out the key requirements for a successful UK trade mark application including requirements relating to:
Finally, we will outline the steps to registering your mark if it meets all these requirements.
Distinctiveness is a fundamental requirement for a trade mark in the UK. A trade mark should be capable of distinguishing the goods or services of one company from those of others. In other words, it should possess unique characteristics that set it apart from common or generic terms related to the goods or services it represents.
Distinctiveness can be classified into two types: inherent distinctiveness and acquired distinctiveness. Inherent distinctiveness refers to trade marks that are inherently unique and distinctive on their own. These include invented words (e.g. Kodak), arbitrary or fanciful terms (e.g. Apple for computers), and coined phrases (e.g. Xerox). Such marks have no direct connection to the goods or services they represent, making them strong and protectable.
On the other hand, acquired distinctiveness, also known as secondary meaning or acquired distinctiveness through use, applies to marks that were not initially distinctive but have gained recognition and association with specific goods or services through extensive use and promotion. For example, “Google” was once a coined term with no inherent meaning, but it acquired distinctiveness through extensive use as a search engine.
If your mark is to be considered to have the capacity to distinguish, you should avoid the following:
A trade mark must be capable of being represented graphically in the trade mark application. This requirement ensures that the mark can be accurately and clearly depicted in the trade mark register and be used as a visual representation of the mark.
Graphical representation allows the trade mark to be represented in various formats, including word marks (such as stylized letters or a specific font), logos (such as distinctive designs or symbols), colours (such as specific colour combinations or patterns), shapes (such as unique product shapes or packaging), or a combination of these elements.
The purpose of graphical representation is to provide a clear and consistent representation of the mark for examination and registration purposes. It helps in identifying and distinguishing the mark from other trade marks.
A trade mark must not be deceptive or misleading to consumers regarding the nature, quality, or geographical origin of the goods or services it represents. This requirement ensures that consumers are not misled or confused about the characteristics or source of the products or services associated with the mark.
For example, if a company produces non-dairy milk alternatives, it cannot use a trade mark that includes the term “milk” in a way that misleads consumers into thinking the product contains dairy. Similarly, a mark that falsely suggests a particular quality, such as “Premium Gold” for low-quality products, would be considered deceptive.
A trade mark should not be against public policy or morality. This requirement prevents the registration of marks that promote illegal activities, are offensive, or go against established principles or values.
Trade marks that may be refused registration on these grounds include those that incite hatred, discrimination, violence, or illegal behaviour. Additionally, marks that contain obscene or offensive language, religious symbols used inappropriately, or controversial political statements are generally not registrable.
The determination of what is contrary to public policy or morality may vary based on societal norms and can be subject to interpretation. The UK Intellectual Property Office (UKIPO) considers various factors, such as the potential impact on public interest and values, when assessing the acceptability of a trade mark.
A trade mark must not be identical or confusingly similar to existing registered trade marks or prior pending applications. This requirement prevents confusion among consumers and protects the rights of existing trade mark owners.
When assessing similarity, the UKIPO considers the overall impression created by the mark, including its visual, phonetic, and conceptual elements. If the proposed mark is identical or highly similar to an existing mark and covers similar or related goods or services, it is likely to be rejected.
For example, if a company tries to register a mark “Coca-Cola” for a beverage, it would be rejected due to the high similarity to the existing registered mark. Similarly, if a mark is visually or phonetically similar to an existing mark, but covers unrelated goods or services, it may still be refused registration to avoid potential confusion.
A trade mark should not merely describe the goods or services it represents, as descriptive or generic terms are not considered inherently distinctive. The purpose of trade marks is to identify the origin of goods or services, and generic or descriptive terms cannot fulfil this function effectively.
Descriptive terms directly describe the characteristics, quality, or ingredients of the goods or services. For example, “Delicious Breads” would be considered descriptive for a bakery. Generic terms, on the other hand, are common names or terms that refer to a class of goods or services. For instance, “Bakery” would be considered generic for a bakery.
However, if a descriptive or generic term acquires distinctiveness through extensive use and becomes associated with specific goods or services, it may still be registrable. This is known as acquired distinctiveness or secondary meaning. For example, “Apple” as a trade mark for computers and electronic devices acquired distinctiveness through extensive use and is now a strong and protectable mark.
Certain signs are prohibited from being registered as trade marks in the UK. These include signs that are contrary to law, public policy, or accepted principles of morality. Prohibited signs include:
Be aware that there is no automatic right to use your name/surname or register it as a trade mark. If another company or individual has already registered this mark, they will be entitled to hold that right.
This issue played out in the recent Lewis Hamilton case where an attempt to register LEWIS HAMILTON as a trade mark in a variety of products, including wristwatches was disputed by Swedish manufacturer, Hamilton International AG. Despite attempts to invalidate their existing HAMILTON mark, the LEWIS HAMILTON mark registration was refused.
Before beginning your application, it is important to carry out a clearance check to make sure there are no existing registered marks which are identical or confusingly similar and could lead to your application being challenged. An easy way to do this is by searching the UK IPO trade mark registry. A search should be carried out for the mark you intend to register, in relation to the same classes of goods and/or services.
The UK IPO will not reject an application on the basis of similar marks being on the register, but they will provide you with a list of such similar marks following examination. They may notify the owners of such similar marks of the publication of your application. Once published, your mark will be subject to a two-month opposition period whereby such owners can choose to oppose your mark.
If you decide to go ahead with the brand name and logo after the clearance check, the next step is to begin your registration. To register a trade mark in the UK, an application must be filed with the UK Intellectual Property Office (UKIPO). The application itself contains a number of requirements, including:
Properly filing the application with accurate and detailed information, including a clear representation of the mark and appropriate classification of goods and services, is crucial for successful registration. For more information on the registration process, see our post: Trade Mark Registrations: Everything You Need To Know
It’s important to note that while meeting the requirements outlined in this post increases the likelihood of a successful trade mark registration, the UKIPO conducts a thorough examination process to determine if the mark fulfils all necessary criteria. Consulting with a trade mark specialist can provide valuable guidance and assistance throughout the process to ensure a strong and protectable registration.
In conclusion, the key requirements for a trade mark in the UK include distinctiveness, graphical representation, non-deceptiveness, conformity with public policy and morality, non-identical or confusing similarity to existing marks, non-descriptiveness or genericness, absence of prohibited signs, and proper filing and classification. Understanding these requirements and seeking professional advice can help individuals and businesses secure their trade mark rights effectively.
For help with the application process, you can contact our trade mark specialists to organise a free consultation – fill out the contact form below to get started.
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