Navigating the trade mark examination process in the United Kingdom is an essential step for Australian businesses looking to protect their brand internationally.
Trade mark examination in the UK involves a thorough review by the Intellectual Property Office (IPO) to ensure compliance with legal standards.
While many UK trade mark applications avoid having any issues during the application phase, it's important to be aware of the process and potential issues that can arise along the way.
Key stages for trade mark examination in the United Kingdom
Initial Review: Once your application is submitted, the UK Intellectual Property Office will conduct an examination on absolute grounds. This involves assessing whether the trade mark meets all legal requirements.
Publication: If no issues are found, the trade mark is published in the Trade Marks Journal. This publication step invites others to oppose the registration if they have valid grounds.
Registration: Assuming no opposition or the resolution of any opposition in your favour, the trade mark progresses to registration.
While the Office will also identify prior similar marks, any identified marks won't cause a trade mark refusal to be issued. If your application is accepted, the owners of any prior similar marks will be notified. Conducting a trade mark search in the UK can be a good idea so that you're aware of possible issues before you get to the examination stage.
Common reasons for trade mark refusal United Kingdom
Understanding the common reasons for trade mark refusal in the UK helps in preemptive planning. A refusal might be issued if your trade mark:
lacks distinctive character.
is primarily descriptive.
contains customary terms or established trade practices.
is deceptive marks regarding the nature, quality, or geographical origin of your goods or services.
How to handle trade mark refusal United Kingdom
Facing a trade mark refusal doesn’t mean the end of the road. If the UK IPO issues a refusal, they will provide reasons.
You can overcome trade mark refusal with strategic modifications, presenting compelling arguments, or by providing evidence of distinctiveness.
Overcoming an objection can have an impact on the fees and total cost of your UK trade mark application - generally you will need UK trade mark lawyers to help you overcome any issues.
Contact Markster to explore options for overcoming UK trade mark refusals effectively.
Why timing matters for UK trade mark refusals
Timing can be critical when responding to trade mark issues. Delays in responding to refusals can impact your ability to effectively respond to them and ultimately overcome the issue.
Extension of time limits may be possible with justifiable reasons. Procedures for extension include submitting necessary forms and fees.
Other countries of interest
Beyond the United Kingdom, consider expanding your trade mark protection to these regions to maximise your global reach:
Take your next step with Markster
The process of dealing with trade mark refusals and rejections can be complicated, but you don’t have to face it alone.
At Markster, we can help you navigate the complexities of international trade mark registration, ensuring your brand gains the protection it deserves.
For assistance or to discuss your international trade mark strategy, contact Markster and take the first step towards securing your brand globally.
The information provided in this article is general in nature and should not be relied upon as legal advice. For specific advice, please contact Markster.