Trade Marks the basics Part 1
Written by Tristan Trezise on 05 June 2018« Return to Reading Room
In order obtain a filing date for a trade mark application; every application must meet all the requirements stated in the Trade Marks Act 1994 ( the 'Act'). In order to obtain a filing date some requirements will need to be met (essential requirements). Other requirements are non essential- however they will need to be met before the application can be sent through to examination.
Providing all requirements have been met, the date of filing would be the date that the UKIPO received the application. However if all the filing requirements have not been met then the filing date will be the date in which the UKIPO receives the information.
You are able to file multiple marks creating a series of marks. A series of marks must be similar in material particulars and be different only in the sense of non-distinctive character which would not affect the identity of the trade mark. An application can include up to six marks.
Essential requirements for filing date – Section 32(2) of the Act
An application will be given a filing date when all the essential filing requirements are met. Such requirements are as follows (Section 32(2)):
1. A request for registration of a trade mark.
2. A request for registration is most commonly taken to be the provision of form TM3, which is itself a request. Alternatively it is possible to send a letter to the UKIPO that clearly states a request for registration of a trade mark is requested. However, we would not recommend this approach.
3. The proprietor (the applicant of the mark once it is registered) must supply their name and address. The name given must be the applicant’s legal name and any trading name or style is not acceptable. A statement of the goods or services for which it is sought to register the trade mark.
4.All applications must include a list/statement of all the goods and services (the specification) that will be used under the trade mark. Providing a class number is not essential in obtaining a filing date, but will need to be fulfilled before the application could continue. The specification will not be scrutinized at this stage of the process as a detailed examination will be completed by a trade mark examiner, however if the specification is unclear, the applicant will be contacted to resolve the situation.
5. A mark (or marks if multiple) will need a representation in the format that registration is sought to be provided. I.e. if you were registering a logo, an image of said logo would be required.
6. For every trade mark registered it has to be either already in use (either by the applicant or someone else using it with the applicants consent) or bona fide (good faith) which means intention to use it in accordance with the goods and services. The applicant or their representative must sign the declaration on the application form stating such.
7. A basic application fee must be paid by the applicant for the first, or only, class in the application. If further classes are called for, each one is subject to a fee. Payment is not required to be sent along with application form as this is a non essential requirement.
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