Do-it-yourself trademark registration

DIY trademark registration

It may appear simple enough. You make an application for trademark registration using form TM3, which you can download or complete on-line. You are required to provide an illustration of the mark and indicate whether it is a series of marks. If it is a series of marks, then you are limited to six marks in the series. The goods and services you may apply for are divided into 45 classes. This is all set out under the Nice Classification. You just say what goods or services you want the mark to cover. In-fact only a very small percentage of trademark registration applications are challenged. It can cost you as little as £170 for the whole process without a lawyer. It makes sense to do it yourself, and then get a lawyer if the trademark is ever challenged. That simple, right? Well, not always.

Trademark Registration

Trademark Registration

Of-course it’s pretty straightforward to register a trademark without a solicitor. But you are probably making an intellectual property lawyer who might be suing you later for passing off or trademark infringement very happy. You might also not be registering what you think you are registering.

The importance of understanding how trade mark registration can go wrong is illustrated by the very recent case of Cadbury UK Ltd v Comptroller General of Patents Designs and Trade Marks [2016] EWHC 796 (Ch)] (Cadbury Case). The case only illustrates the point of the importance of correctly deciding whether you apply for registration as a series of trade marks, or as an individual trade mark. There are in-fact several other very important considerations when applying for a trade mark.

The details

The case involved an appeal by Cadbury against a trade mark hearing officer’s refusal of its request to delete a mark from an alleged series of trade marks (Trade Mark Rules 2008 r.28(5)).

The provisions for the series of marks option are set out Under s.41 Trade Marks Act 1994. In a nutshell Cadbury’s mark description as consisting of: “the colour purple as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” was not upheld as a description of two marks or a series of marks. Cadbury had applied to delete the phrase “or being the predominant colour applied to the whole visible surface” on the basis of the series of marks. The implication being that the colour purple was of non-distinctive character and did not substantially affect the identity of the trade mark. As a result, Cadbury argued that the application was in-fact for two marks, and that the phrase should be deleted so that the application would reflect a single validly registered mark.

The hearing officer held: that as the trade mark was not applied for in the first instance as a series of marks the application could not be entertained: the Court of Appeal’s decision in Societe des Produits Nestle SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] 1 All E.R. 1079 was referred to.

Additionally, the words sought to be deleted did not constitute a mark, there was no actual mark to be deleted and what was in-fact sought was an alteration of the initial application which was contrary to s.44 Trade Marks Act 1994 which prohibits alteration during the period of registration or on renewal.

Cadbury argued that in principle the hearing officer had erred by failing to grasp their argument that the application was a series of marks and not an individual mark.

The court dismissed Cadbury’s appeal. It was held by the court that although the description of the mark could be read to mean that the colour purple was not the only colour but that that there were other colours consisting of the mark, this was not to say that there were therefore two alternative marks.

The single common factor that purple was the pre-dominant colour was insufficient to create a separate identity.

The lesson to be learnt from this judgment is that trade mark registration applications are not as straightforward as you might think. Once you have made an application it cannot later be altered. Having a clear long-term strategy is crucial to your brand and branding process. Getting competent specialist advice about registration is advisable even where it might seem that the process is straight-forward enough. By seeing a lawyer for your trademark registration application you might be avoiding losing more money, and ownership of your brand in the future.
To book a face to face consultation for intellectual property legal advice you should contact a specialist intellectual property lawyer (charge rates may apply and may vary).

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