Trademark registration lawyers provide a brief guide to trademark registration.
The seminal source of trade mark registration law in the UK is the:
Trade Mark Act 1994 (“the 1994 Act”).
For more information on UK trademark law refer to the Trade Mark Act 1994 – UK Trade Mark Law.
A trade mark means any sign capable of being represented graphically that is capable of distinguishing goods or services of one undertaking from those of other undertakings. It may include words, designs, letters, numerals or the shape of goods or their packaging. The absolute grounds for refusal of registration of a trade mark include the following:
* not capable of being a trade mark;
* devoid of distinctive character;
* consists exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering service, or other characteristics of goods or services; and
* exclusively customary in established practices of trade.
Registration of a trade mark may also be refused on relative grounds. A trade mark will not be registered if it is identical or similar to an earlier mark and with the underlying goods and services, if because of the similarity there exists a likelihood of confusion including an association with the earlier mark. The owner of a mark has exclusive rights in the mark which are infringed by its use in the UK without consent.
Trademark registration lawyers submit an application for trade mark registration to the registrar. The registrar examines it and decides whether to accept or refuse it. If she does not accept it, she writes to the applicant giving the opportunity to make representations or amend the application. If the application is accepted, the registry publishes it in the trademark journal. Any third party may file an opposition against the registration within the prescribed time, currently three months after the date of publication. If no opposition is filed by a third party the mark is registered and the applicant receives a certificate. The mark is registered for 10 years from the date of registration.
Revocation of Registration
A registration can be revoked if:
* Within 5 years the mark has not been put to genuine use in the UK, and there are no proper reasons for non-use;
* use has been suspended for 5 years, and there are no proper reasons for non-use;
* in consequence of inactivity it has become a common name in the trade for the product; or
* in consequence of the use made of it by the owner or with owners consent in relation to the goods and service for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origins of goods and services.
Seek legal advice.
Generally if a domain name and a trade mark relate to the same type of underlying goods and services, then an action for confusion is sustainable under trade mark law.