Prosecution and Filing UK Michael Tennant Tennant IP

Prosecution and Filing: UK Michael Tennant, Tennant IP CITMA Paralegal Course

UK trade mark applications and who can apply? – Coverage: – England, Scotland, Northern Ireland Wales. – How to apply: – Online, fax, post, delivered by hand to UKIPO. – English or Welsh (online – English only). – Applicants and Representatives: – Address for service: UK applicants or reps – Non-UK applicants or reps: EU/EEA/Channel Islands – potential change due to Brexit. – Name and address of Applicants: – Any natural or legal person, irrespective of nationality of domicile CITMA Paralegal Course

Types of Applicants Eligible to hold property (natural or legal person) - Individuals - Incorporated companies (Limited, PLC). - Partnerships (LLP, Partnerships in agreement and partnerships at will). Ineligible to hold property: - Unincorporated bodies (trading names) - Organisations with trustees - Registered Charities CITMA Paralegal Course

Categories of Marks: Series Marks – A number of trade marks which resemble each other as to their material particulars differ only as a matter of non-distinctive character which would not affect the identity of the trade mark. – Examples of acceptable series marks: – Costs: £ 50. 00 for each series mark after the 2 nd applied for. CITMA Paralegal Course

Categories of Marks: Certification Marks – Not used by a proprietor of the mark but instead by authorised users for the purpose of guaranteeing to the relevant public that the goods or service possess a particular characteristic. – Used to certify the presence of the characteristic and will authorise use to anyone who can demonstrate that the goods and services have the related characteristic/standard. – Examples: CITMA Paralegal Course

Categories of Marks: Collective Marks – Collective marks can be used as a specific type of trade mark that indicates that the goods and services bearing that mark originate from members of an association, rather than from just one trader. – Characteristics can include goods and services originating from a particular region or belong to a particular association. – Examples: CITMA Paralegal Course

UK Application procedures – “Regular” Application – Form TM 3 – Online: £ 170. 00 one class, £ 50. 00 each class thereafter. – Post or fax: £ 200. 00 one class. (Why use post or fax? ) – “Right Start” – checks the application meets rules for registration. – Online: £ 200. 00 one class; split up into £ 100. 00 at filing and £ 100. 00 if examiner provides positive report. – £ 50. 00 for each class thereafter; split up into £ 25. 00 up front and £ 25. 00 on positive report. – Full fee must be paid within 14 days of report. CITMA Paralegal Course

Priority Filing – You can do this if you have applied to register a trade mark outside of the UK within the last six months. – – Details of the previous application must be provided, and prior mark must be: Same mark Same owner Same goods and services (partial priority is available for some of the goods available). – Benefit: Obtain earlier filing date for the later mark. – Not available if mark has been filed elsewhere before the 6 month period CITMA Paralegal Course

UK Comparable marks – For EU applications that are still pending as of 1 st January 2021. – Possible to file a UK application and claim priority from the existing EU application. – Applications details must be identical to EU application, including goods and services. – Must be done within 9 months – 30 th September 2021 deadline. CITMA Paralegal Course

Going through a UK trade mark application form TM 3 CITMA Paralegal Course

Going through a UK trade mark application form TM 3 cont. CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Online: https: //www. gov. uk/how-to-register-a-trade-mark/apply CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Direct filing/ in-house: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Private practice: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Select the representative details : CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – UK trade mark example: Tiny Rebel application request – Owner’s details: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Owner’s details: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Trade mark details: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Trade mark details: stylised words or logos: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Trade mark details: unusual marks: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Trade mark details: Series or single trade mark: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Goods and services: – 3 options to provide list: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Disclaimer: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Priority claim: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Type of trade mark: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Type of examination: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Type of examination: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Declaration: CITMA Paralegal Course

Going through a UK trade mark application form TM 3 – Certificate of filing: CITMA Paralegal Course

UK trade mark application: Procedure – Examination stage: formalities and substantive examination – Any queries raised in an examination report – If mark is accepted – published in the trade marks journal – Publication stage: Two month opposition period from publication date – Third parties can extend the opposition period by a month. – If no opposition, application will proceed to registration. CITMA Paralegal Course

UK trade mark application: Examination Stage – Examine the application for a formalities check: – – A request for the registration of the trade mark Name and address of the applicant Goods and services A representation of the trade mark – Substantive Examination – Check the mark on absolute grounds – Specification of goods and services are valid – Earlier UK marks that are considered similar will be cited – Report issued post-examination CITMA Paralegal Course

UK trade mark application: Examination Stage – Examiner query: Essential requirements not met – Issue letter to applicant detailing the information that is missing. – Allow one month for the applicant to provide the missing information. – Non-extendable. – If information is not supplied before the deadline: – The application is deemed never to have been made; – Treated as withdrawn. – If requirements are met before the deadline: – Application continues normally, but the filing date will be the date the last document containing the essential requirements are filed. CITMA Paralegal Course

UK trade mark application: Examination Stage – Examiner query: goods/services not in correct class – Will issue reasons why and give a recommendation on correct classification. – Add a class to the application – Form TM 3 A – Cost: £ 50. 00 if new class is to be added – Divide an application – Form TM 12 – Cost: £ 100. 00 and new application fees CITMA Paralegal Course

UK trade mark application: Examination Stage – Hearing procedure. – Write, e-mail or telephone examiner to discuss the examination report. – Two-month period to respond to a query. – If more time is required to respond to an Examiner, a two-month extension can be requested in writing – If there is a disagreement with the findings post-correspondence, you have the right to request a hearing with a senior officer to discuss matter further. – If senior officer maintains the queries, an appeal to the Appointed Person can be made within 28 days of a decision. – Form TM 55 and no cost. – Alternatively, appeals can be made through the High Court, but expensive. CITMA Paralegal Course

UK trade mark application: Important Deadlines recap – Filing deficiencies: one month, no extension. – Respond to examination report – absolute grounds: two months, but extensions possible. – Respond to examination report – earlier marks: two months, no extension – Deadline to appeal – 28 days from a decision, extension possible but compelling reasons needed. – Deadline to oppose third party’s application – two months, one month extension possible. CITMA Paralegal Course

UK trade mark application: Registration – No deficiencies; and – No examiner queries; and – No third party opposition during the publication stage; = Registration! – – Duration: 10 years from application/priority date. Renewable every 10 years, indefinitely. Renewal fees are payable. Renewal fees: £ 200. 00 for 1 st class, £ 50. 00 for each class thereafter. Six month grace period after mark expiry to restore the registration - £ 50. 00 additional fee for late renewal. – Restoration possible between 6 -12 months after expiry date, but statement needed to explain why the mark was not renewed in time. – Use provisions 5 years after registration date. CITMA Paralegal Course

UK trade mark application: Marking requirements ® ™ Registered Trade Mark Symbol – only when the mark is registered. Trade Mark Symbol – indicate the mark is being used as a trade mark. CITMA Paralegal Course

UK trade mark application: Scam notices CITMA Paralegal Course

Thank you for listening. Michael Tennant, Tennant IP mike@tennantip. co. uk CITMA Paralegal Course