Options following an objection to a trade mark examination
Depending on the objection raised in your examination, you have 2 months to respond through a number of options.
Request a hearing
You can request a hearing if you:
- think your application has been dealt with unfairly
- disagree with the decision about your trade mark
Evidence of use of a trade mark
You may decide to file evidence in order to overcome objections raised under Section 3(1) of the Trade Marks Act 1994 (distinctiveness). We may have decided that your trade mark is not distinctive because, for example, it is:
- descriptive of the goods or services
- the name of a place which is usually thought to indicate the geographical area in which particular goods or services are offered
It is impossible for us to say how much evidence you need to provide to overcome these types of objections. As a rule the more descriptive a mark is, the more evidence, in terms of length of use or amount of turnover, is required to show that it is distinctive for the goods or services in question.
Although evidence is often used to overcome objections, it will not help at all if the mark you wish to register is a word or term which has become customary in your line of trade.
How to provide evidence of use
You will need to provide evidence, showing how and where in the UK the mark has been used before the application date, and giving details of turnover in, and amounts spent on promotion of, the goods or services.
You may also send us:
- samples of packaging of the goods
- copies of advertisements for the goods or services and/or
- copies of your own sales brochures.
We refer to all these items as exhibits.
All the information you provide must relate to use of the mark in the UK and before the date of application.
You must present your evidence in the form of a witness statement. You should have the statement typed up, or you may complete it neatly in your own handwriting.
If you still need further advice on preparing your evidence please contact the examiner whose name and phone number are given on the letter with the examination report.
All documents connected to your application are available for public inspection after we have published it in the Trade Marks Journal. If you do not want a piece of information to be open to public inspection, you should give us detailed reasons in writing when you send us the document or within 14 days of sending it. Then, we will consider whether we agree to your request for confidentiality.
Divide your application
Using a form TM12 you can divide your application:
- into two or more separate applications (called divisional applications)
- to allow those classes that are acceptable to go forward for advertisement, and for the objections to the remaining classes to be dealt with separately
Letters of consent from earlier rights holders
If we have identified an earlier filed trade mark which someone else has already registered or applied to register a mark which is:
- the same as or similar to yours in the way it looks or sounds
- for the same or similar goods or services
We may be able to remove the requirement to notify the proprietor of the earlier domestic UK and Madrid UK trade mark by arranging a letter of consent from the owner of the earlier trade mark.
A letter of consent is simply the written agreement of the owner of the earlier mark to allow your mark to be registered.
The letter should at the least:
- be on the company headed paper of the owner of the earlier mark
- state the application number of your mark for which consent is given
- agree to the registration of your mark, not just its use
- be signed by a responsible person in the company
- state that person’s name and position in the company
We will not accept the consent if the letter does not contain this information.
Owners of earlier marks do not have to give you their consent. Contacting them may warn them of the existence of your application and give them the chance to oppose it at a later date.
Extension of time
If you do not reply within the time allowed, your application may be refused. If you need more time than given to answer objections raised in your examination report, you can apply for an extension of time.
- before the response period has expired
Request should be made in writing, providing reasons why the extension of time is required.
- after response period has expired
You can request a retrospective extension of time by sending us a form TM9R. This must be filed within two months of the expired time period.
Legal professionals who specialise in IP are useful in helping you to understand, obtain and defend your IP rights. Details of professionals in your area can be obtained from any of the following organisations:
- Chartered Institute of Trade Mark Attorneys
- Chartered Institute of Patent Attorneys
- Law Society can provide details of suitable solicitors in your area
- Bar Council can provide details of barristers licensed for public access
Other sources of advice include
NESTA,The National Endowment for Science, Technology and the Arts provide a useful handbook on invention and innovation
There are a number of other organisations geared specifically to helping inventors, especially lone inventors, to bring their ideas to market, and to provide advice on finding financial assistance. For example, The Institute of Patentees and Inventors is a non-profit making organisation that specifically helps lone inventors.