2.1 Inconsistencies in the application form
We check to make sure that information on the application form is consistent and logical.
Common errors include:
- number of marks in the series differs from the number of marks provided;
- discrepancies between the words in the representation of the mark and the words entered on the form;
- inaccurate priority claim, for example, based on earlier UK filings;
- a statement that the mark is a certification or collective mark but does not appear to be so;
- obvious errors in the mark or specification; and
- mark type, if stated does not match the mark
We try to resolve most inconsistencies by a phone call, primarily as a matter of customer care, to the applicant or their representative. However, it is the responsibility of applicant to ensure that they have completed their application form correctly.
2.2 Mark type
A mark type must be allocated to every application. This establishes what the applicant is seeking to register and it is also an administrative action which aids in the search for similar marks. If the mark type is unclear from what has been entered by the applicant on the application form, we will resolve this before we record the information on the application record. We may refuse requests by applicants to correct this information at a later stage
If the application is for a series of marks, the mark type should be the one which describes the most complex mark in the series.
The mark types are: Acceptable file format
- word mark Text
- figurative mark JPEG, TIFF, GIF, PNG
- 3D mark JPEG, TIFF, GIF, PNG, OBJ, STL and X3D
- pattern mark JPEG, TIFF, GIF, PNG
- colour mark JPEG, TIFF, GIF, PNG
- sound mark MP3, JPEG, TIFF, GIF, PNG (notation)
- motion mark MP4, JPEG, TIFF, GIF, PNG
- multimedia mark MP4
- hologram mark JPEG, TIFF, GIF, PNG, MP4
2.3 Representations of the mark
The applicant must provide a representation of the mark in order to secure a filing date (Section 32 (2)(d) refers). Marks should be presented in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective manner so as to enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor. If this is not the case, we will raise this as a deficiency with the applicant.
If the representation filed is not acceptable we will write to the applicant, allowing a period of one month for an acceptable representation to be filed. If an acceptable representation is filed within the one-month period, the filing date will be the date when we receive the satisfactory representation. If the deficient mark is one of a series of marks, an instruction to delete the offending mark within the one-month period will be sent to the applicant. This will allow the application to keep the original filing date.
If the offending mark is not deleted, we will deal with the application as described in paragraph 1.3 above.
2.4 Guidelines for Mark Types:
2.4.1 Word marks
A word mark is a typewritten mark consisting of standard typographic letters or numerals. The sign must be submitted in standard lay out and font without any graphic feature, colour or stylisation. If the sign does contain any of these features then it should be classified as ‘figurative’
Examples of acceptable word marks for formalities purposes only
To me 2 u
2.4.2 Figurative marks
A figurative mark can consist exclusively of a figurative image, or a combination of verbal and figurative elements. A mark is also classed as figurative if the verbal elements are in colour or are presented in non-standard characters. If a mark is shown in colour, the mark will be registered in these colours. Other than in the types of trade mark described in paragraph 2.4.5, there is usually no need to provide a written description of the colours that appear in a trade mark consisting of a picture or a device (but see paragraph 2.3 above for details on the need for marks to be intelligible). If written colour identification codes are included in the application they will be recorded as part of the representation of the trade mark.
If a mark is shown in black and white, we will not consider these colours as a feature of the mark unless the applicant states otherwise in which case the trade mark will subsequently be published and registered with an indication that the colours black and white are a feature of the trade mark.
2.4.3 3D Marks
A 3D mark is one consisting of, or extending to, a three-dimensional shape, this includes representations of containers, packaging, the product itself or its appearance. The shape can be represented by a graphic representation or a photographic reproduction or a computer- generated image in 3D format in OBJ, STL or X3D, with a maximum file size of 20 MB.
Please note where an application for a 3D mark is intended to be used as the basis for an international application, computer-generated images, animated designs, etc. are currently not considered acceptable mark representations under the Madrid system, because the Madrid system only allows for marks that are graphically represented.
If the representation is not a computer-generated image, it may be difficult to represent the shape by a single front view which may not show whether it has a round profile or is four sided. Unless the mark can be represented by a single perspective view, multiple views of the shape are necessary (no more than six as a general rule). The more complex the shape, the more likely it is that multiple views will be necessary. While different perspectives may be filed, a single view of the shape is sufficient where the shape to be protected can be ascertained from that single view.
If the elements for which protection is sought can be made out it will not usually be necessary to confirm that the shape would appear the same from other views. The same applies to three-dimensional marks incorporating labels. It is assumed that only those features visible from the representation form part of the subject matter; whether a container has another label on the back is irrelevant.
Applicants applying for registration of a 3D shape mark must indicate this in the application. If no mark type is indicated and only one view has been submitted, from which it cannot be inferred that the sign consists of or extends to a 3D shape, the Office will treat the representation as a figurative trade mark.
2.4.4 Pattern marks
A pattern mark is a trade mark which consists exclusively of a set of regularly repeated elements.
The marks must be represented by submitting a reproduction showing the mark and a description detailing the nature of the regularly repeated elements. The description must reflect the representation and not extend its scope. Should colours form an integral part of the mark they can be indicated within the description.
2.4.5 Colour Marks
A colour mark is a mark which consists exclusively of a colour in the abstract or a combination of colours. What is protected is the shade of colour(s), or in the case of more than one colour, ‘a systematic arrangement associating the colours in a predetermined and uniform way’- see Heidelberger Bauchemie GmbH, ECJ case C-49/02. So, for example, where a mark consists of colours used in various applications, but always as stripes, the representation of the mark should indicate that the colours (as properly defined) are used as stripes and must indicate the order in which the colours appear in the stripes, for example, blue, then red, then green.
Marks consisting exclusively of a colour or colours must be represented by giving a written description of the colour(s), for example, dark blue and light green, in the box on the form and by stating what those colours are, using an internationally recognized colour identification system, such as Pantone®, Focoltone®, Munsell Color® or Toyo®.
Where marks consist of a colour or colours applied to the goods or their packaging, or to other commercial items, an appropriate description should be included as part of the representation of the mark. Where colour is applied to the whole, or substantially the whole, surface of the item in question, a statement to this effect will suffice. In other cases a picture or diagram may be necessary to identify the area(s) of the item to which the colour or colours are applied.
If the representation contains other elements, such as words, it is not a colour mark per se but a figurative mark.
2.4.6 Sound Marks
A sound mark is as a trade mark consisting exclusively of a sound or sounds. Sounds marks can be of musical scores or of other sounds such as people speaking or singing or the noise of animals.
A sound mark must be represented by submitting an audio file reproducing the sound, with the exception of tunes and melodies which can either be submitted as an audio file or an accurate representation of the tunes or melodies in musical notation. The audio file must be in MP3 format and its size cannot exceed two megabytes. Office requirements do not allow the sound to stream or loop. An audio file may be submitted only for by e-filings. The Office will not accept a paper filed application with your mark accompanying it on a physical data carrier, like a USB stick.
Musical notations may be submitted in one single JPEG file or on one single A4 sheet. ‘Accurate musical notation’ means that the representation must include all the elements necessary for interpreting the melody, that is to saysuch as, pitch, tempo, lyrics (if any), etc. Applications for sound marks in musical notation must clearly state that they are sound marks, otherwise the application will be examined as if it were a figurative mark.
Marks which combine sounds with, for example, movement would not qualify as sound marks per se and should be applied for as a multimedia mark.
Please note where the application for a sound mark is intended to be used as the basis for an international application the UK application must consist of musical notation, as the Madrid system only allows for marks that are graphically represented.
2.4.7 Motion marks
A motion mark is as a trade mark consisting of, or extending to, a movement or a change in the position of the elements of the mark. A motion mark must be represented by submitting either a video file or a series of still sequential images showing the movement or change of position. The video file must be in MP4 format and may not exceed 8 000 Kbps (kilobytes per second) and 20 MB.
In respect of applications filed with a series of still images, the number of images is practically unlimited as long as they all fit in one single JPEG file or on one single A4 sheet. A mark description must accompany the still images and must include:
- what the image depicts, that is, what the change in appearance is;
- how many images are involved in the complete sequence of movement;
- what the sequential order is of the images; and
- that there is a single sequence of movement (not variable)
Such a description must accord with the representation and not extend its scope. Colours, to the extent that they form an integral part of the mark, may be indicated therein.
There is no requirement to submit a mark description if the mark is submitted as a video file.
Trade marks combining movement with sounds do not qualify as motion marks and should be applied for as a multimedia mark. A video file may be submitted only for by e-filings. The Office will not accept a paper filed application with your mark accompanying it on a physical data carrier, like a USB stick.
Please note where the application for a motion mark is intended to be used as the basis for an international application that the UK application must consist of a series of still images with a mark description as the Madrid system only allows for marks that are graphically represented.
2.4.8 Hologram marks
A hologram mark is a trade mark which consists of elements with holographic characteristics. A hologram mark must be represented by submitting either a video file or a graphic or photographic reproduction containing the views necessary for sufficiently identifying the holographic effect in its entirety.
The video file must be in MP4 format and may not exceed 8 000 Kbps (kilobytes per second) and 20 MB. A video file may be submitted only for e-filings. The Office will not accept a paper filed application with your mark accompanying it on a physical data carrier, like a USB stick. The number of views is unlimited as long as they all fit in one single JPEG file or on one single A4 sheet.
Please note where the application for a hologram mark is intended to be used as the basis for an international application, the UK application must consist of graphical or photographic images as the Madrid system only allows for marks that are graphically represented.
A multimedia mark is defined as a trade mark consisting of, or extending to, the combination of image and sound. The term ‘extending to’ means that the mark may also include other elements including but not limited to words, figurative elements, and labels in addition to the image and sound.
A multimedia mark can only be represented by submitting an audio-visual file containing both the image and the sound and can therefore only be filed via e-filing. The Office will not accept a paper filed application with your mark accompanying it on a physical data carrier, like a USB stick. The audio-visual file must be in MP4 format and may not exceed 8 000 Kbps (kilobytes per second) and 20 MB.
Please note that an application for a multimedia mark cannot be used as the basis for an international application, as the Madrid system only allows for marks that are graphically represented.
An application can be filed as a series of marks.
A series of marks means a number of trade marks which resemble each other as to their material particulars and differ only as a matter of non-distinctive character which would not affect the identity of the trade mark. An application can include a maximum of six marks. The first and second marks are included in the application fee, any additional marks would attract a fee.
For a series to be acceptable, the marks should:
- look the same
- sound the same
- mean the same
Any differences must be minor.