Two months ago, we attempted to demystify the language surrounding patents by exploring some of the common words and phrases that arise during a patent application. In this article, we will be trying to do the same for another important type of intellectual property; trademarks.
As part of filing a trademark application, it is necessary to state what types of goods and services you want to register the trademark for. To simplify this process, everything that you can use the trademark for has been allocated into one of 34 classes of goods and 11 classes of services. These classes range from telecommunications to alcoholic beverages and everything in between. This internationally agreed classification system was signed in Nice, France, hence the name Nice Classification.
European Union Trademark and the ‘Madrid’ Trade Mark
These are two types of international trademark protection.
A European Union Trade Mark (EUTM) covers all the member states of the EU (currently 28), and can be applied for either directly or after registering a trademark in your home territory (i.e. the UK).
An ‘International Registration’ is often referred to as a ‘Madrid’ trademark, and has to have a ‘home base i.e. a UK TM or an EUTM. It can be used to extend protection to the countries that have signed up to the Madrid Protocol (there are currently 97 members) and there is the option to select some or all of these according to marketing plans. Each country opted for will incur a filing fee that will be added to a base cost.
To determine whether a submitted trademark application fulfils the requirements to be registered, it must be examined. Examination in the UK is done by the UK IPO and applications are examined on both relative and absolute grounds. When an Examiner checks whether an application meets the ‘relative grounds’ test they will be looking at whether it is similar to earlier UK trade marks which cover similar goods and services. If this is the case, then consumers could be confused if the trade mark were registered and so the Examiner will raise a citation of the earlier marks, and put those owners on notice of the new application.
The ‘absolute grounds’ test primarily checks whether the application is distinctive or descriptive of the goods and services being applied for. If the application is descriptive then it means that the trademark comprises elements that are doing no more than describing the goods or services that are being protected.
The Examiner would object to this type of application, as all providers should be able to describe their goods or services in that way. If the trademark is distinctive then it means that, in the context in which it will be used, it has no prior meaning or significance. A highly distinctive trademark will be easier to register than one which is not.
Our experienced Trade Mark team at Albright IP are well-placed to offer specific advice in relation to all aspects of trademark protection, ownership and enforcement.