FAQs Categories: UK

Brexit and cloning of EU registrations

Is your trademark going to be valid in the UK if you filed it in the EU?

The UK left the European Union on 1 February 2020. Any existing registered EU trademarks will continue to be valid in the remaining member states of the EU and will automatically be cloned into a comparable UK registered trademark, without any additional costs, on 1 January 2021.

All priority and seniority claims will be inherited in the UK registrations. UKIPO will not issue registration certificates and will not contact trademark owners or their representatives. The cloned UK registration number will be composed of the Prefix UK009 and the last 8 digits of the existing EU registration number.  No action is required on your part.

If you already have a registered UK trademark and registered EU trademark, you will end up with 2 UK registrations, one of which later simply does not have to be renewed.

If your pending EU trademark has not registered on December 31, 2020, it will not be cloned in the UK and won’t be valid in the UK later.

What is a power of attorney? When do I need to sign a power of attorney?

A Power of Attorney, POA in short, is a legal document that authorizes an entity to represent or act for another person, usually, in the managing of the person’s property, business or private affairs. The former is called the Attorney or Agent whereas the latter is commonly known as the Principal.

In Trademarks, a Power of Attorney is required to appoint an Attorney on your file so he/she can represent you before the respective Trademarks Office.

Having said that, in many countries including the US, UK, Europe, Canada and Australia you don’t need to sign a POA for a standard trademark application (power of attorney is already implied when you entrusted your attorney/agent trademark registration). However, there are countries, such as, China, Mexico, Russia and India where a POA signed by the owner or any other person legally bound to the owner is required in order to file a trademark application.

In the US, when an applicant wishes to replace its existing attorney and appoint a new attorney, it needs to sign a Power of Attorney authorizing the new attorney to prosecute the trademark application.

When should I not file my trademark in the UK?

Sometimes filing your trademark in the UK is not recommended.

  1. You should not file your trademark in the UK when a trademark search has not been done.
  2. If your trademark is generic or descriptive and lacks unique elements, please save your money and do not file your trademark in the UK.
  3. When you want to achieve protection in another country. Remember that trademarks are jurisdictional, so a trademark in the UK will be useless in the US.
  4. When a trademark search uncovered a very similar trademark for similar goods. In this case, the risk of opposition is higher, so you should decide if you want to file keeping in mind the increased risk of trademark opposition.
  5. When you have a done a trademark search and found an identical or similar trademark. In this case, please consider changing the trademark name to avoid a trademark opposition.

How does the process work with Trademark Angel? What happens after I buy a trademark package?

There are 3 ways how you can proceed:

  1. Book an initial phone call with us. Here is the link for the trademark package
  2. Ask for a free preliminary trademark search to get an idea of whether your trademark can be registered. This is a basic search but if your mark is unregistrable, we’ll be able to tell you. Order your search here.
  3. Buy a trademark package right away to start the trademark registration process without further delay. You can see our pricing on this page and can buy directly from our website.

What happens after I buy a trademark package?

  1. We’ll confirm your order.
  2. We’ll check if your trademark is registrable. A comprehensive trademark search will be done at this stage. We will provide detailed recommendations on how to increase the chances of achieving registration if your trademark turns out to be problematic.
  3. If your trademark is registrable, we’ll move forward with the trademark registration process.
  4. If your trademark has low chances of achieving registration, you will have 3 options:
  • Ask for a full refund;
  • Come up with a different name. We will provide detailed instructions for this. Further trademark searches are included in the package and there is no extra cost. We’ll keep searching until we find a registrable trademark;
  • Proceed with the filing anyway.

The choice is yours. Make the first step now.

What is the fastest way to obtain a trademark for Brand Registry purposes?

The fastest guaranteed way to get a trademark registered for Brand Registry is to file a word mark (without logo) or a logo in Germany using the accelerated examination option. It takes up to 4 weeks with the accelerated examination option and about 2-3 months with regular examination.

We always file electronically so this ensures the fastest processing of the trademark application.

Also, in our experience, trademarks filed in a single class results in the quickest registration.

Filing in the UK or the EU will also ensure a quick entry into Brand Registry (about 3.5-4 months).

What information do I need to provide in order to file a trademark application in the EU or the UK?

  • The full legal name of the applicant (either your company or your personal name)
  • The full address of the applicant.
  • The trademark name. If you are filing for a logo, we need to see the logo. If you are using a few color variations, please send them all as filing in black and white in the EU and the UK, will not protect your color versions. Read more about color claim here.
  • The products which you sell or plan to sell under your trademark (provide a list).
  • The services which you offer or plan to offer under your trademark (provide a list).

Once you provide us with a list of products and services you want to include in your application, we will properly classify them to make sure we qualify for the fast trademark examination (Fast-track in the EU, for example).

Can I register a geographically descriptive trademark in the UK?

If a trademark is not a generally known geographic location to the average UK consumer, then, a trademark containing a geographic location should be registrable.

Trademarks containing geographical place names are likely to receive objections when they designate a geographical name which, in the minds of the target consumers, is already associated with the products or services offered.

Also, an objection is likely to be raised even if there is no current association between the geographical name and the goods/services, but the name is likely to be used in the future by a company as an indication of the geographical origin of the goods/services concerned.

A trademark that will most likely be refused by the USPTO as being geographically descriptive and therefore not registrable on the Principal Register (and not eligible for Amazon Brand Registry) will most likely go through in the UK.

 

Classification of Goods and Services in a Trademark Application (class headings)

Trademark Classes

Every trademark application must list the specific goods and services that the trademark will cover.

Products belong to trademark classes 1 to 34. Services belong to classes 35 to 45.

Products are tangible, you can touch them. Services are intangible.

Below is a rough classification (class headings) just to give you an idea of general categories  (please note that the below list cannot be used for trademark filing)

Products

Class 1: Chemicals (including those used in agriculture, industry and science)

Class 2: Paints, coatings, varnishes, colorants for food.

Class 3: Cosmetics, creams and serums, cleaning products including soap and shampoo, bleaching and abrasives, non-medicated toiletry preparations, false eyelashes, essential oil, perfume

Class 4: Fuels, industrial oils, greases, lubricants, candles

Class 5: Pharmaceutical and veterinary products, food supplements and vitamins, baby food, disinfectants, fungicides, herbicides, plasters, dental wax

Class 6: Metals, metal castings, metal hardware, metal containers, locks, safes

Class 7: Machines and machine tools and their parts, motors and engines (except for land vehicles)

Class 8: Hand-operated tools and implements, razors, cutlery

Class 9: Computers, computer hardware, computer cables, cell phones and cell phone cases, data carriers, computer software, downloable publications including e-books, videos and podcasts

Class 10: Medical and dental instruments and apparatus, massage apparatus, sex toys

Class 11: Products for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes including lamps and kettles

Class 12: Land, air and nautical vehicles, motors and engines for land vehicles

Class 13: Firearms, ammunition, explosives, fireworks, holsters

Class 14: Precious metals, watches, jewellery

Class 15: Musical instruments

Class 16: Paper, items made of paper, stationery products, artists’ products, printed products including photographs, stickers, notebooks, party ornaments of paper

Class 17: Rubber, asbestos and plastic Items, pipes and tubes

Class 18: Leather and leather goods, bags, wallets, animal apparel, collars and leashes for animals

Class 19: Building and construction materials (non-metallic), non-metal monuments

Class 20: Furniture, mirrors, picture frames, storage containers not of metal, party ornaments of plastic

Class 21: Kitchen utensils, crockery, containers, cleaning implements, toothbrushes

Class 22: Ropes and strings, tents, nets, awnings, sacks, padding, canvas material and raw fibrous textile material

Class 23: Yarns, threads

Class 24: Textiles, fabrics, blankets, covers, towels

Class 25: Clothing, footwear and headgear

Class 26: Sewing products, lace and embroidery, artificial flowers, hair decorations like ribbons, false hair

Class 27: Carpets, linoleum, wall and floor coverings, wall hangings

Class 28: Sports equipment, video game apparatus, games, toys, Christmas decorations

Class 29: Dairy products, meat and fish, processed and preserved foods, including dried, frozen and cooked fruits and vegetables, milk, eggs, edible oils and fats, jamps, jellies

Class 30: Staple foods, spices, bakery products, confectioneries, tea, coffee

Class 31: Fresh fruit and vegetables, live animals, animal food, seeds, fresh herbs, plants and flowers

Class 32: Non-alcoholic beverages, preparations for making beverages, fruit juices, beer

Class 33: Alcoholic beverages, except beer

Class 34: Tobacco products and smokers’ articles, matches, electronic cigarettes

Services

Class 35: Retail services including online retail store, advertising, business consulting, business management

Class 36: Insurance and financial services, real estate services

Class 37: Building construction, repair and maintenance services, installation services

Class 38: Telecommunication services, broadcasting services including video broadcasting

Class 39: Transport, logistics and storage, travel services

Class 40: Treatment of materials, custom assembly, recycling and waste management

Class 41: Education services, including arranging and conducting educational classes and seminars, entertainment services, book publishing, organizing exhibitions and conferences

Class 42: Saas and Paas services (Software as a service and platform as a service), IT services, software development, graphic design services, website development, scientific and technological services

Class 43: Restaurants, cafes, hotels, catering services

Class 44: Medical services, hygienic and beauty care services, dental services, veterinary services

Class 45: Personal and social services, legal services, security services

For a more in-depth discussion read this article: Taking Advantage of the Trademark Classification

 

Which trademark should I File? Word Mark or Logo?

When deciding whether to file for either a word mark or logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.

On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters.

For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.

The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters.

However, filing for a logo can be more advantageous in some situations.

For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.

Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:

trademark-registration-logo

 

Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).

Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk chinese-trademark–  for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.

In another case, a client wanted to register the mark ESTEEM APPAREL, either the word mark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo register-a-trademark-in-australiainstead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.

Since the client protected the logo register-a-trademark-in-australia, he now cannot use Esteem Apparel side by side, without the image, in a different font or in ALL CAPITAL letters: ESTEEM APPAREL. On the other hand, if word mark had been filed – ESTEEM APPAREL, he could have used it in ALL CAPITAL LETTERS, in any font, side by side or one word above the other. Logo makes the trademark inflexible and you should not be making even small changes in your use.

In addition, in some cases, one has to file for a logo if the trademark is broken/separated by images or symbols. Please check our article that talks more about it.

Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.

What are considered absolute grounds for trademark refusal?

Some trademarks cannot be registered on absolute grounds. It’s important that your trademark does not fall in any of the categories below in order to be registrable:

  • your trademark does not function as a trademark, i.e. as a source indicator
  • your trademark clearly descriptive of goods or services
  • your trademark is generic and is merely the name of a product or service
  • your trademark is not distinctive, i.e. is not capable of distinguishing your products or services from products or services of other traders

Make sure you watch our video how to select a great trademark.