Trademark Application Services

We are Solicitors experienced in IP matters and TM Registrations

Trademark Application Services

We are Solicitors experienced in IP matters and TM Registrations

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IP Management & Review

Assignments, licensing and portfolio management of your brand's IP rights.

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Dispute Specialists

Advising you on disputes, threats, and infringements.

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HOW IT WORKS

7 Simple steps to get your Trade Mark

1

Fill a simple
application form

2

Our qualified solicitors
will contact you right away

3

Your application is
sent to the registry

4

We help you answer any
queries raised by the registry

5

Your application is
approved and published

6

We assist you answering
any objections if they arise

7

You receive certificate!

Featured

Register a Trademark

To register a TM two criteria must be satisfied:

  1. It must not fall into the Absolute Grounds for refusal; and
  2. It must not fall into the Relative Grounds for refusal.

Absolute Ground for Refusal

  • That the trade mark does not fall within the definition of a trade mark.
  • The trade mark is devoid of any distinctive character.
  • The trade mark is purely descriptive of the goods or services for which it is being registered.
  • The trade mark is a term that is generic and commonly used in the relevant trade.

The latter three grounds for refusal can all be overcome if the applicant proves that the trade mark has acquired distinctiveness, which in essence means proving the public associates the mark with you, despite it being generic, descriptive or devoid of distinctive character. For example, the slogan ‘compare the market’ was devoid of distinctive character, but it was proven that it had acquired distinctiveness and therefore was a valid trade mark.

Relative Grounds for Refusal

The relative grounds for refusal, which can only be raised by parties with existing rights, are:

  • Where there is an identical earlier registered trade mark and the registration is for identical goods and/or services.
  • Where there is an identical or similar earlier registered trade mark, and the registration is for either identical or similar goods or services. In this situation, there must also be a likelihood of confusion on the part of the public, which includes the likelihood of association of the two trade marks.
  • A mark that takes unfair advantage of or is detrimental to the reputation or distinctive character of an earlier mark that is identical or similar. In essence, this is where a trade mark is piggy backing on the reputation of another brand. For example, Asda was not allowed to use the trade mark SPEC SAVINGS AT ASDA because it was deemed to be taking unfair advantage of the Specsavers brand and reputation.

Protection

Registration confers on its proprietor the statutory right to the exclusive use of the mark in connection with the goods or services for which it is registered (section 9, TMA and Article 9, EUTM Regulation). Registration therefore gives the proprietor the right to sue for trade mark infringement any person who uses an identical or similar mark (termed a “sign” in the legislation) in the course of trade in connection with identical or similar goods without authorisation. The proprietor must also show that the use has caused or is likely to cause confusion, except in cases where the marks are identical and the goods or services are also the same (section 10, TMA and Article 9, EUTM Regulation).

If the mark has a certain level of reputation in the UK, there is a wider right to prevent others from using the same or a similar sign for goods or services (whether similar or not), where that use, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (section 10(3), TMA and Article 9(2)(c), EUTM Regulation).

Goodwill arising through our use and investment is also protectable under English law through the common law cause of action of passing off. The action under passing off allows the owner of goodwill acquired through use of a mark to claim relief in the courts against any third party who misrepresents the commercial origin of goods by seeking to pass off its goods or services as those of the goodwill owner, in a way which causes the owner of the goodwill damage. An actionable misrepresentation includes instances where a third party’s actions give rise to the impression that there is an endorsement, association or other commercial connection between that party and the owner of the goodwill. Damage does not necessarily have to be any tangible financial loss such as loss of sales and can include damage as a result of dilution of a brand name or erosion of its distinctiveness.

Passing off is an action available to owners of unregistered TM, but in some circumstances, an action for passing off can succeed in relation to registered TM where a trade mark infringement claim cannot. For example, the makers of “Penguin” chocolate biscuits were able, by means of a passing off action, to prevent the supermarket chain Asda from marketing its own brand of biscuits in packaging deceptively similar to that used for “Penguin” biscuits (United Biscuits (United Kingdom) Limited v Asda Stores Limited [1997] RPC 513). By contrast, they failed in their claims in this action for infringement of registered trademarks (such as a claim that the word mark PENGUIN was infringed by Asda’s choice of “Puffin” as its brand name and a claim that Asda’s puffin bird device infringed registrations of penguin devices).

If the owner of goodwill in an unregistered mark has good grounds for preventing use of another trader’s mark by way of an action in passing off, that person will also be able to prevent that other trader from registering its mark. The owner of the unregistered mark would have to prove that passing off would occur if the applicant’s mark were to be used as set out in the trade mark application.

Read our definitive guide to protecting your trademark:

A definitive guide to protecting your trade mark

Having instructed Ai Law in a number of matters over the last three years we have found them to be extremely easy to deal with and experts in a wide range of legal fields. Tom (a Partner) is always on hand should we need his advice and his team are dedicated and very well informed.

Ai Law client

Having previously used multiple solicitors across various matters, once we approached Ai Law we quickly established that they were experts in most areas of law. We subsequently gave the firm all of our business exclusively and haven’t looked back.

Ai Law client

Ai Law are a professional service provider that really knows what they are doing. They are an asset to our business.

Ai Law client

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