Here are the key changes you need to be aware of – and we can help with…

Graphical Representation

When filing a UK trade mark application, it is no longer a requirement to provide a visual/graphical representation of the mark – instead an applicant can provide MP3 / MP4 formats. The reasoning given to this is to make it easier to apply for sound and movement marks.

This means that the representation of the mark can be filed using one of the following formats:

– Shapes: OBJ, STL and X3D

– Figurative, pattern, colour: JPEG

– Sound: MP3

– Motion, multi-media and hologram: MP4

Limitation of this type of application is that the application can only be made online and this change in practice applies to UK trade mark applications only. A Madrid Protocol Registration based upon UK trade mark application/ registration still requires a graphical representation.  We can assist with filing strategies – and if a Madrid Protocol is the best way forward when considering trade mark protection outside the UK.

Absolute Grounds objection extended

The absolute grounds objection that the shape of the goods cannot be accepted as trade mark – if the shape is a result of a technical function, adds substantive value, or as a result of the shape itself – has now been extended to cover any characteristic which is intrinsic to the goods applied for. Going forward this will be an interesting ground of refusal and I suspect there will be very inventive arguments raised to overcome such an objection.

Notification of Earlier Rights

The UKIPO will only notify an applicant of a new trade mark application of live registered marks that are identical or similar to mark that you are applying for.  Previously the UKIPO would notify the applicant of marks that were registered but have since expired.

Beware though, it is possible to resurrect some marks that have been expired within the last 12 months of the last renewal date – and these registrations can then act as a potential bar to your use and registration.

We can help with conducting a full trade mark clearance on your behalf, before filing a new trade mark application, to ascertain any potential obstacles to your use and/or registration.

Opposition Proceedings

The onus is upon the owner of an earlier trade mark registration to file an opposition against a later filed trade mark application. Before filing an opposition, the owner of the earlier trade mark needs to consider if its registered rights have any vulnerabilities.  The owner of the earlier registered right needs to be aware that if its mark has been registered for longer than five years a third party could challenge the registration on the basis of non-use – with a view to having the mark revoked.

If you are looking to challenge a new trade mark application and your registration is older than five years, it is vital that you can prove use of your mark or give proper reasons for non-use. Plus, the calculation of this five-year period regarding filing potential oppositions has changed too. Again, we can help with this and advise on the merits of any possible opposition.

Collective Marks

These are normally owned by trade associations, but the ownership has now changed and been extended to cover legal persons governed by law.

If you have any questions relating to trade mark matters, please do not hesitate to get in touch with our new Associate Sarah Dacre, who is a hugely experienced and specialist Chartered Trade Mark Attorney. Email: [email protected]