Trademark Opposition Lawyer - Can My Trademark Registration Be Refused?
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PAIL® Solicitors offer expertise and over a decade of experience in trademark registration and disputes. Contact us using the above form or at peter@pailsolicitors.co.uk or on 0207 305-7491 charge rates may apply and may vary).
What is a trademark?
A trademark is a representation including text or symbols from which the public can identify the underlying unique business.
Is it straightforward to register a trademark?
No, it is not. And that is where we come in. There are several ways in which your application to register a trademark can be unsuccessful. Here are some of the ways:
Absolute Grounds For Refusal
So absolute grounds for refusal of registration of a trademark under the law include marks which consist only of shapes if the shape itself (a) performs a technical function solely, (b) adds value to the goods or (c) results from the nature of the products. However, there are exceptions.
In addition to marks other than shapes, signs consisting solely of shapes “or another characteristic” if that shape or other characteristics result from the nature of the goods, or is necessary to obtain a technical result, or gives significant value to the products.
That is to say, features other than shapes fall into the category for absolute refusal.
Other grounds for absolute refusal include:
not capable of being a trademark;
devoid of distinctive character;
consists exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering service, or other characteristics of products or services; and
exclusively customary in established practices of the trade.
Relative Grounds For Refusal
Relative grounds may also be used to refuse trademark registrations. So a trademark will not be registered if:
It is identical or similar to an earlier mark and with the underlying goods and services if because of the similarity there exists a likelihood of confusion including an association with the earlier mark.
The owner of a mark has exclusive rights in the mark that are infringed by its use in the UK without consent.
An application is submitted to the registrar for trademark registration.
The registrar examines it and decides whether to accept or refuse it. If she does not take it, she writes to the applicant allowing making representations or amending the application.
If the application is accepted, the registry publishes it in the trademark journal.
Any third party may file an opposition against the registration within the prescribed time, currently three months after the date of publication.
The mark is registered, and the applicant receives a certificate where no opposition is filed.
The trademark registration is for ten years from the registration date.
THE VALUE OF TRADEMARKS
The value of trademarks like all legal matters is only illustrated when the worst happens. Until then it is difficult for an inexperienced entrepreneur to really appreciate their value. Mr Payan Tabibian is an entrepreneur, originally Iranian but with US nationality, who had an idea for a business, much like millions of other entrepreneurs around the world every day.
Mr Tabibian had an idea for a hamburger restaurant, and one of his initial tasks was to come up with a distinctive name and logo. Like millions of entrepreneurs just starting off their businesses, Mr Tabibian could not have imagined that 10 years after he thought of the Z-burger trademark, his brand name and logo would become embroiled in a legal battle worth millions.
Mr tabibian understood well the value of trademarks because he registered the name and logo in 2007, a year prior to opening his first restaurant in 2008. His logo was a 1950’s style red, white and yellow Z.
Mr Tabibian’s story is a genuine rag to riches tale that illustrates well the value of trademarks. He reportedly started off as a cleaner, mopping up floors in a hamburger restaurant. Hard working and focused he eventually rose to become manager of various hamburger and other fast-food restaurants. During that time he even went to school to study hamburger marketing.
Then the moment came when he decided to strike out on his own. He came up with a great idea for a hamburger restaurant that was community centric with lots of interactive activities with the local community.
The restaurant was a hit. According to the US press he even gave free food to local civil servants suspended due to federal government reduction in funding. He was a community hero. He then expanded. Within two years his stores were in six locations. As one would expect he is reportedly a hard worker putting in up to fourteen hours a day.
Trademark Opposition Proceeding:
A trademark opposition proceeding occurs when someone opposes the registration of a specific trademark. This opposition can come from another party (the “opposer”) who believes that the proposed mark conflicts with their existing rights or interests.
If the opposer prevails in the opposition, the applicant’s trademark registration will be refused. As a result, the applicant will be unable to obtain federal registration for their mark.
Conversely, if the applicant prevails in the opposition, their trademark application will likely proceed toward final registration.
To obtain a quotation, please contact us at (020) 7305-7491 or at peter@pailsolicitors.co.uk. We would be delighted to assist you. Mr Peter Adediran is the owner and principal solicitor at PAIL® Solicitors. Subscribe to our newsletter to get blog post updates and other information about the firm straight to your inbox.
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