Trademark rejected? Here’s what to do next

Photo by Andrew Neel on Unsplash

Words by Dr Martin Douglas Hendry

Introduction

A trade mark is a symbol, name, or logo that represents a business or product. Trade marks are an important tool for businesses looking to protect their brand and distinguish themselves from competitors. However, the process of registering a trade mark is not always straightforward, and trade mark applications can be rejected for a variety of reasons. If your trade mark application has been rejected, it can be a frustrating and disappointing experience, but it is important to understand that there are options available to you.

Reasons for rejection

A. Similarity to existing trade marks

One of the most common reasons for trade mark rejection is similarity to existing trade marks. This means that the trade mark you have applied for is too similar to a trade mark that has already been registered. This can happen if the trade mark you have applied for is the same or similar to a trade mark that is already in use for similar goods or services.

B. Descriptiveness of the mark

Another common reason for trade mark rejection is that the mark is considered to be descriptive. This means that it describes the goods or services it represents, rather than being distinctive. For example, "Fresh Baked Bread" would be considered descriptive and would not be accepted as a trade mark.

C. Genericness of the mark

A mark that is considered to be generic will also not be accepted as a trade mark. A generic mark refers to a name or term that is commonly used to describe a category of goods or services, such as "Computer" for computer services or "Apple" for apples.

D. Non-use of the mark

If a trade mark has not been used for a period of 5 years or longer it is considered as non-used and the trade mark registration can be cancelled.

E. Failure to meet application requirements

Lastly, trade mark applications can also be rejected if they fail to meet the requirements set out by the UK Intellectual Property Office. This can include issues with the format or content of the application, or failure to provide the necessary documentation or fees.

Appeal process

A. Option to appeal the decision to the UK Intellectual Property Office

If your trade mark application has been rejected, you do have the option to appeal the decision to the UK Intellectual Property Office. This process allows you to present new evidence or arguments in support of your trade mark application.

B. Requirements and costs associated with appealing a trade mark rejection

Appealing a trade mark rejection can be a time-consuming and costly process. There are fees associated with filing an appeal and you may also need to hire a lawyer to help with the process.

C. Timeline for the appeal process

The timeline for the appeal process can vary depending on the specific circumstances of the case. It generally takes several months for a decision to be reached after an appeal has been filed.

Alternative options

A. Amending the trade mark application

One alternative option is to amend your trade mark application. This could involve making changes to the trade mark itself, or providing additional information or evidence to support the application.

B. Filing a new trade mark application

Another option is to file a new trade mark application. This may be a good choice if the original application was rejected due to a technical issue or failure to meet requirements, rather than because of the trade mark itself.

C. Considering other forms of intellectual property protection

It's also important to consider other forms of intellectual property protection for your brand such as Copyright, Design rights and Unregistered trade mark rights.

Conclusion

A trade mark rejection can be a frustrating experience, but it is important to understand that there are options available to you. If you have had your trademark application rejected and would like expert support, contact our team to find out how we can help you secure a brand that has a unique impact on your marketplace.

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