Trademark

Summary
  1. Legislation
    Trademark application in United Kingdom is governed under the Trade Marks Act 1994
  2. Definition
    A trademark refers to any sign capable of being represented graphically which is capable of distinguishing goods or services from that of another
  3. Criteria
    A trademark must be unique and can be:

      1. Words
      2. Sounds
      3. Logos
      4. Colors
      5. Combination of any of those

    A trademark can’t be:

      1. Be offensive
      2. Describe goods or services it will relate to
      3. Be misleading
      4. Be a 3 dimensional shape associated with your trade mark
      5. Be too common and non-distinctive
      6. Too similar to state symbols like flags or hallmarks
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Madrid Protocol
    The United Kingdom is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months
    The United Kingdom is also a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization. This allows for the mark to seek protection in member countries. However, this does not grant an internationally recognize trademark as that does not exist. It merely provides a mean for member countries to apply their respective laws to consider if the mark may be protected.
  5. Rule of Priority
    United Kingdom practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor.
  6. Duration and Renewal
    A trademark once granted is valid for 10 years from the date of registration and can be registered for another 10 years after the initial term has lapsed.
Procedure/Timeline
  1. Application
    An application can be made to the Intellectual Property Office together with the relevant fee
  2. Examination
    Once the application has been submitted, an examination report will be submitted to the applicant within 20 days. the applicant has the responsibility to respond to the objections within 2 months to resolve it.
    Should there not be any objections, the mark will be registered
  3. Opposition
    Should there be any objection as to the application of the mark, the applicant can then either withdraw the application, or talk to the person making the opposition
    The applicant can alternatively defend the application until the matter is solved. Failing to do so will render the mark un-registrable
  4. Grant
    Once all objections and opposition has been solved, the applicant will be registered and a certificate of registration will be issued to the applicant after the registration fee has been paid
Requirements/ Documents
The following information/documents are required for a trademark application in the United Kingdom:

  1. Request for registration of a trademark
  2. Name and Address of applicant
  3. Statement of goods and services in relation to which it is sought to register the trademark
  4. Representation of the trademark
Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    Patent application in United Kingdom is governed under the Patents Act 1977
  2. Definition
    A patent is the legal right to stop others from using an invention patented by the law.
  3. Criteria
    A patent can be granted for an invention which is:

      1. New
      2. Involves and Inventive Step
      3. Industrial Applicable

    The following however are not invention to be patented.

      1. A discovery, scientific theory or mathematical method
      2. A literary , dramatic, musical or artistic artwork or any other aesthetic creation
      3. A scheme, rule or method of performing mental act, playing a game or doing business or a program for a computer
      4. The presentation of information
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    The United Kingdom is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, the United Kingdom is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  5. Rule of Priority
    United Kingdom practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor
  6. Duration and Renewal
    A patent once granted is valid for 20 years and an annuity is to be paid from the 4th Anniversary onwards
Procedure/Timeline
  1. Informal Application
    An informal application can be submitted to ensure provisional protection for one year. The application must include a specification describing the invention in correct legal and technical terminology
  2. Formal Application
    Within a year, a formal application has to be made to legally define the invention. Within 3 months of the application, the British Patent Office will issue a search report of the application, following that the application will be published including its specification is published in printed form
  3. Examination
    Within 6 months of the publication of the application, an examination fee is to be paid to the Patent Office to request for an examination
    After the fee has been paid, within 6 months, a report will be issued which may raise objections as to whether the application is valid.
    Should there be any objections, the applicant then has the responsibility to respond to the objections either by amending the application or providing an argument for the objection raised.
  4. Grant
    Once all objections have been overcome, the patent will be granted.
Requirements/ Documents
The following information/documents are required for a patent application in United Kingdom:

  1. Name and Address of the Applicant(s)
  2. Name and Address of the Designer(s)
  3. Specifications
  4. Claim
  5. Drawings
  6. Filing fee

PCT National Phase Application
The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

  1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
  2. Payment of national fee
  3. Furnishing of a translation if the international application was filed in any other language other than English
  4. A copy of international application, except where not required by that Office (if necessary)
  5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
  6. An oath or declaration of the inventor
  7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Industrial Design

Summary
  1. Legislation
    A design refers to the aesthetic appeal of the design which has features of shapes , configuration, pattern or ornament which appeals to the eyes
  2. Definition
    A design refers to the aesthetic appeal of the design which has features of shapes , configuration, pattern or ornament which appeals to the eyes
  3. Criteria
    In order to register your design, the design must:

      1. Be new
      2. Not be offensive
      3. Not made of protected emblems or flag
      4. Not an invention or how a product works
  4. Membership
    X Hague Agreement Concerning the International Deposit of Industrial Designs
    √ Paris Convention for the Protection of Industrial Property
    The United Kingdom is not part of Hague Agreement Concerning the International Deposit of Industrial Designs a treaty administered by the World Intellectual Property Organization. This allows for an international registration of Industrial design to exist. However the United Kingdom is not party to this
    However, the United Kingdom is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Rule of Priority
    United Kingdom practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor
  6. Duration and Renewal
    An unregistered design is valid for 15 years. The registered design can last up to 25 years subject to the payment of maintenance fee.
Procedure/Timeline
  1. Application
    An application can be submitted to the Intellectual Property Office either written or online.
  2. Examination
    The application will be examined within one month of the application
    Should there not be any objections raised by the examiner, the application will be registered immediately.
    Should there be any objections, the applicant has 2 months to respond. Even if the examiner issues a decision of refusal, the applicant has the opportunity to request for a hearing if the applicant thinks his application has been dealt with unfairly
  3. Registration
    Once the application has no further objections, the application will be registered.
    A certificate of registration will be issued to the applicant.
Requirements/ Documents
The following information/documents are required for an industrial design application in the United Kingdom

  1. Name and address of the applicant
  2. Name and address of the designer
  3. Set of pictures showing the appearance of the design
  4. Details of the type of product
  5. Fee sheet, with payment of the relevant fee
Documents
Downloadable Forms
Agents
Fee