My trade mark application has been rejected, what should I do? 

After filing your trade mark registration application, you may receive a ‘refusal’ letter from the Intellectual Property Office, in the form of an “Examination Report”. Whatever the reason, you should not panic, in this article, our trade mark solicitors explain the different ways you can overcome a refusal decision. 

Why was my trade mark application rejected? 

In the UK, the Examiner can object to an application on “absolute grounds”, namely that the mark itself does not satisfy the requirements of the Trade Mark Act. The most common grounds for refusal are that the mark itself is non-distinctive or simply descriptive of the goods and services that you have included in the application. Other reasons include that the mark is deemed to be generic or misleading or that it is considered offensive or contrary to public policy. Certain words or images are banned from use or require permission from a specific organisation to be included in a trade mark, such as protected emblems, flags, armorial bearings, Coats of Arms and certain words like “Crown”, “Royal” or “Chartered”. 

The Examination Report may also include objections to the specification that you have drafted, for example, they consider some of the terms used to be too vague or because certain terms have been classified in the wrong class and need to be transferred or a new class added to the application to accommodate them. A trade mark solicitor should be able to assist you in drafting your list of goods and services in line with the ‘NICE Classification’ system so that they are acceptable to the Examiner. 

A UK Examiner will not refuse an application on “relative” grounds, namely because there are other similar marks on the Register that may be considered to be confusingly similar to the application mark. The Examiner will list other similar marks in the Examination Report that they think could form the basis of a trade mark opposition action, and will notify the owners of those trade marks of your application in order to give them the opportunity to file an opposition.  

How can I reduce the risk of my trade mark application being rejected? 

The safest way to try to avoid your application being rejected is to take legal advice before you draft and start to prepare your trade mark application. 

As well as advising on whether your mark complies with the “absolute grounds” of the Trade Marks Act, a solicitor or attorney can conduct availability searches to check whether the mark is free to use and register or whether there are similar marks already on the Register for the same or similar goods and services. 

Based on their advice, you will then be able to decide whether you need to change your chosen mark at all before proceeding, perhaps by adding a logo to the wording to make it more distinctive or changing the word(s) themselves. 

What should I do if my trademark is rejected? 

Amend the trade mark application 

The Examiner will allow you to respond to an objection, to try to overcome the refusal. You will not be able to change the mark itself once the application has been filed but you can amend other aspects of the application or submit arguments or evidence for the Examiner to consider. 

Once you have received the refusal letter, you can analyse this to understand the reason for the decision. You may only have received a ‘partial refusal’ about some of the goods and services. 

If there has been an administrative error, you can usually speak to the Examiner or write back to ask them to correct this. For example, you could ask the Examiner to transfer one of your services to a different Class. Or, if you have applied for a ‘series’ of more than one mark and they have not been accepted as a series, you can ask the Examiner to delete one or more of the marks and to continue with the application for the remaining, acceptable marks. 

If the mark has been refused on grounds of non-distinctiveness or descriptiveness, you can provide arguments as to why you think the mark is not simply descriptive or provide evidence to support a claim of ‘distinctiveness acquired through use’ of the mark, for example. Or you could obtain a letter of consent to use a mark incorporating a prohibited word or image from the appropriate organisation (eg the Lord Chamberlain in respect of ‘royal’ marks) and send this to the Examiner, in response. 

Appeal the decision 

If you have replied to an examination report with arguments in writing, you will have the option of requesting a telephone hearing to put your arguments to a different, more senior officer of the Registry. You may also be able to file evidence of acquired distinctiveness of the mark if you can show sufficient use of it. 

If you have exhausted all options or missed a deadline to file a response and the mark has been formally refused, you can still file an appeal. 

Any decision of the tribunal can be appealed by submitting an appeal notice to either the appointed person or the High Court in England, Wales and Northern Ireland and the Court of Session in Scotland. 

The appointed person is a senior intellectual property lawyer who is independent of the Intellectual Property Office tribunal and can offer a review of a decision of the Registry where they think that there has been an error in principle or that the hearing officer was wrong. The appointed person’s decision is final and cannot be appealed any further. This is a cheaper method of appealing a decision than going to court. There is a deadline of 28 days after the final decision has been issued by the Registry, to appeal to the appointed person. 

There is no cost to file an appeal to the appointed person in respect of a decision that affects the registration applicant. If any other party is involved, the cost is £250. 

A court appeal is likely to be more expensive and you will need to obtain the advice of a trade mark lawyer in order to proceed in this way. 

As the appeal process may take several months (or years if the court is involved), you may still use your mark whilst you await the outcome of an appeal. There are risks involved as you may invest time and money into a mark that is ultimately refused and may then need to re-brand. 

Submit a new trade mark 

Finally, if all other options have failed or if you do not think it worthwhile to appeal a decision, you can consider filing a new application for an amended mark or logo. You may stand better prospects of success in subsequent applications if you take legal advice and ensure that you change your mark or other aspects of the application to ensure that it doesn’t fall foul of the same objection again. 

Summary 

If your mark is refused and you cannot overcome this decision you will lose the costs of the application and any costs that you incurred in fighting or appealing the decision. So, the most important lesson is to make sure that you take legal advice before filing your application to stand the best prospects of being successful.