Glossary of Terms
A
Absolute grounds
The reasons set down in the Trade Marks Act for refusing to register a mark by considering it purely on its own merits.
Address for service
The address to which the Trade Marks Registry will send all correspondence relating to a particular trade mark application. This must be an address in the UK, and will usually be the address of an agent or attorney, if one has been appointed.
Applicant
A person who makes a trade mark application. Several people can apply jointly for a trade mark, as can organisations.
Assignment
The legal transfer of the ownership of a trade mark from one person, or organisation, to another.
C
Caveat (literally "a warning or caution")
A request for information about an application or registered mark.
Certification mark
A specific type of mark, registered in the name of trade associations, government departments, technical institutes or similar bodies, which provides a guarantee that the goods or services bearing the mark meet a certain defined standard or possess a particular characteristic, as laid down by the owner.
Certified copy
A statement of fact about the details of any application or registered mark certified as true by the Trade Marks Registry.
Classification
The term normally used to describe the system of categorising goods and services of a similar kind into internationally agreed groups or “classes” for ease of identification and searching.
Collective mark
A specific type of trade mark, registered in the name of a trade association, which indicates that the goods or services bearing the mark originate from members of that association, rather than just one trader.
Convention country
A country which is a party to the Paris Convention for the Protection of Industrial Property.
Costs
An amount of money which the Registrar may order to be paid by one party to another.
Cross-search
The system used by trade marks examiners to check across the various classes of goods and services for earlier marks which might conflict with a new trade mark application.
D
Decision
The exercise in writing or orally by the Registrar of any discretion vested in her by, for example, the Trade Marks Act 1994 and the Trade Marks Rules 2000.
E
Evidence
The means, exclusive of mere argument, which intend to prove or disprove any matter of fact, the truth of which is submitted to judicial investigation.
Examination
A full examination of a trade mark application, undertaken by a trade marks examiner. This will determine whether the application complies with all the legal requirements set out in the Trade Marks Act 1994.
Exhibit
A document or object included as part of the written evidence for inspection by the Registrar.
Ex parte proceedings
Also known as without-notice proceedings. A formal meeting before the registry to resolve an issue between a single party (for example, the applicant for a trade mark) and the Registry.
F
Filing date
The date on which a properly completed application on form TM3 is received in the Office.
H
Hearing A formal meeting in which the merits of a trade mark application or action are heard and decided by a Hearing Officer appointed by the Registry.
I
Infringement
Interference with, or violation of, trade mark rights.
Intellectual property
The general term for intangible property rights which are a result of intellectual effort. Patents, trademarks, designs and copyright are the main intellectual property rights.
Inter partes proceedings
Also known as with-notice proceedings. A formal meeting before the Registry to resolve an issue between two or more parties.
Invalidity
A procedure to have a trade mark registration removed on the grounds that the mark did not qualify for registration and should have been refused registration on either absolute grounds or relative grounds.
L
Licence
The means by which the owner of a trade mark gives permission to another person to carry out an action which, without such permission, would infringe the trade mark. Thus a licence can allow another person to legitimately use a trade mark. In return, the trade mark owner will usually receive royalty payments.
M
Madrid system
An international system, administered by the World Intellectual Property Organization (WIPO), which allows the owner of a trade mark registered in one country to apply for protection of that mark in other countries within the system.
Merger
A procedure to combine separate registrations of identical trade marks in different classes into one “multi-class” registration.
O
Observations
Written comments made to the Registry by anybody who thinks that a trade mark which has been published but not yet registered has been accepted in error. For example, the person making the observations may know that the mark has some descriptive meaning in a particular trade or profession, of which the trade marks examiner was unaware.
OHIM
The Office for Harmonization in the Internal Market, the official title of the Trade Marks Registry operated by the European Union. It is based in Alicante, Spain.
Opposition
A procedure to prevent a published trade mark from becoming registered on the grounds that the mark does not qualify for registration on either absolute grounds or relative grounds.
P
Paris Convention
The Paris Convention for the Protection of Industrial Property. An agreement concluded in 1883 and updated several times since. It provides common rules between the member states for administering intellectual property rights. A member state is often referred to as a "Convention country".
Passing off
Pretence by one person that his goods or business are those of another.
Precedent
A previously decided case (often reported) which has a bearing on the issues in later cases.
Priority date
A claim that an application should be given the filing date of an earlier trade mark application in another country, provided that the earlier application was filed within the previous 6 months and that the other country is a "Convention country".
Priority document
A previously-filed trade mark application which provides a priority date for a later application.
Publication
A trade mark application must be published in the weekly Trade Marks Journal for public opposition purposes before it may be successfully registered.
R
Rectification
A procedure to put right any errors or omissions in a registered trade mark.
Registrable transaction
One of a number of transactions (such as an assignment or licence) which anyone who claims to have a legal interest in a trade mark may apply to have recorded in the register of trade marks.
Registration
The formal recording of a trade mark in the register of trade marks.
Relative grounds
The reasons set down in the Trade Marks Act for refusing to register a mark by considering it in relation to other earlier trade marks.
Renewal fees
Once a trade mark is registered, renewal fees are payable to the Registry every 10 years, to keep the registration in force. A registration may be renewed indefinitely.
Restoration
A procedure to restore to the register a trade mark which has lapsed through failure to pay renewal fees.
Revocation
A procedure to remove a trade mark from the register.
S
Surrender
A request by the owner of a registered trade mark to have it removed from the register.
T
Trade Marks Act 1994
The Act of Parliament which provides the authority under which trade marks in the UK are registered and enforced.
Trade Marks Rules 2000
The secondary legislation which governs procedural aspects of all dealings with the Office.
W
WIPO
The World Intellectual Property Organization (WIPO) is an international organization dedicated to promoting the use and protection of works of the human spirit. These works – intellectual property – are expanding the bounds of science and technology and enriching the world of the arts. Through its work, WIPO plays an important role in enhancing the quality and enjoyment of life, as well as creating real wealth for nations.
With headquarters in Geneva, Switzerland, WIPO is one of the 16 specialized agencies of the United Nations system of organizations. It administers 23 international treaties dealing with different aspects of intellectual property protection and counts 179 nations as member states.
Witness Statement
A written statement which is the same as the oral evidence which a person would, if called, give in evidence; it must include a statement by the witness that he believes the facts in it are true.
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