World Intellectual Property Organization

United Kingdom (GB)

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Miscellaneous

Nice Classification

The Office does not accept the following terms of the Class Headings listed below.
TERMS NOT CONSIDERED TO BE CLEAR AND PRECISE:

Class 6: Goods of common metal not included in other classes;

Class 7: Machines;

Class 14: Goods in precious metals or coated therewith;

Class 16: Goods made from paper and cardboard;

Class 17: Goods made from rubber, gutta-percha, gum, asbestos and mica;

Class 18: Goods made of these materials [leather and imitations of leather];

Class 20: Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics;

Class 37: Repair; installation services;

Class 40: Treatment of materials;

Class 45: Personal and social services rendered by others to meet the needs of individuals.



PROPOSALS/POSSIBLE SOLUTIONS (EXAMPLES FROM HARMONISED DATABASE) TO THE TERMS LISTED ABOVE.

Class 6: Construction elements of metal; building materials of metal;

Class 7: Agricultural machines; machines for processing plastics; milking machines;

Class 14: Works of art of precious metal;

Class 16: Filtering materials of paper;

Class 17: Rings of rubber;

Class 18: Briefcases [leather goods];

Class 20: Door fittings, made of plastics; figurines of wood;

Class 37: Shoe repair; repair of computer hardware; installation of doors and windows; installation of burglar alarms;

Class 40: Treatment of toxic waste; air purification;

Class 45: Personal background investigations; personal shopping for others; adoption agency services.

Guidance on class headings and specifications can be found at:
http://www.ipo.gov.uk/pro-types/pro-tm/t-law/t-pan/t-pan-313.htm. General guidance on the classification of goods and services, including the need for clarity in specifications (see para 3.5) is available at:
http://www.ipo.gov.uk/tmmanual-chap2-classi.pdf.

Representation before the Office

There is only a requirement for an address for service in the EU or EEA.
List of UK trademark attorneys.

Collective and Guarantee Marks

Regulations governing the use of the mark must be sent to the Office once the mark is considered acceptable. A flexible period is given and it is extendable.

Replacement

Recording of replacement takes place upon written request on an officially established Form TM28, filed with the Office. The date of registration of the earlier mark is preserved.

Transformation

If the mark has been given “protected” status in UK prior to filing the transformation request, it will simply be transformed into a “registered” national mark. If not, the normal application procedure will be followed.
Transformation requests are filed using form TM4 – available at this link:
http://www.ipo.gov.uk/pro-types/pro-tm/pro-t-formsfees.htm There is no fee for filing a request for transformation.

Maintenance Requirement

None.

Licenses

Recording in the International Register of a trademark license related to an international registration is effective in UK ( Article 30, 32 and 264 of the Trademarks Act).

Last updated on: January 10, 2014

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