KESTREL AI: mark format, priority and Madrid strategy
Kestrel Robotics Ltd, a UK company, has developed a machine-vision platform sold as KESTREL AI. It uses a stylised logo: a geometric kestrel head above the words KESTREL AI in grey, with the letter A formed by a circuit line. The company has used the logo in the UK since 1 March 2024 and filed a UK application for the logo on 15 May 2024. It now plans an EU launch in September 2024 and a US launch in 2025. It has a £2,000 filing budget and wants 'maximum coverage'. The UK examiner has not yet reported. The word 'AI' is descriptive; the kestrel device is distinctive. Kestrel has no EU or US applications. It has a UK trade mark application for KESTREL AI (word) filed 10 June 2024, not yet published. It wants to use the UK application as a priority base for EU and Madrid.
1. Advise on mark format: word mark versus logo versus series; colour claim; whether to file KESTREL AI as a word mark.
Read the worked answer
File separate applications rather than a series. UK series marks must differ only in non-distinctive elements and not substantially affect identity; a word mark and a device logo cannot be one series. A word mark KESTREL AI gives broad protection against wording, but AI is descriptive and weak; distinctiveness comes from KESTREL. The composite logo is distinctive because of the kestrel device and stylisation. Filing the logo in grey with a colour claim limits protection to that colour; filing in black and white is broader. Recommended: (i) UK word mark KESTREL in Classes 9 and 42; (ii) UK composite logo in black and white; (iii) consider KESTREL AI word mark only if budget allows, with a disclaimer for AI if requested. Do not rely on the logo to protect the word KESTREL alone.
2. Can the UK applications support priority for EU and Madrid filings? Explain the timing and risks.
Read the worked answer
Priority: the UK word application was filed 10 June 2024, so a subsequent EU/Madrid application for the same mark and same or narrower goods can claim priority until 10 December 2024. The earlier logo application of 15 May 2024 cannot support priority for the word mark because the marks are not the same; it can support the logo until 15 November 2024. The UK application need not be registered or published to be a priority or basic mark, but for Madrid the international application must be filed through the UK IPO and the goods/services must be within the UK basic mark. Risk: if the UK word mark is later refused, the Madrid international registration may be cancelled if it depends on the basic mark for five years. Given the budget, direct EU filing is likely cheaper than Madrid for one or two classes.
3. Recommend goods/services and a territorial filing sequence within £2,000.
Read the worked answer
With £2,000, prioritise: UK word mark KESTREL in Classes 9 and 42 (£170 first class plus £50 second class online); UK logo in the same classes (another £220); EU word mark KESTREL in Classes 9 and 42 (EUIPO €850 plus €50 = €900) by 10 December 2024; defer US and Madrid. If hardware is sold, add Class 7 to UK/EU only if budget permits; extra classes increase fees. Do not file KESTREL AI in every territory until UK examination shows whether AI causes objection. Use the EU priority deadline; file US later under Paris priority or directly. Keep evidence of use in case AI is objected to. Madrid is not cost-effective here because the UK basic mark is narrow and the budget is tight.