Should I Register A Trade Mark Myself?

For those who don’t like reading, I’ll give you the answer now: No, you should not try registering a trade mark by yourself. However, you would expect me to say that given that I’m in the business of providing professional advice on trade mark applications. So let me justify my answer with two key reasons.

Why You Shouldn’t Register A Trade Mark By Yourself

1. Higher risk of losing your application fee

Firstly, even if you register a trade mark yourself, you are still going to incur a fee. This is called the official fee and it’s effectively the fee that you pay to the trade mark registry in order to file your application. In the UK, the fee for filing a mark in one class of goods or services is £170, but there is an extra £50 fee for each additional class. So, while most businesses could fit this within their budget in order to secure an important commercial asset, it’s certainly not an amount of money that you would like to waste.

Indeed, filing a trade mark yourself puts you at a higher risk of losing this fee due to the complexity of how trade marks are assessed at the examination stage. There are a large number of reasons as to why a registry might refuse your application, but the most common relate to descriptiveness and distinctiveness. Ensuring that your mark meets the requisite tests can be difficult and knowing the ways to overcome or circumnavigate these hurdles is vital. But, to put it simply, if you file a trade mark which doesn’t meet these requirements and it’s refused as a result, the application fee is unrecoverable.

Equally, when crafting your trade mark application it’s important to consider your options such as the filing type (e.g. word mark or figurative mark), the relevant classes (there are 45 in all), and the specification wording within those classes. Most of these decisions are set upon application, so it’s not possible to change a word mark to a figurative mark or add a new class of goods/services at a later date, for example. This could mean that what you file ends up needing to be corrected with a subsequent filing, thereby immediately increasing your filing fees.

2. Higher risk of starting a trade mark dispute

An even greater consideration than some increased official fees is the risk of invertedly starting a legal dispute with a third party. This can happen in two ways in the context of a trade mark application:

1. Firstly, and most commonly, your application may be viewed by the examiner to be similar to one or more pre-existing marks. If this is the case, and if you decide to progress your application (rather than withdrawing it and losing the application fees) you risk a trade mark opposition action from a third party. To defend this, you will be asked to submit relevant legal arguments and evidence. Both parties will then have the option to request an oral hearing. This can be a long process and, if you’re unsuccessful in the opposition you can not only lose your application but you can also be ordered to pay costs to the opponent.
2. Second, outside of the context of registry proceedings, putting yourself on the radar of a party with a prior mark can also lead, in certain circumstances, to a trade mark infringement claim. This would be dealt with by the courts rather than a registry, so the costs involved are much higher. In addition, a successful claimant will be awarded financial damages that the defendant is liable to pay.

Get Expert Help

To avoid the risk of losing your application fee or starting a dispute, it pays to get professional advice on your trade mark application and to register it with a legal representative on record. If you want that representative to be Briffa, all you need to do is contact us via the form below or email info@briffa.com.