Trade Mark Registration: A Guide To Registering In The UK

 

A trade mark is an intellectual property right consisting of a recognisable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. In short, it’s the badge by which customers find your goods or services in the marketplace.

In the world of trade marks, deciding which “mark” to file requires careful consideration. Your decision at filing may severely impact the level of your protection and could cause issues down the line. There are several different trade mark types, and these all have their own advantages and disadvantages. Generally, the main two types are “word marks” and “logo”/“figurative” marks, although it is also possible to register sound marks, holograms, and marks consisting exclusively of colour. The possibilities are seemingly never-ending, although the general rule is that you must be able to provide a graphic representation of the mark you wish to protect.

Examples of word marks include business names like Apple, Amazon, Google and Netflix. Examples of figurative marks include Puma’s jumping cat, Nike’s swoosh, and McDonald’s golden arches.

What is trade mark registration?

Trade mark registration is the process by which you can gain exclusive ownership of a trade mark, which is a sign used to distinguish the goods and services of one business from those of another. This trade mark protects the sign and acts as a ‘badge of origin’ in relation to the goods and/or services for which it is registered.

Owning a trade mark gives you rights in that mark, which provides benefits such as enabling you to license out your brand, or stop others from using your brand through enforcement of your rights.

A trade mark covers goods and services which are selected with reference to the Nice Classification. There are 45 different trade mark classes in the Nice Classification, classes 1 – 34 relate to goods, and classes 35 – 45 relate to services. For example, clothing falls under class 25, toys and games fall under class 28, advertising services fall under class 35, and legal services under class 45.

The importance of registering

Registering a trade mark gives you protection for arguably your most valuable asset: your brand. Owning a trade mark gives you the exclusive right to use that trade mark, as well as the legal right to stop others using your mark without authorisation from you. Registering your right maximises your protection and scope for enforcement, as well as being easier to license, as you do not have to prove that the right exists.

To illustrate the point, if you register the name of your business as a trade mark, then only your business is allowed to use that name for the goods and services it’s registered against. You can pursue legal action against anyone who infringes your rights without permission, such as those imitating or copying your business name.

Plus, registration also gives you the right to stop third parties from registering identical or similar marks in classes of goods and services that are identical or similar to your mark. This means you have exclusive use of the name.

As you can see, a trade mark can be crucial for deterring infringement and enforcing your rights against third parties.

But that exclusivity is even more important as your business grows and the brand becomes more recognisable. Not only does this help attract and retain customers, but the trust and goodwill associated with your brand significantly boosts the value of the business as a whole (which is highly beneficial should you seek investment or a sale of the business).

And, going through the trade mark application process is one of the best ways to ascertain whether or not your mark is too similar to a third party’s mark. Indeed, if you ignore this process and don’t conduct any trade mark clearance searches, there will always be a risk that you are using an infringing mark which will eventually be spotted by the owners of the earlier rights and/or their lawyers.

All that said, there are rights which you may be able to rely on and do not require registration, such as passing off or copyright. But, in our experience, it is always better to have a registered right as the threshold you need to reach in order to rely on and prove infringement with registered rights is much more easily reached than unregistered rights – meaning they are generally more straightforward and less costly to enforce.

What can be registered?

As mentioned above, there are a number of different assets a business owner can register as a trade mark. Aside from your name, you can also register your logo, distinctive brand colours, slogans, and more. Find out more about what can be registered.

When to register?

We believe it is best to trade mark your business name as early as possible. It can seem like an added expense, but it should be seen as a long-term investment given the benefits mentioned above.

But before you rush off to complete the trade mark application process, we recommend you speak to a lawyer. You don’t want to submit an application only to have it rejected for falling foul of the eligibility rules, or to receive an opposition claim from a business with a similar trade mark.

How to register a trade mark in the UK

What is the process?

The process for filing an application to register a trade mark in the UK consists generally of the following steps:

1. Clearance Searches: This is a crucial stage that many regretfully skip. We highly recommend conducting a clearance search before applying, as it helps to identify any identical or highly similar blocking marks. Most solicitors will generally offer to conduct a preliminary clearance search for free, and then they will advise on the risk of successfully defending an opposition if one were to be raised.
2. Classification: Next, you and your legal adviser will identify the relevant trade mark classes appropriate to the business referencing the Nice Classification.
3. Drafting: To get the application ready for filing, you must have the details of the mark you wish to register (for example, a business name, a slogan, a picture of your logo, etc). You’ll also need your company name and address, and a list of goods and/or services the mark should apply to (see above, regarding classification).
4. Filing: Once the application is ready, it can be submitted to the UK Intellectual Property Office (UKIPO). There isn’t much wiggle room to amend the filing, so it’s important to ensure all of the details are correct from the outset.
5. Examination: Once the application is filed, the UKIPO will allocate an examiner to review your case. The examiner will look at whether the mark is eligible for registration, or whether the application should be refused based on either relative or absolute grounds. Read on for more information about these grounds for refusal. It is worth noting that the examiner will also search the trade mark register for any pre-existing similar or identical marks. They won’t necessarily refuse an application if they discover similar marks. However, if similar marks are found, then the examiner will email you with a report and if you decide to proceed to the next stage, then the UKIPO will notify the owners of those marks about your application.
6. Publication: At this stage, the mark will be published in the Online Trade Mark Journal. It will be published for a 2-month period whereby a third party can oppose your application. Third parties will want to oppose your application and enforce their rights if they believe they have a similar or identical earlier mark for which they have registered or unregistered rights.
7. Registration: If the publication stage goes without a hitch, the UKIPO will notify the mark owner at the end of the publication period. The UKIPO will issue an electronic registration certificate confirming the registration details and dates, and you will be the proud owner of a registered trade mark.

How long does it take?

In the UK, an application to register a trade mark takes approximately three to four months. In the EU, it’s more like four to six months, and further afield you could be looking at up to a year. The key, however, is to get your application underway. As soon as you do, you’ll have a filing date and a trade mark number.

How much does it cost?

Applying to register a trade mark in the UK costs at least £170, in terms of official registry fees. It will usually cost more depending on your circumstances, for example, how many types of goods or services you want to protect your mark. Solicitors will also have their own fees to assist with filing (we operate on a fixed fee basis in this regard).

Can I just do it myself?

Technically you can register a trade mark yourself. However, we would always advise against it. The benefits of instructing solicitors, such as Briffa, to file your trade mark application(s) for you include:

1. We can perform clearance searches for you prior to registration. These are important because if your mark is similar to one that someone else already owns, they may oppose your application. These searches are the best way to reduce the chances of your registration being opposed. For more information on clearance searches, see: Why complete clearance checks before applying for a trade mark?
2. We can advise you on the eligibility of your mark. This entails assessing whether your registration is likely to be refused by the Intellectual Property Office, and why. We can also advise on which marks are less likely to be refused and help you form your trade mark strategy.
3. We can advise on how best to protect your brand, ensuring that your registration covers everything you need, including things you may not have thought of.
4. We can make sure your classes and specifications are all correct and draft a bespoke application. Once an application is filed, you cannot then go back and add more classes; you will need to start a whole new application. This of course increases costs, both in time and money.
5. We can deal with any objections from the registry or a third party.

Do I need to register a trade mark abroad?

As a general rule, wherever you are using a mark, you should file for registration in that place. You should also file for registration anywhere you are planning to use a mark in the future. This ensures you have comprehensive protection for your mark and enables you to enforce your rights in any territory for which you have registered. If you only obtain trade mark registration in the UK, for example, then your protection is limited to the UK.

So, if you are using a mark in the UK, US and China, you would need to make separate applications for each of these territories. There are a couple of exceptions, where one registration can cover a number of territories. For example, an EU-registered trade mark will give you protection in all EU Member States.

Careful consideration should be given as to which territories should be filed for. Protection will only take effect in those jurisdictions in which they are registered. For example, the mark should be registered in the jurisdiction where goods are manufactured, as well as where they are marketed or sold.

To learn more, check out our post about how to register a trademark overseas.

Why might a trade mark application be refused?

To register a trade mark, there are certain criteria your mark needs to satisfy. With that criteria in mind, an application to register a trademark may be refused by a UKIPO examiner on absolute or relative grounds.

Absolute grounds

An application may be refused for “absolute grounds” if:

• There’s a lack of distinctive character, i.e., the mark is not distinctive enough to distinguish the goods or services from other similar goods or services;
• The mark is descriptive of the goods or services;
• The mark has become customary for describing that product, for example, ‘hoover’ for vacuum cleaners; or
• The mark has been applied for in bad faith.

Relative grounds

There are also grounds for refusal known as ‘relative grounds’.

An application may be refused for relative grounds if:

• The mark is identical to an earlier mark and is to be registered in relation to identical goods or services;
• The mark is identical or similar to an earlier mark, and is to be registered in relation to similar or identical goods or services and there exists a likelihood of confusion on the part of the public; or
• The mark is identical or similar to an earlier trade mark with a reputation in the UK, and use of the mark would take unfair advantage of, or be detrimental to the distinctiveness or repute of, the earlier mark.

For more information on how to select a mark which will not be refused registration, see: How to choose a trade mark

Can a trade mark application be opposed?

Yes, a trade mark application can be opposed. In fact, trade mark oppositions are a crucial aspect of the trade mark registration process in the UK (and most of the world) as it is up to trade mark owners to police the register.

In the UK, once someone files a trade mark application, it is examined by the Intellectual Property Office, and then published in the Trade Mark Journal. There is then a two-month time period called the opposition period, where anyone can file an opposition to the trade mark application based on “relative grounds”, for example, if the mark in question is identical to or confusingly similar to a mark that they already own. This period may be extended by one month by filing a notice of threatened opposition.

For more information, see our complete guide to trade mark oppositions.

Can a trade mark be opposed or challenged after registration?

Once the opposition period has passed without opposition, the application will proceed to registration. Obtaining registration of your mark is a clear milestone of success, but unfortunately, even once registered there can still be issues. There are several circumstances whereby a registration can be opposed or challenged.

Invalidity

It is possible that someone may initiate an invalidity action or a revocation action. This is, however, more costly and complex than filing an opposition. A trade mark may be invalidated if a party could argue that it should never have been registered in the first place, so one or more of the absolute or relative grounds must apply. For example, this will apply where the mark has been applied for in bad faith.

Non-use

You have to use your trade mark in trade to keep your trade mark rights. If you don’t use your mark, a third party could apply to the relevant intellectual property office to cancel it for non-use.

There is a ‘grace period’ after registration when you can start using your mark, and in the UK it is five years after the initial registration depending on the jurisdiction. If you have not commenced use of your mark within this time frame, or if you stopped using your mark for the same period of time, there is a risk your mark can be cancelled.

Learn more about how a trade mark can be lost.

Do I need to renew my registration?

Trade marks can last forever subject to the timely payment of the renewal fees. For example, UK and EU trade marks initially last for ten years and then need to be renewed every ten years to continue to have the mark registered, and a renewal fee is payable each time.

If you fail to renew your trade mark by the renewal deadline, your trade mark will expire, along with your protection. It is possible in certain circumstances to resurrect an expired trade mark, but this comes with extra complications and formalities, which are best avoided where possible.

What are the benefits of registering a trade mark?

• Registering a trade mark gives you protection for arguably your most valuable asset: your brand. Owning a trade mark gives you the exclusive right to use that trade mark, as well as the legal right to stop others using your mark without authorisation from you. Registering your right maximises your protection and scope for enforcement, as well as being easier to license, as you do not have to prove that the right exists.
• There are rights which you may be able to rely on which do not require registration, such as passing off or copyright. That said, it is always better to have a registered right, as the threshold you need to reach in order to rely on, and prove infringement of, registered rights is much more easily reached than that for unregistered rights, meaning it is generally more straightforward and less costly to enforce registered rights. Further, trade mark protection is broader than that provided by unregistered rights.
• Trade mark protection can last forever subject to renewal and use, whereas copyright generally lasts for the duration of the author’s life plus 70 years.
• Lastly, you get a shiny certificate upon registration proving the status of your trade mark, which can be shown to third parties if you ever wish to quickly demonstrate the existence of your right. This can be useful for example if you want to sell your brand and the potential buyer is conducting due diligence, or it can be used as a tool if you want to stop someone from infringing on your brand.

Key takeaways

• Registering a trade mark gives you protection for arguably your most valuable asset: your brand.
• Clearance searches are highly recommended to avoid hiccups with potential earlier rights holders both during the application process and once the mark is registered.
• Trade mark applications can take 4-5 months to register in the UK, and much longer abroad so filing early is important.
• You always have friendly solicitors on hand who can help to advise you and support you during the trade mark registration process and enforcement thereafter!

If you would like more information or advice on anything related to trade marks, please get in touch via the contact form below, email us at info@briffa.com, or call us on 0207 288 6003.

This guide was written by Anastasia Troshkova, Laura Gathercole, and Shamina Knights. All information is correct as of June 2023.