How to Avoid an Unsuccessful Application for Registering a Trade Mark

If your business is considering registering your trade mark, you want your application to be successful. This prevents you from wasting time and money, not to mention disappointment. Therefore, this article will discuss how to avoid an unsuccessful application for registering a trade mark. It does so by presenting five key points.

1. Conduct an Online Check of Current Registered Trade Marks

If you consider a trade mark application with the Intellectual Property Office, you should conduct an online database check of all registered trade mark in England. This is to ensure your trade mark idea is not already registered with another business. 

Your mark must have a distinctive character because trade mark registration provides exclusivity. Therefore, if your trademark is already registered, you will need to design another. An online search of the trade mark databases saves you from making an application that is bound to fail.

When you register a trade mark with the Intellectual Property Office, you only register your trade mark in England, Scotland and Wales. If you want to register your trade mark on an international scale, you must submit additional applications to each jurisdiction. As each jurisdiction has its own database, you must conduct various searches accordingly.

2. Ensure Your Trade Mark is Not Prohibited Against Registration

The Intellectual Property Office lists different things you cannot register as trade marks. Your business should consult this list before you make an application. This list includes:

• a  mark that lacks a distinctive character;
• something too descriptive, such as the word ‘food’ in a food business;
• misleading words or statements e.g. using the word organic for produce that is not organic;
• offensive language, including images; and 
• symbols or emblems such as official flags of countries.

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3. Include All Applicable Trade Mark Classes Within Your Application

The Nice classification system is used in England to group goods and services together. There are 45 potential trade mark classes to choose from within your application. Of these, 34 apply to products, and the remaining 11 are for services. These classes are various areas of trade that your business works within. You will have to select the class or classes which are appropriate to your trade mark. To avoid a worthless application, you should choose all applicable classes carefully, as your trade mark will only be protected within the classes you select.

After you apply, if you decide that you should have selected additional classes, you will need to submit a brand new application with the additional classes selected. It is advisable to seek legal assistance if you are having difficulties in selecting classes to ensure your application is both cost and time effective.

4. Be Aware of the Time Period Your Trade Mark is Registered for

Any successful trade mark application should result in a registered mark that can last the test of time. Trade mark registration lasts for 10 years before requiring renewal. When choosing a trade mark, it should grow with your business. 

A trade mark is a helpful brand identifier and can be used to build trust among consumers internationally. You should therefore take care to make an application that will be a robust tool for your business marketing, for example, a logo that you intend to use to represent your business as a whole rather than just one product.

5. Consider Using an Intellectual Property Lawyer

If you are unfamiliar with the trade mark registration process in England, it is advisable to contact a specialist in intellectual property law to maximise your chances of a successful application. Competitors can often use similar trade marks, even innocently; therefore, you may wish to secure your legal rights as quickly as possible. 

Registration provides exclusive rights within your goods or services industry and requires care when making an application. If you wish to opt for international registration, you must make additional applications for multiple jurisdictions to ensure exclusive international rights.

Key Takeaways

Trade marks are valuable tools to increase your business’s visibility and marketability across consumers. Registering your trade mark provides your business with legal rights to challenge any competitor if they attempt to use it without your consent. It is, therefore, useful in both business growth and commercial sense. To maximise your chances of being granted registration with the Intellectual Property Office, it is vital to bear in mind some simple mistakes to avoid unsuccessful applications. For example, remember to conduct online checks via the databases to ensure your trademark is not already registered with another company. Also, as trade mark registration lasts for 10 years, you should register something that can reflect your business’s product or services for that time.

If you need help with trade mark registration, Lour experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.

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