Summary
- A mark that describes what your software does, such as a name built around “AI” plus a function, will usually fail at examination unless you can evidence acquired distinctiveness.
- Search the IPO register and the EUIPO register if you plan to trade in Europe, before you file, because the technology classes are increasingly crowded.
- Class selection decides the scope of your protection: class 9 covers downloadable software and class 42 covers software delivered as a service, and most AI products belong in class 42.
- A UK registration lasts ten years, renews indefinitely, and can be revoked for non-use after five years in classes where you do not trade.
- Registration covers the United Kingdom only, so an international business should consider the Madrid System rather than filing country by country.
Tips for Businesses
Pick a name that says nothing about what the product does, because descriptive AI names rarely survive examination. Work out how customers actually access your product before you choose classes, since hosted and downloadable sit in different ones. Search both registers before you commit to branding. Our intellectual property team can run the clearance search and file for you.
Two decisions shape whether a trade mark will protect an AI product, and both come before you file. The first is the name itself. A mark that describes what the software does will not get past examination, and in this sector that catches a great many candidate names, because ‘AI’ plus a function is how most people describe their product. The second is classification. Your protection extends only to the classes you register in, and software delivered as a hosted service sits in a different class from software a customer downloads. Getting either wrong is expensive to fix, because you cannot widen an application once it is filed. This article explains how to choose a registrable mark, how to search the register, which classes an AI software business needs, what the application process involves, and how to protect and enforce the mark internationally.
Why Trade Mark Protection Matters for AI Businesses
AI software businesses often invest heavily in their brand from an early stage. A distinctive name or logo can be the difference between standing out in a crowded market and being lost among competitors. Without trade mark protection, a rival could adopt similar branding, causing consumer confusion and undermining the goodwill you have built. Registered trade mark protection gives you exclusive rights to use your mark for the goods and services it covers. It also gives you legal tools to stop others using confusingly similar marks.
Choosing the Right Mark
Before applying to register a trade mark, it is important to choose a mark that is capable of registration. The IPO will refuse an application if the mark is purely descriptive of the goods or services it covers. AI software businesses can easily fall into this trap. Names that simply describe the software, such as ‘AI Analyser’, may be difficult to register. Registration may require evidence that the mark has acquired distinctiveness through use.
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Conducting a Trade Mark Search
Before applying, search the IPO register thoroughly for conflicting marks. This is especially important for AI and technology businesses. The register in this area is becoming increasingly crowded. A search should cover not only identical marks but also similar ones that cover overlapping goods or services. Searching the EU Intellectual Property Office (EUIPO) register is also advisable if you have plans to operate in European markets.
“Employers often treat the six or twelve month mark as something to track loosely, but the employee choice notice starts a hard twenty-one day clock the moment it lands, not when someone gets around to reading it. I regularly see businesses lose the chance to refuse simply because nobody diarised the date. Build that date into your system before you need it, not after a notice arrives.”
Selecting the Correct Classes
Trade marks are registered in relation to specific classes of goods and services under the Nice Classification system. Selecting the right classes is important because your protection only extends to the classes in which you are registered. Registering in too few classes can leave gaps that competitors may exploit. However, others may challenge irrelevant registrations for non-use after five years.
The Application Process
Trade mark applications are filed with the IPO online. The standard application fee is £205 for one class, with £60 for each additional class. The IPO will examine the application to ensure it meets the requirements for registration and will publish it in the Trade Marks Journal if it passes examination. Third parties then have two months to oppose the application. If no opposition is filed, or any opposition is unsuccessful, the mark will proceed to registration.
International Protection
A UK trade mark registration provides protection within the UK only. AI software businesses that operate internationally, or intend to do so, should consider filing in other jurisdictions. The Madrid System, administered by the World Intellectual Property Organisation (WIPO), allows businesses to file a single international application covering multiple countries. This is generally more cost-effective than filing separate national applications in each territory.
Enforcing Your Trade Mark
Registration is most valuable for when you are prepared to monitor and enforce your rights. AI businesses should watch for infringing uses of their mark, including by competitors adopting similar names or by unauthorised use in app stores, online marketplaces, and domain names. Where infringement is identified, a cease and desist letter is usually the first step, with litigation in IPEC or the High Court available where the matter cannot be resolved.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Key Takeaways
Trade mark protection is a key part of any AI software business’ IP strategy. The key points to keep in mind are:
- choose a distinctive mark that is not descriptive of your product to maximise the chances of successful registration;
- conduct a thorough search of the IPO and EUIPO registers before filing to identify potential conflicts;
- register in the correct classes to ensure your protection covers your actual business activities;
- a UK registration lasts ten years and is renewable, but covers the UK only; consider using the Madrid System for international protection; and
- monitor the register and enforce your rights promptly to prevent dilution of your brand.
LegalVision provides ongoing legal support for all businesses through our fixed-fee legal membership. Our experienced intellectual property lawyers help businesses manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 0808 196 8584 or visit our membership page.
Frequently Asked Questions
Can I register the name of my AI software product as a trade mark separately from my company name?
Yes. A product name and a company name are distinct, and you can register trade marks for both. Many businesses register their company name, their product names, and their logo as separate trade marks to maximise the scope of their protection.
What happens if someone registers a similar trade mark before I do?
You may be able to oppose the application if it is still pending, or apply to invalidate the registration if it has already been granted, on the grounds that it conflicts with your unregistered earlier rights. If you have not yet started using your mark, though, it may prove challenging to successfully oppose someone else’s application.
How long does it take to register a trade mark for an AI software product?
Where there are no objections or oppositions, the process typically takes between three and four months from the date of filing. However, complications such as examiner objections or third-party oppositions can extend this.
Which class should an AI software product be registered in?
Usually class 42, which covers software as a service and hosted, non-downloadable software. Class 9 covers downloadable software and apps. An AI business with both a hosted platform and a downloadable app generally needs both classes, and you cannot add a class to an application after filing.
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