What to Know Before Applying for a Trade Mark in the UK

Trade marks are a form of intellectual property that can protect your business’ brand elements. Registering a trade mark is an excellent way to ensure that no one else can use your business name, logo, or product name. However, there are rules around what you can and cannot protect with a registered trade mark. These rules may limit what you can obtain registered trade mark protection for. This article will explore what you should consider before applying for your trade mark in the United Kingdom.

Design Elements

You can register any of the following design elements:

• symbol;
• logo;
• phrase;
• word; or
• colour.

Therefore, you can potentially register a trade mark for your business name, logo, product names, or other aspects of your brand. Being creative when designing your mark can increase your chances of a successful application and make your mark more memorable among consumers. 

To ensure your UK trade mark is unique, you could invent an entirely new word or create a word by combining two existing words. Another option is to use words that are utterly unconnected with what your business does (for example, “Amazon” is unrelated to online retail).

Design

When designing your mark, remember that there are some restrictions when it comes time to register your trade mark. Trade marks that are generic, descriptive, offensive or misleading, or trade marks that are similar to existing registered trade marks may struggle to achieve registration. The best trade marks will be unique to your company. They also cannot take the form of recognised state symbols or emblems, such as flags.

In addition to trade marks, your business can receive other forms of intellectual property rights. If you are the original creator of the mark and it is considered a piece of artistic work, your mark will receive copyright protection. Copyright is an automatic right that protects original pieces of work from the moment of creation. Therefore, unlike a trade mark, you do not need to register for copyright.

Conduct a Search of the Trade Mark Database

Before making your UK trade mark application, you should check the trade marks register to ensure that no one else has registered a trade mark identical or similar to yours. You can avoid a similar or identical trade mark by inventing your trade mark from scratch. However, you should still check for similar trade marks before filing your trade mark application.

Your business can conduct a search of registered or pending trade marks with the Intellectual Property Office. If you find someone else has a similar trade mark, you have a couple of options. You could file your application anyway, but this carries the risk that your application will be opposed. Lower-risk options include altering your trademark to minimise similarities or developing a new idea.

Therefore, before planning or submitting an application for a trade mark, it is important to conduct a search to avoid any potential issues. Equally, it is vital to check the database to ensure you are not unknowingly infringing on another business’ intellectual property rights by using a similar trade mark without their consent.

Choose a Trade Mark Class

When considering trade mark protection, you will have to select trade mark classes ( which describe the goods or services that your business provides) to register your proposed mark in relation to. These classes represent various areas, such as:

• retail;
• agriculture;
• hairdressing;
• sports goods;
• chemicals; and
• clothing.

There are 45 classes in total – 34 relate to different types of goods, and the other 11 relate to services. You can search the different trade mark classes through the UK IPO Search service.

Your trade mark will only be protected within the classes of goods or services you select. Therefore, keep in mind the industry you currently operate in and any areas you will expand into in the near future. 

You can add multiple classes when filing your application to broaden your protection, but this will increase the overall application fee. Likewise, if you do not use your registered trade mark, others can apply to revoke your trade mark for non-use.

Apply For Your Trade Mark

Finally, you can apply for your UK trade mark online through the UK Intellectual Property Office (UK IPO). A standard application costs £170 for one trade mark in one class and £50 for each additional class under which you would like to register your trade mark. 

Consider using the Right Start application process. This service costs £200 for one trade mark class and £50 for each extra class. You pay £100 upfront, plus £25 for each additional class you apply for. The UK IPO will consider your application and advise if your trade mark meets the requirements.

Trade Mark Essentials

LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.

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When you receive their findings, you can decide whether to proceed with your UK trade mark application. If you choose not to go ahead, or the IPO has advised that you cannot register your proposed trade mark, you will lose your payment fee. If you decide to proceed, you then pay the balance of your application fee. 

The Right Start option is good if you are unsure whether your application meets the requirements. The IPO will tell you whether your trademark is registrable before you pay the full fee.

Trade Mark Protection 

Once your trade mark is registered, you will be in a strong legal position to enforce your rights against third parties that begin using a similar business name/logo and demand them to cease using the infringing mark. Your trade mark registration will also act as a defence if any business alleges you have committed trade mark infringement.

Other traders operating in entirely different industries may likely be within their rights to use your trade mark, provided there is no risk of customer confusion.  This is why it is essential to list your goods and services comprehensively.

Your UK-registered trade mark will also not offer you international protection. As trade marks are jurisdictional rights, you should consider registering trade marks in any jurisdiction in which you trade.

Key Takeaways

Before applying for a trade mark for your business, you must consider what elements of your brand you would like to register. You also need to ensure that your proposed trade mark is unique to your business and satisfies the other requirements for trade mark registration. You must also decide which classes you should register your trade mark in. If you want feedback from the IPO on your proposed trade mark before you commit, you can use the IPO’s Right Start Application Service.

If you need help applying for your trade mark, our 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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