How to Register Your Trade Mark in the UK

Your business’s brand is a valuable asset you can protect by registering a trade mark. Registering a trade mark in the UK is relatively straightforward and inexpensive. However, you must be aware of some things to complete the process correctly. This article will explain what you need to know about trade mark registration in the UK.

Trade Mark Essentials

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Trade Mark Registration Basics

You must register a trade mark through the Intellectual Property Office (IPO). There are effectively three steps to the process of registering a trade mark:

• checking if your trade mark is registrable;
• completing the online application (or application form if you are applying by post); and
• responding to any objections/oppositions to your trade mark application (if applicable).

Is Your Trade Mark Eligible to be Registered?

A trade mark is any sign used in the course of trade to allow consumers to differentiate the goods and services of one business from another. Your trade mark can consist of words, sounds, logos, colours, or any combination of these things. Common marks to register are your business name, and any logo(s) or taglines. However, not everything qualifies as a trade mark. For example, you cannot register a trade mark that includes an offensive term (like swear words).  

You also cannot register a trade mark that only describes your business and the goods you sell (i.e. a trade mark that is too descriptive or generic). For example, if you sell wool sweaters, you cannot simply register the term ‘wool sweaters’. There are other rules about misleading terms, such as using shapes associated with the goods you sell and logos that look similar to flags or other state symbols.

Before proceeding to the application stage, you must check that no one else has already registered a trade mark similar to your intended trade mark. You can do a simple search by searching the trade marks database, but you should also do research online in other places to assess if your trade mark is being used unregistered.

What if Someone has Already Registered a Trade Mark Similar to Mine?

If someone else has already registered a trade mark similar to yours, this does not automatically mean you cannot register your brand as a trade mark. You can consider contacting the person or business that holds the existing trade mark to ask them for permission to register your intended trade mark. Alternatively, you can apply and hope the other owner doesn’t oppose your application. 

It is also relevant whether the person is selling products similar to yours. For example, suppose you are selling apples in Norwich, but a person using a similar mark is providing engineering services in Cardiff. Here, someone is unlikely to be confused because your respective branding is similar.

If you apply for a trade mark similar to an existing one, you should be aware that the IPO will contact the holder of that one. The owner of that trade mark will then be aware of your application and can object to it if they wish to.

The Trade Mark Application Process

You can apply to register your trade mark online. Alternatively, you can apply by post, should you prefer.  

What is a Trade Mark Class?

When you apply for a trade mark, you must specify the type (or types) of goods or services the trade mark relates to. This means that your trade mark will only apply to those specific types of goods or services (and other goods and services considered to be similar). That means you must think carefully about what you want to use your trade mark for. You must ensure this is reflected in your application.

For example, suppose you have decided to open up a wool shop and want to register a trade mark for your new business’ logo. You intend to sell different types of wool and yarn for knitters and fleeces from sheep for people who spin. You are also potentially going to sell fabric made from wool. In this instance, there are at least three different classes that you may want to consider registering your trade mark in. Class 22 covers the fleeces, class 23 covers wool and yarn, and class 24 covers woollen fabrics. If you plan to offer knitting or spinning courses in your store and want your trade mark to apply to courses you offer, then an application in class 41 would be appropriate.

What Information Goes in the Application to Register a Trade Mark?

You must provide information about:

• your intended trade mark;
• the classes you have selected; and 
• a list of the actual goods and services included in your trade mark.

If we take our wool example, you would write ‘wool yarn; silk yarn; wool fleeces’. You should consider this carefully to use your trade mark for everything you want. It is not possible to add other goods or services later.

The IPO also offers the ‘Right Start’ trade mark application. This costs more but allows an examiner to assess your application in advance. You will pay 50% of the fee upfront, and someone will check your application and provide a report explaining whether your application is suitable. If it is, you can pay the remaining costs and proceed to registration. However, if there are any issues with your application, you can fix them or decide against registration, having only paid 50% of the fee.

The following table outlines the costs involved in registering a trade mark:

What Happens After I Have Applied?

Once you have sent in your application, the IPO will review it, and you will receive feedback in the form of an examination report. If there are no issues with your application, the IPO will publish it in the trade marks journal for two months. During this time, other people can see your intended trade mark and can object to it if they wish to. If there are no objections, the IPO will then register your trade mark for 10 years, and you can renew it for another 10 years.

What Happens if Someone Opposes My Trade Mark?

Someone could oppose your trade mark application, for example, because they have a trade mark they believe is similar or could cause confusion with your trade mark. Otherwise, a person may object because they have been using a very similar trade mark for a long time.

In this case, you must overcome the objection before registering your trade mark. In this situation, if you still wish to go ahead with your trade mark, you may want to discuss the matter with the person opposing it. You may also want to defend yourself, but this could result in high legal costs. Therefore, it is simpler to ensure that your trade mark is unique before filing.

What Benefits Do I Get From Having a Registered Trade Mark?

Registering your trade mark enables you to protect your brand. Not only does this ensure you have the exclusive right to use your trade mark, but you can also take legal action against anyone who uses your trade mark without your permission. In addition, a trade mark is a valuable asset for your business. You can sell your trade mark or let someone else use your trade mark in exchange for compensation.

Do I Need to Do Anything Once My Trade Mark is Registered?

Once your trade mark has been registered, you will enjoy the above benefits for ten years from your filing date. After this, you can simply pay a renewal fee to extend your protection indefinitely for ten-year periods. However, your trade mark can be attacked during this time, most commonly for “non-use”. This may occur if you have registered a trade mark but have stopped using it. Therefore, once you have registered a trade mark, you must use it to prevent anyone from making one of these claims against you.

Key Takeaways

Trade mark registrations are a valuable asset for your business. They protect your company’s brand and give you the exclusive right to use your trade mark for your goods and services. It is relatively straightforward to apply for a registered trade mark. However, you must consider what you want to use your trade mark for before proceeding with your application so that you can select the correct classes.

If you need help registering your trade mark in the UK, 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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