There are three basic steps to registering a trade mark in United Kingdom:
- Checking whether the brand qualifies as a trade mark.
- Completing the online application process with the IPO.
- Responding if someone opposes or objects to your application.
Owning a UK registered trade mark means you would be able to:
- Place the ® symbol next to the brand (and sell or license it).
- Take legal action against others who use the brand without your permission (includes anyone counterfeiting it).
Note: Providing no one makes an objection the trade mark registration process takes around four (4) months to complete. United Kingdom registered trade marks last for a period of ten (10) years.
Registering a Trade Mark Outside the UK
If you register a trade mark in the UK, you would only get brand protection inside the United Kingdom. But, there are several different processes for protecting intellectual property abroad.
Apply to Register a Trade Mark
After applying to register a trade mark with the IPO you would not be able to change it and any fees paid would be non-refundable. The information you need to provide includes:
- Details of what you are trying to register (such as an illustration, a name, a slogan, or a word).
- Information from the trade mark classification system stating the class you will register yours in (e.g. class 25 (clothing, footwear and headgear)).
Cost of Registering a Trade Mark
Using the ‘Right Start’ service is the best way to ensure an application meets trade mark rules on registration. The initial cost is £100 and £50 for each extra class. You would receive a report informing you whether the application meets the rules.
Note: You would need to pay the full fee within fourteen (14) days of getting the report if you choose to continue with the application.
You can continue through the application process even if your details fail to meet the initial rules on registration.
- The fee for a standard application (online) is £170 and £50 for each additional class.
- The fee for ‘Right Start’ application (online) is £200 (2 payments of £100) and £50 for each additional class (2 payments of £25).
The Intellectual Property Office produce a list of trade mark forms and fees if you prefer to apply by post. The fee is £200 for one class plus an extra £50 for each additional class.
After Applying to Register a Trade Mark
- As a rule, you will receive an examination report within three weeks (i.e. feedback on the application). The IPO lists the options following an objection to a trade mark examination. In this case, you would get a further two (2) months to resolve any such problems.
- The IPO will publish the application in the trade marks journal for two (2) months if the examiner has no objections to the application. This provides a reasonable opportunity for anyone to oppose it.
- They will then register the trade mark (after you resolve any objections that arise). The IPO will send you a certificate as confirmation.
If Someone Opposes the Application
The Intellectual Property Office (IPO) would notify the applicant if someone opposes it. If this happens, you would have several options, such as:
- Withdrawing the application.
- Discussing the matter with the person who made the opposition.
- Defending the application.
You must settle the matter before you can register your trade mark. In some cases, you may need to pay legal costs to formally challenge an opposing party.
Note: If you are opposed, conducting some research on previous trade mark decisions can help you to handle a dispute and prepare for a hearing.
Once the Trade Mark is Registered
You would need to use Form TM21A to record a change of name, physical address, or email address of the trade mark owner. There is a set process to object and challenge someone else’s trade mark if you feel that they are similar (or identical) to yours.
Keeping registrations accurate and current is the responsibility of UK registered trade marks owners. Thus, you must update or surrender your registered trade marks with the IPO as and when it becomes necessary.
Note: As a rule, registered trade marks last for a period of ten (10) years. You can renew your trade mark up to six (6) months before it expires. You can also choose to license, market, or sell it.
Enforcing Unregistered Trade Mark Rights
Common law torts may help you stop others from using a similar trade mark to yours on their goods and services. For example, passing off and trade mark infringement can occur even if yours is unregistered.
Even so, it can be much more difficult to prove passing off than it would be to defend a registered trade mark. As a rule, success would depend on whether you can show:
- The mark belongs to you and you built up an amount of goodwill associated with it.
- The other person’s use of the mark has harmed you in some way (e.g. financially).
Note: It is wise to get legal advice from a trade mark attorney if you want to enforce your trade mark rights.