Many people decide to file their own trade mark registrations and on the face of it, the application process can appear to be deceptively simple. In this article, our trade mark solicitors highlight some considerations you need to take into account when filing a trade mark application in the UK and the risks of getting it wrong.
If you need help carrying out a search or preparing to file your application, our experienced trade mark solicitors can guide you through every step. We offer practical, hands on support to improve your chances of securing a successful registration.
Contents:
Can I register a trade mark on my own?
You can file your own trade mark application, provided that you satisfy the legal requirements, namely that you have an address for service in the UK, Gibraltar, or the Channel Islands and have a bona fide intention to use the mark in the course of business.
Many people decide to register their own trade mark as it can seem like an affordable and straightforward option, especially when they feel confident in their brand's uniqueness. By filing independently, you maintain control over the process and avoid legal fees, which can make it an appealing choice. While registering on your own may save money upfront, it also comes with many risks which we will now explain in more detail.
What are the common pitfalls of registering a trade mark yourself?
Applying for a trade mark is not as simple as just filing a form specifying the mark that you want to register and paying the requisite fee. There are legal requirements that must be met in order for the mark itself to be accepted and also procedural requirements that the application itself must comply with.
The trade mark itself must meet the requirements of the Trade Marks Act as to its distinctive capacity to identify a particular business and its ability to be represented in a form that is clear, precise and easily identifiable. If the trade mark is not simply a word or image, you will need to describe its characteristics in sufficient detail, such as the specific colours and identifying features. You may need to include a visual, audio or multi-media file in your application, that complies with any requirements of the Registry.
In the trade mark application, you will need to select the number of ‘classes’ of goods and services for which you want the mark to be registered and also list the goods and services in each applicable chosen class. The description should comply with the acceptable terminology that is dictated by the NICE classification system. This is an internationally recognised system used to classify goods and services for the purposes of trade mark registration.
Drafting the description of your goods and services can be a fine art. If you include too many goods or services or include too many classes, you could increase the risk of receiving an opposition to your trade mark application. You could also end up with a cancellation action being filed against your registered mark by a third party, in five years’ time, on grounds of non-use of your mark for some of the goods and services that you have included.
On the other hand, if you miss off some goods and services that you find you want to expand into in the future, you will not be able to broaden the scope of your registered mark at a later date but would instead need to file a new application to cover any extra classes. This can all result in additional cost and risk to your business and brand.
Other requirements for the application include providing details of who is to legally own the registered trade mark along with a correspondence address. The owner must be an individual or a legal entity and you will need to give consideration as to who will be the most appropriate owner for your trade mark.
If the application does not meet these requirements, and you fail to rectify any errors within a specified period, it will be treated as abandoned.
You are likely to incur costs in rectifying any errors or dealing with objections raised by the Examiner, particularly if you cannot overcome these and need to file a new application.
What are the legal risks if I make mistakes in the application process?
Your application could be delayed or worse still be refused and as well as losing the application fee, which is non-refundable, you could lose your position in the registration ‘queue’. Once filed, your application will gain a filing date that gives it precedence over subsequent applications for the same or similar marks, provided that those subsequent applications do not have priority from prior applications in other countries or from prior use of those marks in commerce. If your application fails, you will lose your original filing date and have to start all over again.
At what point should you seek legal advice during this process?
Ideally, you will have filed the application correctly in the first place and the Examiner will not ask you to make any amendments to the list of goods and services or other details in your application. Even if this is the case, there is still a risk that, once published, your trade mark application will attract an opposition from the owner of a prior registered mark on the basis that it is identical or too similar to their mark and covers identical or similar goods or services.
Conducting trade mark clearance searches for similar registered marks before you apply to register your mark can also reduce the risk of receiving an opposition or finding out that your chosen mark is not actually available to register or use. This can save costs in the long run and is far preferable to a costly re-branding exercise further down the line.
Summary
If you are confident in your chosen brand and have conducted a trade mark search, there is nothing to stop you from preparing and filing your own trade mark application. There are some hidden pitfalls and complications that you will need to be aware of and you should thoroughly research the application process and have a working understanding of trade mark law to ensure that your application proceeds as smoothly as possible.
