Our trade mark FAQs are answers to common questions from a broad range of our clients: some want a grounding in the basics, and other clients are already working with trade marks. Whether you’re just getting started or you already have trade marks that need managing and protecting, our expert team of trade mark solicitors are here to help.
Click to jump to individual trade mark FAQs:
- What is a trade mark?
- What can be registered as a trade mark?
- Why should I register a trade mark?
- When should I register my trade mark?
- Can I apply for a trade mark if I'm not using it yet?
- Who can apply for a trade mark?
- How long does trade mark protection last?
- Applying for a Trade Mark
- Protecting and Using Your Trade Mark
- What is the difference between ® and ™ symbols?
- What should I do if someone else already has a similar trade mark?
- Can I license my trade mark to another business?
- What will happen if I stop using my registered trade mark?
- Do I need to register my trade mark with online marketplaces like Amazon or Etsy?
- International Trade Mark Protection
- Maintaining and Renewing a Trade Mark
What is a trade mark?
A trade mark is your main brand identifier. It is the words, logos, slogans, packaging, livery, media or combination of any one or more of these that customers use to link specific goods and services with your business. It is intrinsically linked to the goodwill that has been generated by your business and the reputation and trust that you have built up in your brand. The essential function of a trade mark is to distinguish the goods and services of one business from those of others and to indicate their trade origin.
What can be registered as a trade mark?
The Trade Marks Act 1994 sets out the conditions that must be met for a trade mark to qualify for registration. This states that a trade mark must be capable of being represented in a clear and precise manner and must be distinctive enough to be able to distinguish the goods or services of one undertaking from those of others. Taking the first part of this, you must be able to represent the mark in a way that is self-contained, durable, and objective so that the mark is intelligible and unambiguous. The exact manner of representation will vary according to the type of trade mark. For example, applications to register packaging marks must depict the exact words and design elements that you want to protect and disclaim anything extraneous. Sound marks can be represented by a single MP3 file not exceeding 2 MB in size or graphically by depicting a musical stave divided into bars, showing a clef, musical notes, rests, and accidentals.
The other aspect is that a trade mark must be distinctive enough to perform its essential function and must not simply be directly descriptive of the goods and services for which it is to be registered or of characteristics of them such as kind, quality, quantity, intended purpose, value, geographical origin, time of production. As well as ensuring that the trade mark is memorable and fit for purpose, this requirement also ensures that no one is given a monopoly in a word or other trade mark that other businesses will need to use.
Other “absolute grounds” for refusal of a trade mark registration include marks that are deceptive in relation to the goods or services, marks that are generic or commonly used in industry, marks that consist entirely of shapes that result from the nature of the goods or are essential to achieve a technical result, or which give substantial value to the goods, marks that are contrary to principles of morality or public policy and marks that are prohibited by law or are protected emblems or signs.
Why should I register a trade mark?
Trade marks can be registered or unregistered but registration provides stronger protection. Registration provides proof that you are the legal owner of the mark and that the trade mark is valid and subsisting. It also enables you to take legal action by way of trade mark infringement proceedings against anyone who uses the same or a confusingly similar trade mark for the same or similar goods or services and to obtain a variety of remedies to compensate you for any unauthorised use. Provided that the mark is registered, you will not need to provide any additional evidence to show that you are the legal owner.
You can place the registered trade mark symbol, ®, next to your registered trade mark when you use it in commerce, to put third parties on notice of your registered rights.
A registered trade mark is an asset in itself that can be licensed, sold, charged or transferred in the same way as any other item of personal property.
Registering your trade mark can also add value to your business and attract investors and funders who often require any trade mark to be registered as a condition of investing as they are more secure and transferrable.
Unregistered trade marks, on the other hand, are not assets in themselves and cannot be transferred separately to the underlying goodwill and business that has been attached to them. It is not possible to bring an infringement action against the use of an unregistered trade mark but instead, you must establish a “passing off” claim by providing evidence of the use of the trade mark in commerce and the generation of goodwill through such use.
When should I register my trade mark?
You should register your trade mark as soon as possible, ideally before you have started to trade under that mark. This is so that you have not yet invested too heavily in the brand and trade mark before you know that it is capable of being registered and does not infringe the rights of any third parties. In general, it takes around 6 months for a trade mark to be registered in the UK so you should build this into your business plan and manage any product launches.
Can I apply for a trade mark if I'm not using it yet?
Yes, but you should have a bona fide intention to use the trade mark in business for the goods and services for which it will be registered. You should conduct trade mark clearance searches to check that no one else has registered or applied to register or is already using the same mark or a similar mark in relation to a similar business before you apply to register it. To understand how this process works in practice, read our trade mark clearance search guide.
Who can apply for a trade mark?
Anyone can apply to register a trade mark in the UK. The applicant must have a bona fide intention to use the trade mark in business for the goods and services applied for. If the applicant is not based in the UK, they must appoint a UK representative to act as their address for service.
The applicant can be an individual or a company and consideration must be given as to who you want to own the registered trade mark. If you are a sole trader, then you will have to apply as an individual but if you have a limited company, you may prefer the company to be the legal owner. This means that the trade mark will be an asset of the company and that the company will be liable in the event of an infringement action.
Registered trade marks can also be owned jointly by more than one individual or company or a combination of both. Joint ownership brings with it its own considerations and it is advisable to enter into a joint ownership agreement to regulate any dealings with the registered mark.
How long does trade mark protection last?
Trade mark registration lasts for ten years from the registration date which is backdated to the date that you filed the registration application. You will receive a reminder to renew your registration six months’ before its expiry and will need to pay a renewal fee to the Registry. Late renewal may be possible up to a year after the expiry date, subject to payment of additional fees.
There are certain scenarios in which your trade mark registration may be cancelled before it has been registered for ten years. Once your registration is five years’ old, it will be subject to “proof of use” requirements, which apply if your registration is challenged by a third party or if you want to rely on your registered trade mark to bring a trade mark opposition or cancellation action against another mark or an infringement action in the court. A registered trade mark can also be challenged at any time by a third party who claims to have prior rights to the mark or a confusingly similar mark.
Applying for a Trade Mark
You should conduct clearance searches of the Register before you decide on your chosen brand and before you file your registration application. You should also investigate whether the mark is already in use in commerce by another business through ‘common law searches’.
Clearance searches of the Registers are often conducted by legal advisors and involve generating a list of identical and/or similar marks that are already on the Register. Your trade mark solicitor will then analyse the results and produce a report outlining the risks in legal and commercial terms.
Common law searches can include internet searches, domain name searches, searches of the company name register at Companies House, social media searches and directory searches.
Both types of searches are crucial for assessing potential conflicts with earlier rights before adopting or registering a new trade mark.
What is the process for registering a trade mark in the UK?
Trade mark registration applications are filed at the UK Intellectual Property Office (UK IPO) either online or by submitting a paper form by post. The application form must contain a clear representation of the mark, name and address details for the registered owner, details of any appointed legal representative and a description of the goods and services that will be offered under the mark by the trade mark owner.
When you have filed your application and paid the application fee, it will be passed to an Examiner who will check whether the mark satisfies the requirements for registration and check that the goods and services are correctly described and classified. The Examiner will then issue an Examination Report which sets out any objections and a time period in which you can respond.
After the application has been successfully examined, it will then be published for opposition purposes. This is a two-month period, which can be extended to three months by a potential opponent, during which third parties can file oppositions to the application if they think that your mark is too similar to their prior registered or unregistered mark and likely to cause confusion. You will need to overcome any opposition that is filed against your application before it can proceed to registration. This could be achieved by negotiating a compromise with the opponent or filing a defence to the opposition and evidence and submissions in support of your arguments.
If there are no oppositions or if any oppositions have been successfully overcome, your mark will then be registered and you will receive a registration certificate from the UK IPO.
What are trade mark 'classes' and how do I know which ones to choose?
When you apply for a registered trade mark, you must list the goods and services that you want for your business to offer under that trade mark. The UK IPO splits up the goods and services into separate “classes”, which contain similar types of products or services as classified in accordance with the ‘NICE’ international classification system. There are 34 classes of goods and 9 classes of services. For example, class 25 covers clothing, footwear and headgear whilst class 9 covers protective helmets and safety gloves. It is important to classify and describe your goods and services correctly or you will receive an ‘objection’ from the Examiner and have to re-submit an amended list. In general, it is not possible to add extra classes or additional goods or services to your application, after you have filed it but the Examiner may allow certain goods or services to be transferred to new classes if they have been incorrectly classified.
Can I register a trade mark in multiple classes?
Yes, you can include as many classes as you want in your application. If your list of goods and services is too vague and/or unnecessarily wide, you may face objection from the Examiner, including a bad faith objection if it is doubtful that you have a bona fide intention to use the trade mark for all the goods and services included. You should also bear in mind that the more classes you include, the greater the risk of receiving an opposition from a third party with a similar mark for the same or similar goods and services. There is also a fee to pay for each additional class in your application (currently £50) so you may want to limit the number of classes to keep the cost down.
For more information on the trade mark classification system, you should read our detailed trade mark classification guide.
How long does the trade mark application process take?
On average it takes around six months from filing your application at the UK IPO to registration. This can vary though depending on how your application proceeds and whether it receives any Examiner objections or third party oppositions. An opposition can take over a year to be concluded so you should bear this in mind when assessing the risks associated with your chosen trade mark and drawing up your business plans.
How much does it cost to register a trade mark in the UK?
An application for a single trade mark in 1 class of goods or services costs £170 if filed electronically and £200 if filed on paper. This does not take into account any solicitor’s fees for preparing and filing the application and conducting any pre-filing clearance searches. The costs may also increase if your application is objected to by the Examiner and/or opposed by a third party and you need to seek additional legal advice.
Protecting and Using Your Trade Mark
What is the difference between ® and ™ symbols?
The ® symbol is the registered trade mark symbol and can be used to signify that your trade mark has been registered for the goods and services for which you are using it. This acts as a deterrent to competitors from using the same or a similar trade mark. It is a criminal offence to use the ® symbol if your trade mark is not registered or for goods and services which are not covered by the registration. You should be careful if you are offering goods and services via a website or other means where they can be accessed internationally, including countries where your trade mark is not registered. In this case, it may be safer to use the TM symbol on your website or product packaging.
The TM symbol is used to denote an unregistered trade mark and can be used to denote that you have goodwill in a particular trade mark and are using it in relation to your business. You can use the TM symbol for example, whilst your registration application is pending or if you have not been able to register the trade mark due to it being descriptive or lacking sufficient distinctiveness.
In each case, you should be careful to ensure that you place the ® or TM symbol immediately next to the word(s) or image that you have registered or have been using and so that it does not include wider aspects such as an unregistered logo or additional unregistered words.
What should I do if someone else already has a similar trade mark?
There are various steps that you can take depending on the circumstances and you should discuss the best way to proceed with your trade mark solicitor. If the third party appears to have been trading for some time and/or has a registered trade mark, you will need to assess whether the mark is likely to be confused with yours and whether the goods and services are similar, competing or complementary. If the answer is yes, then you will need to decide whether you want to change your brand in order to minimize the risk of liability or infringement or passing off or whether you want to contact the prior mark owner to try to negotiate co-existence or obtain a licence from them to use your mark.
If someone has a registered trade mark that is similar to yours but which is over five years’ old and you cannot find any evidence of them having used the mark in commerce recently, you may be able to use your mark and could also possibly register it. It could be that the registered owner is no longer interested in the trade mark and so does not file an opposition to your registration application or, if they did, you may be able to challenge the validity of their registered mark and bring an action for its cancellation. If you believe you are in a position to revoke another persons trade mark, read our trade mark revocation guide for some practical tips.
Can I license my trade mark to another business?
Yes, you can license the use of your registered trade mark to a third party. This can be extremely useful in generating most the value of your trade mark, by allowing it to be used in markets or for product lines that your business is not yet established in itself. You can enter into an exclusive or non-exclusive licence depending on whether you also want to use the mark yourself or grant a licence to anyone else. Granting a licence will enable you to charge a licence fee for authorising the use of your trade mark and to fulfil any ‘in use’ requirements to keep your trade mark registration active and not vulnerable to cancellation on grounds of non-use. You should ensure that any licence agreement is properly drawn up by a lawyer so that it contains adequate protections for your trade mark and business.
What will happen if I stop using my registered trade mark?
If your trade mark is registered, you have a five-year grace period from the registration date in which to commence use of the mark before the registration becomes vulnerable to action for cancellation on grounds of non-use. Once you have commenced use of the mark in business, you can stop using it briefly for short periods, but you will need to be able to show that you have used the trade mark in every subsequent five-year period. If you suspend your use of the trade mark for an uninterrupted period of five years and do not have proper reasons for the non-use then your registration will again become vulnerable to cancellation. If you only use the mark for some of the goods and services in your registration, then it may be partially cancelled for the remaining items. Genuine use of a trade mark means that there must be real commercial exploitation of the mark in your market for the goods or services concerned.
If you want to abandon the mark and change your brand, you may be able to sell the registered trade mark to a third party or license its use so that you still obtain a commercial benefit from it.
Do I need to register my trade mark with online marketplaces like Amazon or Etsy?
It is not essential to register your trade mark with online marketplaces. But doing so can make enforcing your brand easier. For example, Amazon has a Brand Registry which has tools that can make it easier to identify and take action against counterfeiters and sellers who are infringing your registered trade mark. Once you have registered your trade mark on the platform, you can make use of automated searches for infringing content and file take-down notices to request that any infringing content be removed. This is cheaper and quicker than bringing an action for trade mark infringement in the courts.
International Trade Mark Protection
Is my UK trade mark automatically protected in other countries?
Registering your trade mark in the UK does not mean that it has any protection in our countries. Trade mark registration is territorial so you will need to apply to register the trade mark in each country in which you intend to trade.
Similarly, using your mark in the UK will not generally give you any rights abroad. If you have traded under the mark in some countries, you may have unregistered trade mark rights there.
How can I protect my brand when expanding into international markets?
You will need to develop a trade mark protection strategy when expanding the use of your mark abroad. This should include conducting clearance searches of the foreign Registries to see if your mark is available to use and/or register there, conducting unregistered trade mark searches including domain name and company register checks and devising a registration plan. You may need to amend your mark somewhat to adapt it for use in a certain country, particularly where your searches have identified potential risks. You may need to seek the advice of foreign attorneys either directly or through your usual trade mark lawyers in order to understand the legal risks and registration procedure in a particular country or territory.
How do I identify what countries I should register my trade mark in?
This will depend on your commercial strategy and issues such as available funds and how easy it will be to enforce your mark in different countries. You will need to identify where your primary and secondary markets are and prioritise those countries where you will be trading initially i.e. where your goods or services will be sold, manufactured, or licensed. Then, after this, you can extend your protection to additional territories where you may expand into in the future.
Additionally, some countries, such as China, are well-known hot spots for trade mark infringement or counterfeiting so you may want to include these in your filing strategy.
Can I register my trade mark internationally before launching my product or service abroad?
Yes, you can register your brand internationally before commencing use of your mark abroad and this is often recommended to ensure that you are protected before you launch your business in a new market. In order to take advantage of the World Intellectual Property Office (WIPO) international trade mark application process, you will need to have a registration application or registration in your home territory which you can then use as a ‘base’ for the foreign filings. You can also apply directly to the national Registries individually, although you may need to appoint a local attorney to handle the application for you.
Maintaining and Renewing a Trade Mark
When and how do I renew my trade mark?
A UK trade mark registration will need to be renewed every ten years. This is done by filing a renewal form at the UK IPO and paying the renewal fee of £200 plus an extra £50 for each class of goods or services over the first.
What happens if I forget to renew my trade mark?
If you forget to renew your trade mark registration in time, there is a six month late renewal period during which you have to apply to have the registration renewed subject to payment of the renewal fee plus a late renewal fee. If it is between six and twelve months’ after the expiry date, your registered trade mark will have been cancelled but you can apply to have it restored to the Register upon payment of renewal and restoration fees if you submit acceptable reasons for failing to renew the registration on time. The failure to renew must have been unintentional and you will not be able to take any action for infringement against a third party who has used your mark without permission in the period between the expiry of the registration and the restoration date.
Can I update or amend my trade mark registration?
You can update various details relating to your registration as and when necessary, by filing the relevant form at the UK IPO. Such details include the name and address of the owner, the representative details and the address for service. You can also apply to restrict or limit the list of goods or services covered by the registration, for example, if you abandon a certain product line or apply to register a wider list of goods/services than you actually end up offering. You can also apply to rectify certain mistakes on the Register.
You cannot change the mark itself. This means that if you start to use a new logo and have registered your trade mark in logo form, your new logo will not have registered trade mark protection unless you file a new separate registration application for the new logo. If you only make small, ‘de minimis’ changes to the logo that do not substantially affect the identity of the mark, you may still be able to claim that your new logo is protected by the registration. It is always advisable to register a word mark application as well as a logo mark for this reason, as you will then be free to use the word mark in any stylisation that you choose.
