Trade marks are a type of intellectual property. They operate as a ‘badge of origin’, immediately alerting consumers that the goods or services in question originate from the trade mark owner. Despite their intangibility, they are powerful rights, playing a crucial role in brand development, recognition, commercialisation and protection. An easily recognisable, trusted brand has an immediate advantage over its competitors, and, for some businesses, the intrinsic value of its trade mark can surpass that of all other assets.
By registering your brand name and other identifying features as trade marks, you secure a monopoly over the use of those marks in connection with the goods or services for which they are registered. A registered trade mark can be commercialised in the same way as tangible assets, through licence, sale or mortgage, and can be relied on to prevent third parties from copying your brand.
In this guide, our trade mark solicitors explain the steps you will need to take to register a trade mark in the UK, how much it costs to register a trade mark and what options are available to you if someone opposes your trade mark application.
- What do you want to trade mark?
- Trade mark searches
- Ownership of your trade mark
- Trade mark classification
- Trade mark jurisdiction
- Submitting your trade mark application
- How much does trademark registration cost?
- What can you do if another business opposes your trade mark application?
- What can you do if your trade mark application is rejected?
- Trade mark renewal
What do you want to trade mark?
Generally speaking, anything capable of being depicted graphically can be registered as a trade mark, provided it fulfils the other registration requirements. Words, logos, pictures, sounds and even smells have all achieved trade mark registration. Many businesses, however, are primarily concerned with protecting their brand name and any accompanying logos and symbols; luckily, these are often the easiest assets to protect.
Numerous criteria must be met before a mark will be accepted for registration. Crucially, the proposed mark must be distinctive and capable of distinguishing the goods or services of the owner from those of others. It must not be descriptive – the mark ‘The Bed Shop’ is unlikely to be registrable by a wholesaler of bedroom furniture, for example. Other requirements include that a mark must not be offensive and must not mislead consumers –a mark implying something is organic when it is not, for example, is not registrable.
Trade mark searches
It can be catastrophic to spend time and money developing a brand only to discover that it is incapable of trade mark protection or, worse still, infringes an earlier right. It is, therefore, vital to seek advice from an experienced trade mark specialist at the earliest stages of brand development. Our trade mark solicitors will review your ideas and ensure they fulfil the registration criteria before you incur the time and cost of pursuing them. They will also undertake comprehensive searches of the trade marks register and any other relevant sources to confirm that your proposed branding is unique and will not infringe any earlier third -party marks.
Ownership of your trade mark
Generally speaking, any natural or legal person can be a registered trade mark owner. A trade mark can be held jointly by several people or entities.
It may seem insignificant, but deciding who will be registered as the owner of your trade mark is an important decision and one which should be given careful consideration. Crucially, trade marks are vulnerable to cancellation for non-use on the part of the trade mark owner. If the trade mark is examined for non-use cancellation, the use by an entity different to the registered owner may be disregarded, even if the entities are linked. So, if you own multiple businesses, it is important to make sure the trade mark is registered in the name of the one likely to use it first, and most.
Our trade mark solicitors will assist you in identifying the most appropriate registered owner of your trade mark, and consider whether any additional documentation, such as intra-company licences, might be required to fully protect your position.
Trade mark classification
Trade mark registration does not provide a monopoly over the mark in general, but in respect of its use in connection with specified goods and services. In the UK, there are currently 45 different classes of goods and services for which registration can be sought, and it is important to select those which are most relevant to your business.
Often, a business will require protection across several classes. A clothing retailer, for example, will require protection in class 25, which covers most aspects of clothing, footwear and headgear. It may, however, also need registrations in class 18 which includes handbags, and class 35 covering retail services relating to clothing.
If you fail to obtain protection in a relevant class, you may be unable to enforce your mark, even if you have registrations in other classes. Conversely, if you throw your net too wide and seek to register your mark in respect of goods or services you do not offer, your application may be more likely to be rejected or receive opposition from existing rights holders and might subsequently face cancellation for non-use.
Trade mark jurisdiction
Whilst trade marks are powerful rights, their applicability is limited to the territory of registration. You must, therefore, identify all of the countries in which you intend to operate, and consider seeking trade mark protection across them all. You may need to apply to each country’s trade mark office, or there may be scope to use the European or International registration systems.
Our trade mark solicitors will identify the most cost-effective way for you to achieve the extent of protection required, and advise on the appropriate procedure.
Submitting your trade mark application
In the UK, trade mark applications are made to the UK Intellectual Property Office (IPO). Your application must include a carefully drafted ‘specification’ detailing the proposed mark together with the goods and services in connection with which you intend to use it. The IPO will examine your mark to check that it fulfils the registration criteria and is not the same as, or too similar to, any existing trade mark. Your application will then be published in the Trade Marks Journal to allow interested third parties to oppose it should they wish.
The length of time it takes to obtain trade mark registration varies depending on the nature and extent of any issues which arise. On average, a straightforward mark which receives no opposition can proceed to registration in around 3 – 4 months.
How much does trademark registration cost?
It currently costs £170 to register a trademark online in one class. This is the fee charged by the IPO and does not include legal fees. Since the registrability and subsequent enforcement and commercialisation of a mark depend heavily on a well-drafted specification, you should seek specialist help to prepare the application. For a small fee, our experienced trade mark solicitors will prepare your application, ensuring it is as watertight as possible and has the greatest chance of proceeding to registration, and deal with any oppositions raised.
What can you do if another business opposes your trade mark application?
Oppositions can be raised on either ‘absolute’ or ‘relative’ grounds. Absolute grounds refer to issues inherent in the proposed mark itself, such as if it is generic, descriptive or lacks distinctiveness. Anyone can raise an opposition on absolute grounds. Relative grounds apply where a third party contends your mark infringes an earlier right. Only the owner of the earlier right can oppose on relative grounds.
The raising of an opposition does not mean that your trade mark application is doomed to fail. Often, an amicable resolution can be reached between the parties, whereby they agree terms on which their marks can co-exist. Our trade mark solicitors regularly negotiate settlements on behalf of clients facing an opposition, with excellent results.
If the parties cannot reach an amicable solution, the matter will be decided by the Trade Marks Tribunal. Our trade mark solicitors will guide you through the procedure and present your case in the best possible way.
What can you do if your trade mark application is rejected?
If a trade mark fails to meet the registration criteria, it will be rejected by the IPO. Common reasons for rejection include –
- The mark is descriptive. A trade mark cannot be merely descriptive of the nature or characteristics of your goods or services.
- The mark lacks distinctiveness. Inherently distinctive trade marks are ones the public has never encountered before; Adidas or Pepsi, for instance. They are essentially made-up, fanciful words and will immediately alert consumers that the product originates from you, since the term is used in no other context. Marks which are generic, descriptive or suggestive of the nature or characteristics of your goods or services will not satisfy the distinctiveness requirement.
- The mark is too similar to an existing trade mark. If the same or a similar mark is already in use for the same or similar goods or services to the ones you offer, your application may fail.
If your trade mark is rejected, our trade mark solicitors will advise on the most appropriate course of action in your case. This may include:
- Appealing the decision. You can appeal against the IPO’s decision to either the ‘Appointed Person’, or the High Court. Appointed Persons are senior intellectual property lawyers, usually barristers, with extensive experience in intellectual property law. Appeals to the Appointed Person are relatively quick and cost-effective, but, once the Appointed Person has made their decision, it is binding and cannot be appealed further. A decision of the High Court, on the other hand, can be appealed in the same way as any other Court Judgment, firstly to the Court of Appeal, then beyond. However, Court proceedings are notoriously lengthy and expensive. The appropriate appeals procedure will depend entirely on the facts of the individual case.
- Modifying and resubmitting the application. It may be possible to address an opposition by making minor amendments to your trade mark application. For example, if an earlier rights holder opposes on the basis that your mark would infringe theirs, you might be able to overcome the opposition by limiting the goods and services over which protection is sought.
- Exploring alternative routes of protection. If your trade mark application cannot be salvaged, all is not lost; you may still benefit from protection by alternative types of intellectual property. Artistic works such as logos and pictures might be protected by copyright which arises automatically, without the need for registration. Some elements of your branding or product design, such as logos, shapes and packaging, may also be eligible for design right protection. Design rights can be registered or unregistered, and the appropriate type will depend on the nature of the asset you need to protect.
Whilst the protection provided by these alternative rights is in some respects less extensive than that afforded by a registered trade mark, they do offer certain advantages. Their scope is not limited to specific classes of goods, for example, and registered design right applications are cheaper and subject to a lesser degree of scrutiny than those relating to trade marks.
Additionally, if a third party uses your branding without permission, you may be able to seek recourse under the tortious remedy of ‘passing off’. Passing off is sometimes referred to as an ‘unregistered trade mark’ right and is intended to prevent unauthorised third parties from taking advantage of your goodwill and reputation by implying a connection between their goods and your brand. The remedies available in a passing off action are similar to those applicable to trade mark infringement, although the criteria which need to be met, and the extent of evidence required, are more extensive.
Trade mark renewal
Trade mark protection lasts for 10 years but can be renewed indefinitely, subject to the payment of additional fees.
A registered trade mark is one of your business’s most valuable assets and plays a crucial role in brand development, protection and commercialisation. Provided it is properly renewed, a trade mark’s longevity is unparalleled. It is vital to work with specialist trade mark solicitors from the outset of brand development to ensure your proposed branding is capable of protection, and to give your subsequent trade mark applications the best chance of success. Following registration, your trade mark must be properly maintained to prevent lapse, and effectively enforced against unauthorised third party use to prevent brand dilution, reputational damage and financial loss. Our trade mark solicitors are experienced in every aspect of trade mark law and procedure, and will assist you in developing an effective, cohesive brand protection strategy in the most cost effective manner.