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.
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.
Contents:
- What do you want to trade mark?
- Are there any limitations on what can be registered as a trade mark?
- When is the best time to register a trade mark?
- What are the benefits of trade mark registration?
- Do I need a solicitor to register a trade mark?
- Who will own the trade mark?
- How do I register a trade mark in the UK?
- How long does it take to register a trade mark?
- How much does it cost to register a trade mark in the UK?
- What can you do if another business opposes your trade mark application?
- What can you do if your trade mark application is rejected?
- How long can a registered trade mark last?
- Summary
What do you want to trade mark?
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 are primarily concerned with protecting their brand name and any accompanying logos and symbols; luckily, these are often the easiest assets to protect.
Are there any limitations on what can be registered as a trade mark?
Trade mark registration is dependent on two main criteria, the first being 'absolute grounds', relating to the mark itself and whether it is suitable for registration and the second being 'relative grounds', relating to other parties’ prior marks and whether your mark is too similar to them and likely to be confused with them.
Absolute Grounds
To be registrable, a mark must be represented in a clear and precise manner and be capable of distinguishing the goods of one undertaking from those of another. The second part of this is split up into the following criteria:
- the mark must have distinctive character;
- the mark must not be purely descriptive of the kind, quality, quantity, intended purpose, value, geographical origin, the time of production or other characteristics of the goods or services to be covered;
- and the mark must not have become customary in the current language or in the bona fide and established practices of the trade.
The trade mark must not be contrary to public policy or to accepted principles of morality or deceptive in relation to the goods or services to be covered, must not have been applied for in bad faith and must not contain a protected emblem. You must have a genuine intention to use the mark and sign a declaration on the application form to this effect.
Relative Grounds
These relate to the existence of prior rights which conflict with or may be damaged by the registration of your mark. They relate to prior trade marks and rights which are:
- Registered identical marks covering identical goods and services;
- Registered identical marks covering similar goods and services, where there is a likelihood of confusion;
- Registered similar marks covering identical or similar goods or services, where there is a likelihood of confusion;
- Registered identical or similar marks with a reputation in the UK, where use without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the prior mark;
- Prior non-registered marks where use would constitute “passing off” of the prior mark owner’s goodwill;
- Prior copyright, design right and other legal rights which are likely to be infringed.
The Intellectual Property Office (IPO) will not refuse an application on relative grounds unless an opposition has been filed by a third party and succeeded.
When is the best time to register a trade mark?
Ideally you will register your trade mark as soon as possible, once you have set up your business and before you start trading; to protect your brand and prevent others from using it without permission. Delaying registration could leave your brand vulnerable to infringement by others. It is also likely to be more costly to your business if you discover a conflict after you have already commenced trading and built up goodwill in your mark and then find that you have to restrict your activities under the brand or even re-brand entirely.
It is not always possible to register your mark immediately and you may not have been aware of the need to register your mark until a potential conflict appears on the horizon.
If your brand is constantly evolving or you’re unsure about its long term viability it may be prudent to delay your registration but you should discuss this with a trade mark solicitor or attorney to decide upon the best strategy for your business.
What are the benefits of trade mark registration?
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.
Do I need a solicitor to register a trade mark?
There is no requirement to use a trade mark solicitor when registering a trade mark in the UK. Unless you have a thorough knowledge of trade mark law, then it is highly recommended that you do. There are many hidden pitfalls that could result in your application failing or, even worse, your business being subject to trade mark infringement or passing off claims. You may also be liable for costs and damages as well as having to completely re-brand. If your application is rejected, the Registry will not refund your money. You may be lucky and your trade mark sails through the process without any objection but more often than not, somewhere in the process, are likely to receive an objection or opposition.
Who will own the trade mark?
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. 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.
How do I register a trade mark in the UK?
You may think that the first step is to fill in and submit the application form (TM3) and pay the application fee. You could do this, but this is a risky approach. It is far better to instruct a trade mark solicitor or attorney to conduct trade mark clearance searches before you go ahead to see if your chosen mark is available for use and registration. If the risks posed by earlier, similar registered marks are too great, you can then discuss changing your mark as may be required to try to avoid any conflicts before you proceed.
You will then need to consider which goods and services you want the mark to cover. This will depend on factors such as your existing and future business plans, cost, potential competitors and what is covered by prior, similar registered marks owned by third parties. Drafting the wording of the goods and services must also be in line with the current edition of the “NICE” criteria, which is the international classification of goods and services applied for the registration of marks.
Other considerations are whether you want to register your mark in colour if it is a logo. There may also be specific requirements relating to the type of mark that you want to file, for example a non-conventional mark such as a shape, sounds or smell or a certification or collective mark.
Only once you have decided all the above a trade mark solicitor will help you complete TM3 application form and submit it to the UK IPO. You can do this online or in paper format, by post. There is a discount for online filing. The registration fee is payable at the time of submitting the application form and this can be paid by debit or credit card, cheque, bank transfer or via an online account with the IPO.
How long does it take to register a trade mark?
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 it cost to register a trade mark in the UK?
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?
Trade mark 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. If the parties cannot reach an amicable solution, the matter will be decided by the Trade Marks Tribunal.
What can you do if your trade mark application is rejected?
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. 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.
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.
How long can a registered trade mark last?
Trade mark protection lasts for 10 years but can be renewed indefinitely, subject to the payment of additional fees.
Summary
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.
