Trademark a Logo

“I want to start a business in the UK, for which I have decided the business name and applied for the trademark registration. I have also created a logo through the help of a designer for my business, but do I need to trademark my logo ? If yes, then will I be able to enjoy the trademark rights as the logo is created by a designer ?”

Introduction

Thinking about starting a business in the UK, then you will find it necessary to trademark your business name. If you have created a logo which qualifies to get the trademark protection, then this article would be helpful for you. 

You can acquire the trademark rights once you create a logo which has unique characteristics without getting any legal help. However, without having a trademark registered logo, your rights cannot be fully secured, for that you need to trademark your logo. 

This article will clear all your doubts regarding trademarking your logo in UK as it has answered some of the most crucial questions such as:

1. What benefits will you get after trademarking your logo
2. How to trademark a logo in UK
3. How to know if your logo is strong enough to get accepted for trademark registration

Benefits of Trademarking Your Logo in the UK

Under the Trademarks Act, 1994, Section 1 defines a trademark as any sign which is capable of being graphically represented in such a manner that the registrar, competent authorities and the public can have a clear picture of the subject upon which protection will be provided to the owner. Along with that, the trademark can be any sign which is capable of distinguishing goods or services of one entity from another. 

A trademark includes logos, words, letters, sounds, colors, shape of goods or the packaging. As we can see, a trademark can protect logos. 

Now, coming to the benefits that you can get if you trademark your logo. The benefits are:

1. Trademark registration gives you the right to take legal actions against infringement cases in federal court.
2. The consumers or the public will be aware of your trademark registration. 
3. You will be legally authorized to own the logo and hold the exclusive rights to use it in accordance with the goods or services that are listed down in your registration.
4. You can have an easy way to register your trademark in other foreign countries.

How to Trademark a Logo in the UK

Basis of Trademark Registration in the UK

It is interesting to know that the UK trademark laws align with the European Union (EU) trademark laws. There are various legislations in the UK which govern registration of trademark in the UK such as the Trademarks Act, 1994, Trademark rules 2008, EU trademark regulations etc. 

For the purpose of Trademark registration of logo in UK, you need to follow any one of the three below-mentioned ways:

1. File a trademark application at the UKIPO (UK Intellectual Property Office) for registering the UK trademark.
2. File an application at EUIPO for obtaining an EU trademark registration, or
3. File a trademark application at WIPO for obtaining an international registration for either EU or UK trademark.

The registration for UK trademarks is governed under the UKIPO. However, if it is a US trademark, you may file a trademark application at USPTO (The United States Patent and Trademark Office). 

Once a trademark application is filed at UKIPO, the proprietor will receive a filling receipt and the process of examination will take place in between three and six week. If no objections are raised by the examiner, then the application would get published in a trademark journal for around two months. This would help the third parties to oppose this registration. If no objections are raised, then the application will proceed with the registration within five months. 

Please note the circumstances when an application can be rejected by the examiner before going forward with the trademark application, an objection can be raised if the mark applied for registration is:

1. Descriptive in nature. If it describes the characteristics of the goods or services. For example, if the name of an ice cream business is “ICECREAM”. 
2. Doesn’t show any distinctive character. If you want to file an application for a logo, then ensure that the logo holds a unique character.
3. If the application is made in bad faith
4. Deceptive in nature.
5. Prohibited by the law.

If the mark meets the first two points, then the applicant would be asked to respond in the form of evidence or submissions within the period of two months. You can prove the distinctiveness of the mark if the mark is well-known or has been in use for a minimum of 5 years in the UK and provide evidence for the same.

How to File a Trademark Application With the UKIPO

An application should be lodged in the UK trademark registry, which is a part of UKIPO. There are no restrictions upon the nationality of the applicant, and any legally permissible person may file an application. 

Content of the Application

An application must include full details of the applicant, representation of the mark, nice classification for which the registration is being done for, and the list of goods or services of the mark. After the application is filed with the correct information, the examiner will examine the application on the basis of two grounds: absolute ground and relative ground for rejection and issue a report within 8 weeks of filling.

Absolute Grounds

Here, the examiner will assess the mark on few grounds:

1. If the mark is qualified for being a trademark.
2. Whether the mark should be registered.
3. If the mark has a distinctive character
4. Whether the mark is not descriptive in nature

Relative Grounds

The trademark registry cannot refuse an application on the basis of similar earlier trademarks. The burden of proof will lie upon the owner of previous trademarks to prove their opposition against the application with proper evidence. 

At the examination stage, the trademark registry will perform a trademark search, as a result of which the examiner will proceed with either acceptance or rejection of the application. As previously mentioned, If it gets accepted, then it will be published in a trademark journal and gives access to the third parties to see whether the application is similar to their marks and goods or services. 

Registration of the Mark

If the application doesn’t get rejected in the opposition period, then it will be granted with a registration certificate. In the UK, a trademark application gets granted within five months of filling if there are no objections raised. 

How to Respond if Your Trademark is Denied

If your trademark is denied, and you feel the rejection is unfair, or you disagree with the decision, then you can follow the below steps:

1. You can request a hearing
2. You need to submit evidence for the objection raised under Section 3(1) of the Trade marks Act, 1994 which states about distinctiveness of the mark. Likewise, you may send the evidence as samples of packaging of goods, any copies of advertisements of your goods or services, or copies of your sale brochures. Please note that all the information you provide must be related to the use of the mark in the UK and before the date of trademark application. 
3. Divide your application in two forms by using form TM12
4. If it was found that your application is similar to the earlier trademark in the way it looks or sounds or if it is of similar goods or services, then you may bring a letter of consent from the earlier trademark rights holder, which must state that the owner is allowing the application to be registered.
5. If in case you have missed responding within the stipulated time, then your application may get rejected. An applicant may apply for extension if you want more time to reply. 

If someone else files for the same trademark, then you can oppose the trademark within a period of two months when the trademark application gets published in the trademark journal. If you find that the application is accepted by mistake, then you can provide any relevant facts which the trademark registry may have missed during the examination process.

Check this article out, which is about trademarks:

A Guide to the Successful International Registration of Trademarks in the US