Successful Trademark Registration in the UK

Trademark Registration in the UK

Trademark registration for a company, brand or product name, logo, slogan or other trademark provides a business with the most efficient form of protection against a competitor making an unjust or illegal use of its brand. Although a trademark might be capable of being protected through other areas of the law, registering a trademark has several essential benefits.

Submitting a trademark application means that the details are kept on a central register, a publicly accessible database. When assessing whether to select a new trademark, most businesses conduct ‘clearance’ searches to ensure that no trademark disputes will arise. As a result, any third parties who may unintentionally use the trademark will likely be made aware of it. In addition, by paying renewal fees on the appropriate dates, registered trademark protection can remain permanent, unlike other types of intellectual property protection that “expire” after specific terms.

What to Do Before Trademark Registration?

Before trademark registration, it is essential to determine whether the identical trademark already exists or is registered. This will help you to determine whether your chosen trademark is available to use and can be registered. Prior to adopting a new trademark or brand name, it is constantly advisable to conduct a trademark search. Indeed, it is much more practical to include this search process in the due diligence procedure with designing a new name or logo. A UK clearance search is a search of the UK, European Union Trademark (or “EUTM”), and International trademark registers, including the US, to determine whether any registered rights for identical trademarks covering the same goods or services exist. If so, this could result in additional legal disputes.

The findings reassure you that you can use your trademark without worrying about violating the rights of others, or they should make you aware of any issues so that you can consider using a different tactic. The search is tailored to reveal potential infringement issues in the UK. If the search identifies that your proposed trademark might infringe on an existing trademark registration, you may have to stop using it and adopt a different trademark. It is, therefore, wise to check the availability of your chosen trademark at an early stage of your business plan.

To save long-term expenses, conducting a trademark search is vital before registering or using your new trademark. If your trademark violates an existing trademark, the costs of adopting a different trademark, rebranding, and rebuilding your brand could be significant. In addition, you may have to pay legal expenses and damages if an action for trademark rights violation is filed against you.

Steps to Do a Trademark Registration

To register a trademark in the UK, you must apply to the Intellectual Property Office (the IPO) by completing form TM3 online and paying the appropriate fee. Therefore, there are several steps you should take into consideration and follow when registering a trademark:

• Know what you intend to trademark: The first step in defending your company is to be clear about what qualifies as a trademark. Determine the components of your brand that are particular to you as a good sense-check. Combinations of words, logos, symbols, colors, images, and even sounds can be used.
• Perform a UK trademark search – It’s critical to look for existing or confusingly similar trademarks before submitting a trademark application for a name in the UK. The UK Intellectual Property Office’s (UKIPO) database allows you to search for active and expired trademarks.
• Understand the different trademark classes. When registering a business name for a trademark, you must decide which class of products and services the trademark will cover. There are 45 distinct trademark classifications, of which 11 represent services and 34 cover goods and products. On the World Intellectual Property Organization website, you can view the complete course list. Different sectors and products are covered in each class. When registering a name as a trademark, you must select the appropriate class for your company.
• Trademark a name in the UK – You can apply to the UK Intellectual Property Office (UK IPO) along with the classes you want to register in. The UK IPO offers online registration and postal trademark applications utilizing Form TM3. The procedure of registering a trademark will cost extra, and provided there are no challenges to your application, you may anticipate for the procedure to take about four months in total.

Registration Procedure in Detail

When an application is filed for a trademark, the applicant must declare which classes the trademark will be used in. The breadth of protection provided by registration increases with the number of classes requested. The applicant will be given an application number and date once the application has been submitted to the UKIPO. The application date is significant since it will serve as the registration date after the trademark is registered.

The UKIPO will subsequently publish an Examination Report, letting the public know whether the application was approved. The UKIPO will not accept a trademark for registration if it is not deemed unique or merely describes the products and services to be delivered under the trademark. There are other reasons as well. The trademark will be advertised in the journal if the UKIPO does not object or the objections are overruled. Once the application has been advertised, outside parties may object. The trademark will continue to be registered if no oppositions are lodged, or any raised objections are defeated.

It is important to note that successful registration of a trademark in the UK, means that the trademark is protected only within the boundaries of the UK and the Isle of Man. There are separate processes for undertaking registration in other countries, which must be kept in mind. 

When are objections raised against the trademark in the UK?

When the examination process is undertaken by the UKIPO, there may be various situations leading to objections against the trademark during registration in the UK. Some of the common situations leading to an objection are:

• If the trademark is devoid of any distinctive character. 
• If the trademark is only a description of the characteristics of the goods and services related to which the mark is being used. Example – ‘cotton’ cannot be used as a trademark. 
• If the trademark is a shape (or any other type of mark which is not covered within the accepted forms of the trademark)
• If the trademark is resulting from the nature of goods themselves. 
• If the trademark is against the principles of morality or public policy.
• If the trademark necessarily requires a technical result. 
• If the trademark is deceptive. 
• If the trademark provides a substantial value of the goods. 
• If the trademark has been prohibited by any rule of law. 
• If the trademark is inclusive of any official emblems or hallmarks, such as: royal coat of arms, flag of the UK, the royal flags, or national emblems of Paris Convention countries. 
• If the trademark application has been made in bad faith or has a misleading character. Example – using ‘organic’ when the product is not organic. 
• If the trademark is offensive, i.e., containing swear words or pornographic images. 

Depending on the kind of issue with the trademark against which the objection has been raised, the applicant is given a period from 2 months to five years, to remove the objected aspect of the trademark. 

Previously, the Manual of Trade Marks Practice provided information on these aspected, along with the ways through which certain categories of marks may be dealt with. However, the UKIPO has recently undertaken the responsibility of deciding the merits of the application on a case-to-case basis. 

It is further possible to appeal the decisions of the UKIPO before the High Court of England and Wales, the High Court in Northern Ireland, or the Court of Sessions in Scotland. 

Legal Protection of Trademark

 There are several advantages to having a registered trademark in the UK:

1. Because trademarks are territorial, a trademark registered only in Canada will offer you no protection in the UK unless the same is registered internationally which can be made through the Madrid Protocol.
2. It is crucial to register your trademark in the UK early because, similar to the European Union’s trademark system, the UK follows a first-to-file system. In short, a first-to-file system grants the first person who files for a particular trademark exclusive rights to use that mark, regardless of whether that individual had used that mark first.
3. If accepted, your trademark application will be published in a central registry, which will put third parties on notice, potentially to deter them from using your or an identical mark. Thus, you may avoid bringing enforcement proceedings against third-party infringers, saving yourself time and money.
4. A registered trademark is valuable because you can license your mark for a profit or mortgage your mark for a loan.

An additional advantage of a registered trademark is that you will also be able to defend yourself against ‘cybersquatters.’ These are people who buy a domain name incorporating your company name/brand name and then try to sell it back to you for a considerable amount of money. By having a registered trademark, you can easily protect yourself against anyone who uses a similar or identical domain to that of your trademark in either the same line of trade or for fraudulent purposes.

Trademark Renewal

The registration remains for ten years and can be renewed for additional ten years with the payment of renewal fees. Registration runs from the date of applying for registration. A trademark can be maintained indefinitely as long as it is renewed. If renewal is requested (or the renewal fee is paid) for only some goods or services for which the mark is registered, the registration will be renewed for those goods or services. 

If the owner fails to apply for renewal by the anniversary date, there is a grace period of six months after the renewal date, during which they can file for late renewal on payment of an extra fee. In case no application to renew the trademark has been received by the end of these six months, the trademark registration will expire and be removed from the register.

Make sure you act before it gets tough to get your trademark back! Contact LegaMart’s top IP experts now and book a customized consultation. 

How much does it cost to register a trademark in the UK?

The cost to register a trademark in the US is dependent on the mode of registration undertaken. Usually, if the trademark is registered online, it costs £170. On the other hand, if the trademark is registered by post, it costs about £200. This cost is limited to only registering one class of goods and services. In case of registration is to be done in additional classes, it would cost £50 more for each such class. 

IPO’s Right Start service may be used in case you want to check whether your application meets the registration criteria. At the initial part of your application, you pay £100 + £50 for every additional class. Thereafter, a report is generated on whether your application meets the required rules and standards. Thereafter, in case you still want to continue with the trademark registration, the remaining fee is expected to be paid within 28 days from the date when the report is generated. It is also possible for you to continue with your trademark registration even for cases where the report is unfavourable, provided that the required changes and additions are made to your application within the mentioned timeline. 

Conclusion

The common law offers narrow protection for unregistered trademarks in the UK. Registering your trademark may help you prevent costly enforcement proceedings; instead, you can direct your resources to grow your brand and business. Trademark protection gives you the legal right to prevent others from using the brand you have invested in developing. Furthermore, it is a company asset that can grow in value significantly. Registering a trademark is a simple, effective and cost-efficient way of protecting your company and putting in place the potential building blocks that will help your business grow, develop and succeed.

This article clarifies the time you need for a trademark to be registered:

 How Long Does Trademark Registration Take in the UK?