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, such as passing off copyright, registering a trademark has several essential benefits.
Submitting a trademark application means that the application details are kept on a central register, which is 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. By paying renewal fees on the appropriate dates, registered trademark protection can remain eternally, unlike other types of intellectual property protection that “expire” after specific terms.
What to Do Before Registration?
When adopting a trademark, 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 trademark searching. Indeed, it is much more practical to include this searching process as part of the due diligence procedure that goes 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 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 should 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 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 is found to violate 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 as these.
- 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 both 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 website of the World Intellectual Property Organization, you can view the complete course list. Different sectors and products are covered in each class. When you register a name as a trademark, you need to select the appropriate class for your company.
- Trademark a name in the UK – You can submit an application to the UK Intellectual Property Office once you’ve decided what you want to trademark and the classes you want to register in. The UKIPO offers online registration as well as 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 it to take about four months in total.
Registration Procedure in Detail
As mentioned in the previous section, 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, after the trademark is registered, it will serve as the registration date.
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 because it is not deemed unique or is merely descriptive of the products and/or services to be delivered under the trademark. There are other reasons as well. The trademark will be advertised in the trademark journal if the UKIPO does not object or if 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 objections are defeated.
Legal Protection of Trademark
There are several advantages to having a registered trademark in the UK:
- Because trademarks are territorial, a trademark registered only in Canada will offer you no protection in the UK.
- 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 the use of that mark, regardless of whether that individual had used that mark first.
- If accepted, your trademark application will be published in a central registry, which will put third parties on notice, potentially deter them from using your or an identical mark. Thus, you may avoid having to bring enforcement proceedings against third-party infringers, saving yourself time and money.
- 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.
The registration remains for ten years and can be renewed for additional periods of 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 just 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.
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 provides you with 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 not only protecting your company but also of putting in place the potential building blocks that will help your business grow, develop and succeed.
This article clarifies the time you needed for a trademark to be registered:
How Long Does Trademark Registration Take in the UK?