Trade marks are acceptable if they are distinctive for the goods and services you provide. Your trade mark must be unique. It can include:
- words
- sounds
- logos
- colours
- a combination of any of these
Your trade mark cannot:
- be offensive, for example contain swear words or pornographic images;
- describe the goods or services it will relate to, for example the word “petrol” cannot be a trade mark for a petrol company;
- be misleading, for example use the word “natural” for materials that have artificial origin;
- be a 3D shape associated with your trade mark, for example use the shape of an umbrella for umbrellas;
- be too common and non-distinctive, for example be a simple statement like “we are leaders”
- look too similar to state symbols like flags or hallmarks, based on World Intellectual Property Organization guidelines
You cannot register any sign as a trade mark if it consists (or contains) of an emblem that has protection under an International agreement, e.g. Article 6 of the Paris Convention for the Protection of Industrial Property. The purpose of this Article is to prevent the registration and use of trademarks that are identical with, or very similar to:
- flags and other State emblems
- armorial bearings
- hallmarks
- official signs
- other emblems
- abbreviations or names of international governmental organizations
Collective And Certification Trade Marks
Some marks do not have the same function as an ordinary trade mark. These are certification or collective marks.
A certification mark is a specific type of trade mark. It provides a guarantee that the goods or services bearing the mark meet a certain defined standard or possess a particular characteristic. Such marks are usually registered in the name of trade associations, government departments, technical institutes or similar bodies.
A collective mark is a specific type of trade mark which indicates that the goods or services bearing the mark originate from members of a trade association, rather than just one trader. When applying to register a trade mark, you have to use the classification system to specify the goods and/or services you'll be using it on.
Trade Mark Classification System
Intellectual Property Offices worldwide use a trade mark classification system that groups together similar goods or services into 45 different classes. This is referred to as the Nice classification.
Each class contains a list of terms. These cover all the goods or services included in that class:
- goods are in classes 1 to 34
- services are in classes 35 to 45
All classes have a broad heading, that explains what’s covered in that particular class. It`s just a general indication and it does not include all the goods or services in that class.
It’s important to choose the correct class and terms, as your trade mark will only be protected for the goods and/or services you select in your application. You cannot add extra goods or services after you have applied.
Make sure you select the right class or classes for your trade mark. You should also think about the goods you are going to sell in the future, or the services you are going to offer. A registered trade mark lasts for 10 years, so you should think how you may want to expand your brand during this time.
Check If Your Trade Mark Is Already Registered
You must search the trade marks database before you send your application to check if anyone has already registered an identical or similar trade mark for the same or similar goods or services.
You can use a trade mark attorney to help you with searches and registrations.
You cannot change your trade mark once you’ve applied, and the fees are non-refundable.
UK Trademark Registration Process
Your Application to The UK Intellectual Property Office must content:
- details of your trademark, for example a word, illustration or slogan;
- the trade mark classes you want to register in, e.g., class 1 for chemicals.
You can use the ‘Right Start’ service if you want to check your application meets the rules for registration.
You pay £100 initially, plus £50 for each additional class. You’ll then get a report telling you if your application meets the rules. If you want to continue, you must pay the full fee within 14 days of getting your report.
When The UK Intellectual Property Office receives your trade mark application and search their register for earlier trade marks which may be the same as or similar to your mark, they only look in classes that may contain the same or similar goods or services to those in your application.
Series Applications
If you have similar versions of your trade mark, you can make a series application for up to six marks. All your marks should look the same, sound the same, mean the same. Any differences must be minor.
After You Apply
You’ll get feedback on your application (an “examination report”) in up to 12 weeks (60 working days) - you have 2 months to resolve any problems.
If the examiner has no objections, your application will be published in the trade marks journal for 2 months. Within this time anyone can oppose it.
If Your Registered TM Application Is Opposed
The Intellectual Property Office will tell you if someone opposes your application.
You can either:
- withdraw your application;
- talk to the person making the opposition;
- defend your application.
You cannot register your trade mark until the matter is settled and may have to pay legal costs if you want to challenge the opposing party.
Your trade mark will be registered once any objections are resolved - you’ll get a certificate to confirm this.
Once Your Trade Mark Is Registered
You must report any changes to your name, address or email address.
Your trade mark will last 10 years - you can renew it after that time.
Registering a trade mark in the UK only protects your brand in the UK.
When you register your trade mark, you’ll be able to take legal action against anyone who uses your trade mark without your permission, including counterfeiters, you can also sell and license your brand.
How Long Will It Take In Total For A Trademark Registration In The UK?
The registration process for a trademark in the United Kingdom takes about 4 months if no one objects and which legal services you use for assistance. A registered trade mark can be revoked if it’s not used for five years in the England.
Cost Of Trademark Registration In UK
A single online trade mark application covering one class will cost £170. Extra classes cost an additional £50 per class.
The same application covering three classes will cost £270:
- £170 for the application and first class;
- £100 for the two extra classes (£50 each).
So get going and start the process of registering your business trademark in the UK today!
