Trademark Registration in the UK
In the UK, to protect your brand, you can register your trade mark and keep the monopoly over the exclusive use of the name of your products and services. Once registered, as a trade mark holder, you will have the following rights over the trade mark:
Right to take legal action: Trade mark registration gives the holder the right to take legal action against anyone who uses the holder’s brand without his permission, including counterfeiters.
Put the symbol ® next to your brand: You get the right to put the symbol ® next to your brand name, indicating that the right to exclusive use of the trade mark belongs to you and warn others against using it without taking permission from you.
Commercial exploitation: It allows the holder to sell and license his brand.
Types of trade marks in the UK
The trade marks that can be registered in the UK have been broadly classified into the following types:
- Ordinary Trademarks
Ordinary trademarks in the UK can be in the form of word marks, figurative marks, 3D marks, pattern marks, colour marks, sound marks, motion marks, hologram marks, multimedia marks, series of marks or a combination of any of these that can be used to distinguish the goods and services of one person or an organization from that of others.
- Certification Trademarks
A certification mark is a specific type of mark that is an indicator of guarantee that the services and goods that bear this mark meet a certain defined set of standards and also possess certain characteristics. The owner of a certification mark gets to decide those characteristics and standards.
These marks are usually registered in the name of government departments, trade institutions, technical institutes and similar bodies.
- Collective Trademarks
A collective trade mark is a mark which indicates that the services and goods bearing the mark originates from the members of a trade association and do not belong to one person/ trader alone.
Competent authority for trademark registration in the UK
The United Kingdom Intellectual Property Office (UKIPO) is the official body of the UK that is responsible for intellectual property rights, including trade, designs, marks, copyrights and patents. It is responsible for the IP policy, grants UK trade marks, patents etc. and supports IP enforcement in the UK.
Benefits of trade mark registration in the UK
Having a trade mark registration in the UK has many advantages in the UK. It can prove to be one of the most valuable marketing tool and help the holder to position his/her goods and services in a better manner in the market. It helps in the protection of your business identity and also safeguards the reputation of your product and company.
Following are the benefits of trade mark registration in the UK:
- It prevents others from registering and using the same or similar trade mark.
- It allows you, as a trade mark holder prove your legal right over the mark.
- It allows you to put the symbol ‘®’ along with your trade mark.
- Puts the right holder in a better position to defend his/her claim over the right and avoid using the common law rights, which are sometimes difficult to
- Puts you in a better position to obtain trade mark rights in other countries.
- It prevents the use of counterfeit goods.
- It gives you the exclusive right to license, franchise, use and sell your mark.
Eligibility to Register Trademark in the UK
In the UK, a trade mark and a trade mark application are considered personal property. Therefore, the applicant should be an individual, i.e. a natural person or a legal person legally capable of owning a property in their own name. Other unincorporated bodies, such as trading names, do not have the capacity to hold property in their own name, such as individuals, companies/ corporate bodies, partnerships etc.
It must be remembered that an application made on behalf of an unincorporated association cannot be trademarked as they are not legal persons capable of owning the trade mark unless the trustees file the trade mark on behalf of the association. Similarly, a trade mark application made on behalf of an unincorporated charitable trust must be made by the trustee to obtain trade mark registration.
What CAN be trademarked in the UK
According to the Trade Marks Act of the UK, every sign can be registered if it can be represented graphically, and it is capable of distinguishing your services and goods from that of others. Here, a sign can include words, designs, letters, numerals, symbols, shapes and packaging of goods or a combination of any of these.
What can NOT be trademarked in the UK
According to the Trade Marks Act of the UK, everything can be trademarked except for the following marks:
- Offensive marks: A trademark cannot be registered if it is offensive. For example, the marks that contain swear words or pornographic images;
- Descriptive marks: If the trademark describes the goods or services it relates to, then it cannot be trademarked in the UK. For example, the word ‘cotton’ cannot be used to trade mark a good or service in the cotton industry;
- Deceptive/ Misleading marks: Those marks that are deceptive or misleading to the consumers cannot be registered. For instance, the word “organic” cannot be used for goods that are not organic at all;
- Non-distinctive and too common: A trade mark can’t be registered if it is non-distinctive to the other undertaking and it is way too common to be distinguishable from others. For example, the phrase “we lead the way” cannot be used because it is not distinctive and it is also very commonly used;
- If the shape is generic: A trademark cannot be registered if its shape is found to be generic and closely associated with your business. For example in case you are in the business of selling mangoes, you cannot register the shape of a mongo as your trade mark;
- Use of National Flags and Emblems: Marks that use the national emblems or symbols of the UK or any other country in the world cannot be trademarked in the UK. The use of hallmarks in the symbols is also prohibited from being registered as a trade mark in the UK. For example, the Coats of Arms cannot be trademarked.
- Mark not falling within the definition of trade mark: If a trade mark is unable to fall within the boundaries of the definition of a trade mark mentioned above and does not satisfy the important essentials of being a trade mark such as being a sign, being distinctive and capable of being represented graphically, then it cannot be registered as a trade mark.
- Trademarks identical or similar to the trade mark registered earlier: If a trade mark is identical or similar to already registered trade marks and the registration is for identical or similar goods or services and within the same class or terms, then it cannot be registered as a trade mark.
Prerequisites before filing the Trade Mark registration application in the UK
Before making the application for trade mark registration in the UK, the following prerequisites must be followed before filing the application:
- Decide the trade mark classes to apply for the trade mark: In the first step, you must first decide on at least one class and one term to register your trade mark. The class is selected for the services and goods that you wish to get your trade mark for.
A class covers a general category of services and goods, while a term is more specific. For example, class 25 is related to clothing. This class has a number of terms that depend on the use or material of the clothes, such as knitwear or sportswear. The trade mark protection is available only for the class and the term under which it has obtained registration.
You have the option to choose more than one class, and the term provided same is related to your business plans for the next 5 years. The more the number of classes and terms you choose, the greater the chances that your trade mark will be similar to that of someone else’s. It must be noted that once the application has been submitted, you cannot add more items to your application.
- Check if any other has a similar trade mark: You should also check whether someone else has the same or similar trade mark to yours or not. For that, you must check the trade marks database. This can be checked by filing a Right Start Application, and then the UKIPO will have the responsibility to check similar trade marks on your behalf before you proceed to pay the total
- Seek professional help and advice before applying: After searching the trade marks database, if you find that a similar trade mark exists, you must seek professional advice from Enterslice to find other options to get your trade mark registered. It is advised by trade mark consultants at Enterslice that you should not proceed further with filing the standard application without obtaining professional advice from Enterslice if you have discovered that there are trade marks that are the same or similar to what you want to get registered. The UKIPO will call all the holders of similar trade marks at the time when you will apply for the trade mark.
Complete Procedure of Trade Mark registration application in the UK
The following steps give the step-by-step procedure to be followed by an applicant to register a trade mark in the UK:
- Full Availability Trade Mark Search
- Preliminary check of the application by the UKIPO
- Sending the application for the registration of Trade Mark
- Examination of the trade mark application
- Objections raised by the UKIPO
- Oppositions from the 3rd parties
- Opposition proceedings
- Registration of Trade mark
- Full Availability Trade Mark Search -
It is not mandatory for the applicant to conduct a prior trade mark search before filing the application. Though it is strongly recommended by the trade mark consultants at Enterslice to conduct a prior trade mark search before filing the application, as it helps you to find out the availability of your desired mark and whether a similar and potentially conflicting trade mark already exists in the same class. Since significant changes cannot be made to the application after submission to the UKIPO and the fee is not refunded, it is always suggested to conduct a comprehensive trade mark search before filing the application.
- Preliminary check of the application by the UKIPO -
After filing the trade mark application, the UKIPO conducts a preliminary check to ensure that all the requirements of the filing have been met. There are two types of requirements, viz. a. essential requirements and b. non-essential requirements. Essential requirements are necessary for obtaining the filing date, and non-essential requirements should be met before the application is sent for examination purposes.
If the UKIPO finds that the requirements have been met, the filing date becomes the date when the application is received by the UKIPO. However, if the filing date has not been met, then the filing date becomes the date when the last document is submitted to putting the application in order.
- Sending the application for the registration of Trade Mark -
Before sending the application, you need to decide what you wish to get registered as a trade mark. For example, a slogan, a word or an illustration. You also need to know the personal and company details of the intended owner of the trade mark and the type of services or goods you want to use the trade mark for.
The cost of filing the application depends on the type of application and the number of classes you select for trade mark registration. Where you have multiple versions of the trade mark, you can choose to file a series application. A maximum of 6 variations can be filed in a series application, and the costs will be less than what it would cost to register them separately.
If you are not confident about meeting the rules for registration of trade mark, you can choose the option of ‘Right Start Application’ before filing the Standard Application and before payment of the full fee. The cost of filing a Standard Application is £170, whereas the cost of filing a Right Start Application is £100.
If you do not wish to avail the option of filing the trade mark application online, you can choose to file the application through offline mode via post and pay the prescribed fee of £200.
- Examination of the trade mark application -
Once the application has been filed with the UKIPO, the department examines the particulars of your application and sends you an ‘examination report’ within a period of 2 – 3 weeks.
- Objections raised by the UKIPO -
The examination report tells you about the deficiencies in the particulars of your application. These are known as the ‘Objections’ that are raised by the UKIPO itself. UKIPO then gives you 2 months to resolve the objections mentioned in the application.
The UKIPO also, on its own, searches for existing trade marks that are the same or similar to that of your proposed trade mark. If the office finds any such existing mark, then they’ll contact both you and the registered holder of the similar/same trade mark.
In case there are no objections and both parties resolve them, your trade mark application will be published in the Trade Marks Journal for a period of 2 months, and anyone in public has the option to ‘Oppose’ your application.
- Oppositions from the 3rd parties -
It is the duty of the UKIPO to inform you whether any objections have been raised against your application in the given time period. If there are any objections raised against your application, you will not be able to further register your trade mark under the relevant class or terms until the matter is resolved among the parties.
- Commencement of Opposition proceedings -
You have the following options to resolve the matter:
- Speak to the objecting parties and resolve the matter;
- Withdraw your application; or
- Defend your application via a legal route where you only will be required to bear the legal costs.
- Registration of Trade mark -
If the application receives no objection from the public, the entire trade mark registration process takes a time of 4 months. The registered trade mark lasts for a period of 10 years.
Documents required for Trademark registration in the UK
The following documents are required while submitting an application for the registration of a trade mark in the UK:
- The address and name of the applicant (who can be an individual or a company) making the application for trademark registration
- A representation and description of the sign proposed to be registered as a trademark
- A graphical representation of the proposed sign to be registered as a trademark
- A declaration that the applicant intends to use the trade mark within next 5 years
- Proof of payment of the statutory fee.
Fee for Trade Mark registration in the UK
Different fee has been prescribed depending on the mode of registration of trade mark in the UK.
- Standard Application
The prescribed fee for the registration of trade mark under one class is £170. For registration in every additional class, the applicant has to pay £50. Where the applicant has made a series application, the first two versions of the trade mark are included in the prescribed fee. For every additional version, the applicant has to pay an additional fee of £50 up to a maximum total of 6.
- Right Start Application
In case the application file is a right start application, the prescribed fee has been set at £100, along with £25 for each additional class. A report is sent to the applicant saying that the sent application meets the prescribed rules. Thereafter, the applicant is provided an additional time period of 28 days to continue with the application.
In case the applicant wants to continue with the application, an additional sum of £100, along with an additional sum of £ 25, has to be paid for every additional class.
- By Post
The applicants have been offered another option to file the application via post too. The prescribed fee via post has been set at £200’ and an additional sum of £50 for each additional class.
Post- Registration compliances of trade mark registration in the UK
The trade mark gets published within a period of 10 weeks i.e. 2 months and 2 weeks after it is published and there has been no opposition raised against it.
Once your trade mark has been registered, you will be given a certificate confirming that your trade mark has been registered.
On receiving the trade mark certificate and becoming the legal holder of the right, you will have the right to object to any other trade mark if it is similar to yours. You also get the right to further monetize the right over the trade mark by selling, marketing and mortgaging your trade mark in the market.