Registering a trademark on aspects of your brand image is a good way to protect it from unauthorized use. It is therefore important to know how to brand your brand. You can file a trademark application in the UK, EU or/and internationally and in most cases you do not need a lawyer; although it is advisable to consult one if you wish to register an international trademark. After registering your mark(s), you have the exclusive right to use them and you can prevent your competitors from registering a mark that is too similar to yours.
For more information on what a brand is, check out our recent blog post.
The trademark registration process is described below.
1. Decide where you want to register your trademark
You can register your marks in the UK, across the EU and/or internationally. All registrations have a term of 10 years and can be renewed indefinitely for additional periods of 10 years. What’s best for your brand will largely depend on where you do business; see our FAQ for more tips on deciding where to register your trademark.
2. Decide which mark(s) you want to register
You may register words, logos, colors, sounds, the shape of the goods or their packaging or any combination thereof. The mark or combination of marks you choose to register will depend on the brand image you have chosen, but you should consider:
- Simple word marks Uppercase, lowercase or a mixture can be registered together (eg ‘Sparqa’, ‘sparqa’ and ‘SPARQA’). You can also save common misspellings of your brand.
- Simple word marks with minor stylization You can save single words and slightly stylized versions of those words together on a single app, as long as they are not distinctly different. For example, you can usually register the same word mark in different font combinations in a single application.
- Image marks or words that imply color You can register your mark in black and white, color and/or grayscale. You should record the color combinations that your business is likely to use.
- Non-traditional brands such as holograms or multimedia Audiovisual files may also be saved provided they are clear and distinctive and meet the other requirements of a valid trademark.
3. Decide which products and services you want your brand to cover
Your competitors are only allowed to use a mark similar to your mark for similar goods or services, so it’s important to be clear about which goods and services your mark will cover.
You can register a mark for more than one class of goods or services if you wish. Try to anticipate how your business will grow over the next 10 years when deciding how you will use your brand, but be realistic – if you don’t use your brand for all the things you save, it may be open to challenge by someone wishing to use it for one of your unused categories.
4.CCheck that your proposed brand(s) are not too similar to an existing or recently expired brand
For UK trade marks, the UK IPO provides a free service to help you check if your UK trade mark can be registered. The online checker is a useful tool and can save you time, but it is not a guarantee that the UK IPO will register your trade mark. You will still need to follow the application process outlined below.
5. Complete your trademark application and wait for news of the UK IPO
Application process (for UK brands)
Submit an application online or print, complete and send the TM3 form to the UK IPO. You can find our step-by-step guide to applying for a UK trade mark online here. You can also buy this guide as part of our Protecting Intellectual Property and Confidential Information Toolkit, which includes advice on applying for UK and EU trade marks.
The UK IPO will then check your application form. If there are no issues, your application will proceed to the next step. Otherwise, the next step depends on the nature of the problem:
a. Errors in your application – The UK IPO Registrar will notify you and you will have 14 days to resubmit your application with the errors corrected. If you do not resubmit within 14 days, your application will not be accepted and you will have to start over.
b. Your trademark is similar to an existing trademark – If the UK IPO Registrar finds that a mark similar to yours is already registered, they will let you know but your application will still proceed to the next stage (however, it may be challenged).
Publication and Objection Process
Then the UK IPO publishes your mark in the UK Trade Marks Journal. From the date of publication of your application in the UK Trade Marks Journal, other people and businesses have two months to object to the registration of your mark.
If someone opposes your trademark application, a process will apply to decide whether your application can proceed. You can find additional advice in our FAQ.
Once the objections to your application have been dismissed or the two-month opposition period ends without objections, your mark will be registered and backdated to the date you filed your original application. Your mark will be published in the UK Trade Marks Register, which you can access using the UK IPO trademark search engine. You will also receive a UK IPO registration certificate.
If your trademark registration application is refused, the office that refused your application will explain its decision to you. Depending on the grounds for refusal, it may be appropriate for you to modify the mark and file a new application.
UK trade mark applications generally take between four and eight months. If an objection is raised regarding your trademark registration, the process will likely take at least six more months. If you are concerned about the length of your registration, you can contact the UK IPO at [email protected]
The timeframe for an application in the EU is similar to that in the UK, but the waiting period for an international trademark application is 12 to 18 months, depending on the countries in which you wish to register. So you should keep this in mind when applying if you need Global protection alongside UK or EU protection.
The content of this article is current as of the date of publication. The information provided is for informational purposes only and is not intended to provide legal advice. ©Sparqa Limited 2022. All rights reserved.