Registering your mark gives you the exclusive right to use your mark in the UK in relation to the goods/services covered by the registration.
There are various remedies available to the owner of a UK trade mark registration where a third party uses the same or similar trade mark on identical or similar goods without permission. Registering a mark also provides the owner with grounds to prevent the registration of a later conflicting mark.
Trademark owners who have been using an unregistered trademark for several years may have developed certain common law rights under the law of passing off, but the hurdles that must be cleared to prove passing off are higher. only to prove trademark infringement.
Finally, a UK trademark registration provides a legal defense against infringement against other parties’ trademarks.
Classification of goods and services
The UK is party to the Nice Agreement on the International Classification of Goods and Services, under which goods and services are divided into 45 classes for the purposes of trademark registration. We can advise you on the classification of the goods/services you are interested in and develop an appropriate specification of the goods/services for your trademark application(s). It is important to note that under UK trade mark law the applicant for trade mark registration must use, or intend in good faith to use, the trade mark applied for in relation to all goods/ services covered by the request.
The application process
Trademarks belong to the person or company that registered them. The owner of an unregistered mark is generally the person who uses the mark (subject to agreements to the contrary). The owner of the mark is therefore often not the same person/company as the owner of any copyright in the mark.
We will file the application on your behalf with the UK Intellectual Property Office (IPO).
Once an application has been filed, the IPO will examine it to check, among other things, whether the goods/services are correctly classified and whether, in the opinion of the IPO, the mark is likely to function as a trademark (eg that it is not descriptive of the goods/services, and not in common commercial use by other businesses).
The IPO will issue a review report detailing any objections and setting a deadline for response (usually two months). The IPO will not automatically refuse an application based on prior conflicting marks held by third parties. Instead, the IPO will include, in its examination report, details of all previous UK, Community and international (designating the UK) trade mark applications/registrations which it considers likely to be in conflict with the mark applied for. You (the registrant) will then have the opportunity to try to persuade the IPO not to inform the owners of these marks of your request. Unless otherwise advised, the IPO will notify the owners of any UK trade marks cited of the publication of your application should they wish to consider opposing it.
Once all objections have been overcome, your application will be published in the UK Trade Marks Journal for objection. There is a two-month period (extendable to three months after the filing of a notice of threat of opposition) during which third parties can oppose the request.
If no objections are filed, or once the objections are resolved or overcome, your application will be registered and the IPO will issue a certificate of registration, which we will verify and forward to you.
A UK trade mark registration lasts for ten years from the date of application and may be renewed for further periods of ten years upon payment of the appropriate renewal fee.
Filing a trade mark application in the UK for a trade mark covering a class of goods/services costs £495 plus VAT, including official fees and our fees. Each additional class included in the same application costs £165 plus VAT.
If no objection and/or opposition is met by an application, the only other foreseeable costs are our fee of £180 plus VAT, which is payable on registration.
If an application encounters objections and/or objections, the costs involved in dealing with them will depend on the professional time spent on the matter and can vary between £200 and £300 in the case of a minor objection, and several thousand pounds in case of fully contested opposition proceedings.
The IPO also operates a ‘Right Start’ system for new applications, where the applicant initially pays only half the official £200 application fee and half the official additional class fee (£50 per class), in exchange for which the IPO will issue the examination report. If, after reviewing the review report, you decide to proceed with your application, the balance of the fee is payable within 14 days of the review report. If not, the application can simply be dropped and no further official fees will be due.
Originally published on September 06, 2021
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.