October 14, 2022
Registering a trade mark is a vital step towards protecting your brand’s intellectual property (IP). A trade mark registration will protect your rights in the use of a particular word, illustration or slogan. There are several important things to think about when it comes to choosing a mark to represent your brand. but for the purposes of this blog, we're going to break down how to register a trade mark once your house is in order. Still need to iron out the final details? Explore our top tips on what to think about when registering a trade mark.
Now, let's dive in.
To build a unique brand, and to ensure you’re not infringing anyone else’s IP, it is important to check that no identical or similar trade marks exist in connection with similar goods or services.
If an identical or substantially similar mark is discovered, it would be worth considering a re-brand. If this is not feasible, speak to your solicitor about your other options, which may include approaching the holder of the existing mark for permission to register your proposed mark.
Requests to register a trade mark in the UK must be made to the UK’s Intellectual Property Office (IPO). It is worth noting that your brand will only be protected in the UK unless you make specific arrangements to apply for wider protection elsewhere in the world. Different processes will apply, depending on where you seek protection. You should discuss this with your solicitor.
Requests can be made by letter or using a standard IPO form, but certain specific details must be supplied. Amongst other information, a representation of the mark and a statement (also known as a specification) describing the goods and services for which the applicant uses (or intends to use) the mark must be provided.
Intellectual property offices around the world use a trade mark classification system, which groups different categories of goods and services into ‘classes’. Your application will need to specify which classes of goods and services the trade mark will be used in relation to and your mark will only be protected in relation to these specified classes. There are currently 45 separate trade mark classes, split into goods and services. Each class lists the types of items covered by that class.
The description of the goods and services set out in the specification must be sufficiently detailed to allow the IPO to assess them against the classes selected. Getting your specification right and ensuring that you choose the right classes is one of the more challenging aspects of the application process. Some crystal ball gazing (or at the very least, some forward-thinking) is required. It is important that your application is accurate and reflects exactly what you are (and will be in the future) using your trade mark for - once you have filed your application, it is not possible to change your trade mark or add more classes, and it is not possible to get a refund of fees. Get it wrong, and your application could be worthless!
Following submission, the IPO will examine your application and produce a report. There are a couple of examination services available.
If the ‘standard’ service is used, the report will state whether they consider the trade mark registrable and will advise of any marks already on the register that they view as potentially confusingly similar. The IPO will publish the mark in the Trade Mark Journal to allow third parties the opportunity to object. If no objection is received, the trade mark will be registered. This process takes around 4 months, if there are no objections.
Alternatively, applications may be submitted using the 'Right Start' services. The same examination is undertaken as for the 'standard' service, and within the same time frame. The IPO will issue an examination report stating whether they consider the trade mark registrable and will advise of any marks already on the register that they view as potentially confusingly similar. There is then an opportunity to to discuss any issues with the examiner. If you are happy to proceed, you will then pay the second part of the official fee to enable the application to be published in the Trade Mark Journal to allow third parties the opportunity to object. As with the 'standard' service, if no objection is received, the trade mark will be registered within around 4 months.
You may continue with your application even if the report advises that your mark does not meet the rules for registration; however, there will be no guarantee that your trade mark will be registered. If you decide not to proceed, your application will lapse. You will not receive a refund of the initial payment, but no further fees will be due.
Trade mark registration is not a straightforward process and you may lose out financially if you get your application wrong…worse still, your brand may not obtain the protection it needs going forward. Our advice is to seek support when making an application – a small investment at an early stage of your business could pay off in the long term.
Are you embarking on the process of registering a trade mark? Discover how our trade mark lawyers can help.