What is a trademark?

Registering a trade mark provides important legal protection for your business.

This article gives an overview of some of the things you need to know about registering a trade mark in the UK.

You should always consider seeking specialist advice before making an application.

Trade marks are valuable assets.

Unregistered trademarks can be protected by making a claim for “passing off” against anyone using it without authorisation but, these claims are not straightforward.

Registering a trademark provides better protection.

Once registered, you can use the ® symbol to show others that your brand and logo are protected.

Registered trademarks can be sold, traded and even used as security on loans and mortgages.

Trademarking part of your brand also allows you to license it to other businesses – such as setting up a franchise – and to prevent others imitating your brand, services, or products.

Registering a Trademark in the UK

The first step in protecting your trademark is to know exactly what can be trademarked.

A good sense check is to identify the elements of your brand that are unique to you.

These can be words, logos, symbols, colours, images and even sounds.

There are exceptions. A trademark cant be registered if it is too literal or descriptive.

Trademarks that describe the goods or service, or that are a characteristic of the goods or services won’t be allowed.

For example, you can’t register the word MILK for a range of milk drinks or WINDOW CLEANER for a window cleaning service.

Your trademark must be unique so common words or names can be tricky.

Consider using a made-up name when thinking about what trademarking you want to use.

Brands such as Nike, Microsoft and Kodak are all fictional names that allowed them to be successfully established as a unique, trademarked business name.

A trade mark can’t be registered if it’s misleading, offensive, uses a national flag without permission or uses an official emblem or hallmark.

Trademarking your brand in the UK only protects a trade mark in the UK and the Isle of Man.

Different procedures apply for trade mark protection in other countries (as well as in Guernsey and Jersey).

Conduct a UK trademark search

Before trademarking a brand in the UK, it’s vital to check whether existing or similar trademarks exist.

You can search for existing and expired trademarks using the UK Intellectual Property Office’s (UKIPO) database.

You can also search for symbols and phrases, returning a list of any similar trademarks and the class they are registered in.

Searching the UKIPO database is free, though conducting a DIY search yourself can produce limited results.

It may be worth engaging a chartered trademark attorney to help, as they can conduct a more detailed search of registered trademarks.

You can find a list of chartered attorneys at The Chartered Institute of Trade Mark Attorneys.

If a trademark search reveals an existing trademark or one similar to the one you wish to register, you have a few options.

For example, if possible, change the class in which you are applying to register the trademark, modify it, or get the existing owner’s permission.

Understand trademark classes

Trademarking a brand asset involves choosing the class of goods and services that you want the trademark to cover.

There are 45 different trademark classes: 34 covering goods and products and 11 covering services.

Known as the Nice classification, you can review the full class list at the World Intellectual Property Organisation.

Each class covers different industries and products.

Product classes range from chemical products used in industry, science and agriculture such as adhesives and cosmetic ingredients (Class 1) through to musical instruments such as pianos (Class 15).

Service classes range from education including animal training (Class 41) to food, drink and hotel services (Class 43).

Each class lists in detail what is included and – importantly – what is excluded from each class.

A trademark is registered to a specific class or classes, meaning different businesses can register the same trademark as long as it is in a different class.

Each owner must restrict the use of their trademark to the class or classes they registered in.

It’s therefore important to pick the right class or classes when applying to register a trademark.

Registration: trademarking a name in the UK

Once you’ve established what you want to trademark and the classes you wish to register in, you can apply to the UK Intellectual Property Office.

You can apply online with the UKIPO or using Form TM3 via post.

Expect the process to take around four months in total if there are no objections.

You will receive an initial report on your application within two weeks.

You must respond within the applicable timescales.

Most objections from the UKIPO revolve around how distinctive a trademark is.

The more distinct it is – such as a unique name and logo – the easier it will be to register.

Once any objections are resolved, your application will be published in the Trade Marks Journal for two months.

Once published, anyone can object to the application such as a similar business with an unregistered trademark.

Deal with trademark objections

If someone objects to your trademarking application, you can either withdraw the application, defend the application, or try to directly resolve the issue with the person raising the objection.

A trademarking application can’t be concluded until all objections are resolved, and you may have to take legal advice if you want to challenge the objection, which can be costly.

Once any objections are resolved – or if there are no objections – the trademark should be registered within two weeks of the end of the publication period.

It’s worth knowing that even if you successfully register a trademark it can still be challenged and declared invalid.

Costs of registering a trademark

Applying online to register a trademark is the cheapest option.

It costs £170 to register online for a single class, with each additional class priced at £50.

Applying by post costs £200 to register for a single class, and £50 for each additional class.

It’s worth considering paying for the UKIPO’s online ‘Right Start’ service.

This reduces the initial cost to £100 plus £25 for each additional class, and checks if your application meets the rules for registration.

You’ll receive a report from the UKIPO and if you continue with the application you’ll pay a further £100 plus additional £25 for each class.

Once you’ve registered your trademark

A registered trademark is valid for ten years, and you’ll need to actively use it to avoid losing it.

It’s a good idea to use the trademark commercially within a few years of registration.

Not using the trademark in a five-year-period can leave you open to having the trademark challenged and removed from the register.

The trademark has to remain the same throughout the period.

If you change any aspects – such as typeface, colour or design – you’ll need to make a new application.

Similarly, if you extend your brand into a different trademark class, you’ll need to apply to register the trademark in that class.

You won’t be able to use the ® symbol next to the trademark in relation to that class until the registration for that class has been successfully completed.

You’ll need to promptly renew trademarking registrations every ten years, but you won’t need to make a fresh application.

Enforcing a trademark

Protecting a trademark means actively enforcing it.

You’ll therefore need to keep a watch on unauthorised uses of your trademark.

Infringement is usually handled under civil law.

Sending a ‘cease and desist’ letter from a solicitor to the infringer is usually enough to stop infringement of your trademark.