In this guide, Ben Evans, Head of Trade Marks at Harper James explains the steps you will need to take to register a trade mark in the UK, the costs involved and how it compares to the trade mark registration process in the EU.
Register a trademark in the UK
Businesses from overseas can register their trade marks in the UK as easily as businesses from the UK can. The legislation does not discriminate between applicants according to where they come from, and international conventions and agreements ensure that this principle is respected.
The legislation also allows applicants to claim priority from their earlier applications, so if you have filed an application in Italy for example, you can file an application in the UK within six months and claim the filing date of your Italian application as the priority date of the UK one. No one will have been able to “steal” your trade mark in the UK in the interim.
Foreign trade mark owners will need an address in the UK to which documents can be sent. Usually this will be the office of their trade mark representatives, but it is possible to apply for a trade mark without a professional representative in which case it will be necessary to find someone else to act as your agent.
Overseas applicants can also get trade mark protection in the UK by filing a single application for an international trade mark, and extending it to countries and territories of their choice. This is efficient if you seek protection in multiple countries, but not if you only wanted to get a trade mark in one country.
What do you want to register?
Words, symbols and logos are traditionally the signs that function as trade marks, and which may be registered if them meet the legal requirements. Other, more exotic, types of trade mark may also be protected: shapes, sounds, smells. The law used to require that the trade mark be capable of being represented graphically on the application form, but now it only requires that the mark be represented clearly and precisely.
As this is all EU law that has been retained in the UK following Brexit, the rules are virtually identical throughout the EU. Over time, UK and EU trade mark law might diverge, and signs that are registrable in one system might no longer be registrable in the other, but that has not happened yet.
Trade mark searches
Trade mark searches can be carried out to give you an idea of your application’s chances of success. Once a business has registered a trade mark, anyone trying to register the same or a similar trade mark for the same or similar goods or services risks the application being opposed, or its registration being declared invalid some time later.
Trade mark classification
In common with most trade mark systems around the world, the UK classifies all the possible goods and services for which a trade mark may be used into 45 classes. The classes are set out in an international agreement, the Nice Agreement, although the detailed classifications used by national offices may contain expressions that are specific to the country concerned.
Trade marks should be registered for the goods or services for which they are already used, or for which the applicant expects to use them soon. The UK application form contains a statement that the mark is being used for the goods or services indicated, or the applicant intends so to use it – unlike the EU application form. Signing the UK application form therefore has possible legal consequences, to which we return below. The statement of goods and services for which the mark is to be registered must be set out with enough clarity and precision to enable someone consulting the register to understand the scope of the owner’s exclusive rights.
Trade mark registration process
Once the application form is received at the UK IPO, and the fees paid, the application is assigned to an examiner who checks that formalities have been complied with, including that the applicant has the capacity to own property and that the goods and services have been correctly classified, and carries out a search for earlier registered trade marks.
A report is sent to the applicant or their representative setting out any objections that the examiner has, based on the absolute grounds for refusal and also drawing attention to any earlier trade marks that appear to conflict with the application (relative grounds for refusal). The examiner has no power to refuse registration on relative grounds, though: it is for the owners of earlier trade marks, or other rights, to oppose the application.
Once any objections have been resolved, either in correspondence between the applicant and the examiner or in a hearing, the application is published. The examiner informs the owners of earlier trade marks of the possible conflict, so they can decide whether to oppose the new application. It is also common for the owners of earlier trade marks that the examiner did not consider conflicted with the application to oppose, and the owners of rights in unregistered trade marks (who could protect their trade marks by a passing-off action) or of copyright or rights in designs that conflict with the application may also oppose.
Once the application is published, the opposition period of two months, extendable on request to three, begins to run. Other trade mark systems have a single three-month period, and the shorter initial period in the UK is intended to limit the effect of a fixed delay in the registration process. A prospective opponent only has to file a form indicating that they intend to oppose the application to be automatically granted the extra month.
Any oppositions that are filed in time (with the official fee) must be dealt with before the application can be registered. This will require a hearing, although this will normally be on paper rather than in person, and the hearing officer will decide whether the application can be allowed to proceed. An appeal against the hearing officer’s decision may be made either to an appointed person (a senior lawyer well-versed in trade mark law and practice) or to the courts.
The parties may also agree to a cooling-off period, to allow them to negotiate a compromise. Initially for seven months, a further extension of nine months is also available giving plenty of time to negotiate a coexistence agreement.
How long does it take to register a trade mark in the UK?
Once any oppositions have been resolved, the trade mark will be registered and a certificate issued by e-mail. In the simplest case, with no objections or oppositions, this could take as little as ten to twelve weeks, although six months is more normal. Oppositions can make the process much longer.
How much does it cost to register a trade mark in the UK?
The cost of registering a trade mark comprises the official application fee charged by the IPO and legal fees charged by a trade mark lawyer. While the official fees are fixed, your lawyer’s charges will depend on the amount of work that needs to be done.
The basic application fee is £200 where the goods or services specified in the application are in only one class. However, most applications are now filed online at a discounted fee of £170.
For each additional class, another £50 is charged, whether the application is made online or by post. Many applications now cover several classes, so the official fees can add up to a significant amount. There is no extra charge later in the process, such as a registration fee. The application fee covers the whole process.
In addition to the official fee applicants will have to pay their solicitor or other professional representative, if they have one. Foreign owners of UK trade marks have to provide an address for service in the UK, and although this does not mean they must have a professional representative in the country it is a good idea to appoint one. For a modest fee we will improve your chances of success with your application, drawing up a list of goods and services that maximises your protection, using a blend of general and specific descriptions, and advising on what trade marks – words and logos, and other signs – you should be registering. They can also defend your application against opposition proceedings, and negotiate a coexistence agreement on your behalf if necessary.
Trade mark renewal
Your UK trade mark is registered for ten years, as is the case throughout the EU and in many other countries. You have to pay renewal fees to continue to benefit from trade mark protection.
The IPO will let you know when the renewal date is approaching, and you can renew your registration up to six months before that date. We also ensure that our clients’ trade mark renewal dates are recorded in our database, and that clients are informed well in advance of the need to renew.
No formal evidence is needed that the trade mark is in use, unlike (for example) the USA, but if a trade mark has not been used for five years it becomes vulnerable to revocation.
If a trade mark has been registered for a very wide range of goods and services, it is possible that it will be considered to have been registered in bad faith. Remember that on the application form the owner stated that the trade mark is in use, or is intended to be used. If this statement is false, the registration could be declared invalid.
Trade mark registration in the UK is not compulsory for undertakings doing business here, but it is strongly advised. Protection through the passing-off action is available without registration, but is expensive and uncertain. Registering a trade mark is, on the other hand, relatively cheap and gives the greatest possible degree of legal certainty.