Trademark Registration in UK
The process of registering a trade mark can be complicated, which is why Sparrow Creative highly recommend that you use a trade mark attorney or a specialist solicitor to register your trade mark. Saying that, I also understand that some people are on a tight budget and therefore cannot afford the legal costs involved. So, if you plan on registering a trade mark yourself, here are four important steps which will help you register a trade mark in UK.
1. Not registrable signs
It is very important to know what a trade mark is, a trade mark is a sign that distinguishes the goods and services of one trader from another in the market place. Registering a trade mark gives you exclusive rights to use a mark in connection with specific goods or services. Due to this not every mark can be registered. The trade mark law has strict requirements over what signs can be registered.
When thinking of registering a trade mark, the first question you need to ask yourself is, “Will my sign (word, logo, slogan, etc…) be seen by the general public as a trade mark?”, you can check out my article about creating a timeless and full proof Trademark Logo here.. This is the question the UK IPO (Intellectual Property Office) will consider.
There are a few signs which cannot be registered and we’ve listed them as follows:
a general description of your goods or services for example ‘warm thermos’;
a description of their goods or service’s characteristics, for example ‘light vacuum’;
lack of distinctiveness in a sign for example ‘band-aid’;
and/or are customary in the language of the trade for example ‘Panadol’;
All of the above will be the subject of an objection by the UK IPO.
By creating a very imaginative mark, you can reduce your chances of getting an objection from UK IPO. For a word mark, its best to invent a word. Alternatively, you can choose words that are not obviously associated with your good or services. For a logo mark, it is highly advisable to have a stylish design element, which is unique and distinguishable. The more unique and distinctive your mark, the better the chances of having your application being accepted.
If you are not sure if your sign is in compliance with trade mark law, you can use the UK IPO on-line Right Start application. You must note that the government fees will not be refunded.
2. Black on white, list it all
A trade mark registration does not give protection over your mark in general. It gives you protection over your mark in relation to certain goods and/or services. So before filing a trade mark application, you need to precisely determine the goods and/or services under which your trade mark will be used. Once identified, they will need to be classified under an international classification called “Nice Classification” and you will then have to mention them in your application.
The Nice classification divides goods and services into 45 different classes: Classes 1 to 34 are for goods and classes 35 to 45 are for services. Whilst it may seem easy to understand the concept of organising your goods and services into different classes, the reality is not as simple. Each class contains thousands of terms and descriptions. When writing your classification, it is important to:
a. includes all the terms applicable or that will be applicable in the near future to your business; b. not be tempted to choose a wide range of goods and services. If you are too broad, your registration might be subject to cancellation for non-use in relation to those goods and services for not being in use 5 years after the date of registration; c. and be precise, because if your terms are found to be too vague, it will cause delays in the process of your application;
The initial fee for Trade Mark Registration – in one class – is £465.00 plus VAT and includes the issue of the Registration Certificate. If the Registry refuses to accept the application and decrees that the mark will not be acceptable under any circumstance, £315.00 plus VAT will be refunded.
If, however, the mark can be amended to satisfy the Registry requirements, the application can be resubmitted with the additional fee of £150.00 plus VAT.
If the mark applies to more than one class, the fee for each additional class is £50.00 plus VAT.
Please note, purchase of trademark is subject to the availability of that trademark.
4. Review and submit
The final section will show you all the details you’ve entered for your application, you need to review, amend as needed and click next to submit. (This cannot be changed once submitted so check thoroughly for spelling errors/ random classes!)
Once you’ve clicked next, you’ll be taken through to a payment page. Once payment is submitted, you’ll see a confirmation page, make sure to screenshot your application number.
You should also receive an e-mail soon, but just in case it’s good to have the number for reference. Now you’re done, sit back and wait a really long time (usually three months) for the trademark to be filed. It may also be challenged at this stage once it’s published in the trademark journal.
Below you can find the important links containing information to further assist you on registering your first trademark.
Or visit your local council for further more information.