One of our most common enquiries is how to register a trade mark in the UK. Having a registered trade mark enables you to take action against competitors who might, inadvertently or otherwise, use a conflicting sign in the course of trade. Trade mark registration gives you rights which are enforceable should a conflict exist.
Without a registered trade mark (or an application for registration) the only rights which may be available to a trade mark owner are passing off rights. Passing off rights only exist if the name has been used enough to establish a reputation; the threshold of proof is very high. Passing off rights can be difficult to enforce.
How do I register a trade mark in the UK?
There are essentially two stages which need to be passed in order to obtain a trade mark registration in the UK.
- Is the mark registerable?
- Does somebody else already have rights?
1. Does the trade mark meet the requirements for registration?
The first stage is “registrability” and this is essentially where the trade mark registry determine whether the sign you wish to protect meets the requirements for protection and can serve the function of a trade mark.
Under UK trade mark law, it is generally not possible to obtain a registration for a trade mark which is descriptive of the goods and/or services for which it is used. Additionally, a trade mark cannot be registered if it lacks a distinctive character.
What can be registered?
- distinctive signs
- signs consisting of words, logos, colours and other figurative designs
Your trade mark CAN NOT
- lack distinctiveness
- be offensive
- describe the goods or services for which it is intended
If an objection is raised concerning registrability it is known as an “absolute grounds” objection. Such objections can sometimes be overcome if the trade mark has been used enough over time that it has acquired a distinctive character, although proving such reputation can be difficult.
Once a trade mark application has passed the absolute grounds stage the trade mark is published on the online UKIPO Trade Marks Journal.
2. Does somebody else have earlier conflicting rights?
The second stage of the process involves dealing with any “prior rights”. After publication there is a period during which third parties can oppose registration of the mark, if they have earlier conflicting rights. These are known as “relative grounds” objections.
During the trade mark process the UK Trade Mark Registry carry out a search for prior trade mark rights. They will not reject an application if a potentially problematic mark is found. Instead, the Trade Mark Registry will inform the proprietor of the earlier mark of the existence of the application, and the proprietor may then file an Opposition against the application following its publication, should they believe a conflict to exist.
Trade mark searches can identify possible conflicts
Trade mark searches prior to the filing of a trade mark application are not mandatory but can be useful in determining whether the mark is already registered.
Searching for potentially conflicting marks is not as straight forward as some may think. So, you have carried out a search for an identical mark and the search engine results indicate that no earlier marks have been found – sounds good, right? This is indeed a positive result BUT there can also be conflict if another party has an earlier similar trade mark.
Searching for prior marks and assessing the risk of conflict can be tricky. Here at Sandersons we have highly experienced trade mark searchers and attorneys who can help with all aspects of the trade mark registration process, opposition and enforcement. We specialise in guiding you through the trade mark process, ensuring that it is as smooth as possible.
Professional advice is invaluable
Professional trade mark advice helps to avoid mistakes and optimise protection when you want to register a trade mark in the UK.
It is of course possible to self-file a trade mark application but experienced qualified trade mark attorneys understand the intricacies of trade mark law and have extensive experience of working with clients to avoid the pitfalls. This makes for more robust protection and value for money when securing a key business asset.
Professional advice before and during the registration process can help you avoid costs later.
- Pre-filing advice
- Filing the application
- Handling oppositions
- Advising on infringement
- Trade Mark Watching
- Renewals
- International protection
- Portfolio management
International trade mark registration
Trade marks are territorial. Applications must be filed in each territory to seek protection in a particular country or region. We work with a network of correspondent attorney firms around the world, enabling us to provide our clients with assistance in protecting their IP rights internationally.
Contact us if you would like to discuss registering your trade mark.
