A trade mark is any sign, word or symbol, capable of being represented graphically that distinguishes the goods or services of one trader from those of another.
Trade marks that are recognised and trusted by consumers can be a very important part of a company’s asset-base and goodwill.
Why register your trade mark?
By registering your trade mark, you will be able to:
- Protect many aspects of your branding including your company name and logo
- Obtain exclusive legal ownership of your brand name
- Prevent others using your registered trade mark
- Extend your trade mark rights internationally
- Ensure you are not infringing the registered rights of anyone else
- Secure your investment in building the reputation and goodwill of your business
- Stop others holding you to ransom
The Trade Mark Process
Decide on the trade mark to be registered
Under UK and European Community trade mark law it is not usually 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. It is possible to overcome such an objection by demonstrating that the trade mark has acquired a distinctive character through use, but this requires use on a sufficient scale to have built up goodwill in the trade mark. Trade mark searches can help determine whether the proposed trade mark is likely to cause conflict with the trade mark rights of third parties.
Decide which countries your trade mark needs to be registered in
Trade marks are territorial and only provide protection in the countries that they are registered in. Following the filing of a first trade mark application, there is a six-month priority period, within which trade mark applications (for the same mark) may be filed in other countries. Those corresponding applications are then entitled (upon request) to the initial (“priority”) date of the first application. The priority period enables the spreading of costs.
File a trade mark application (UK application)
An application is submitted to the UK Intellectual Property Office (IPO). When registering a trade mark, one has to specify the goods and/or services on which that mark is being used, or for which there is a bona fide intention to use that mark.
Application examined by UKIPO (one month)
Once an application has been filed, it is subjected to a search and examination process. In most cases the official examination results are issued by the Registry within two months from filing the application. If the UK Registry identifies prior rights belonging to third parties, those will be drawn to attention, but the Registry will not refuse the application simply on the basis of third party rights. Instead, it will draw the attention of the parties to the potential conflict and then leave it up to those parties to sort out any difficulties, for example by using formal opposition proceedings objecting to a later application.
Any objections to the mark are notified and resolved (2 months)
Any objections raised in the Examiners report will be reviewed by your trade mark attorney who can advise on the best course of action. Matters can usually be dealt with via correspondence with the UK Trade Mark Registry.
Application advertised by UKIPO to allow possible oppositions (six months – two years)
Once the examination has been successfully completed, the application is published in the UK Trade Marks Journal. Following publication of an application, there is a two-month opposition period (extendable to three months), during which any third party may oppose registration of your mark on the basis of earlier rights. To be successful in an opposition, another party would need to prove that they have an earlier right to a similar or identical mark in relation to similar or identical goods and services, leading to a likelihood of confusion.
Registration certificate issued
If there is no opposition, or when an opposition has been resolved, the application will proceed to registration. A registration certificate is issued and the trade mark is placed on the Register for a period of ten years from the date of application.
Registration of the trade mark can be renewed every ten years by payment of an annual fee
At the expiry of the initial ten-year period, the registration can be renewed indefinitely for further periods of ten years, subject to payment of the relevant renewal fee.
Trade Mark Registration
We offer a full, worldwide Trade Mark Registration service, to ensure your business or brand are protected from infringement.
James Sanderson, Partner
Speak to our specialist team
If you would like further advice and information contact one of our attorneys today
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