Menu

TrademarkHub Blog

Trade Mark Support – +44 (0)20 7791 9050

Changes To The EU Trade Mark Legislation

EU Trade Mark Office

Attention business owners and entrepreneurs! As of March 23rd 2016, there’s a few changes being made to EU trade mark registration. If you’ve registered a trade mark in the EU or you were planning on doing so, you might need to take notice of a few changes.

Registering a trade mark in the EU means your branding will be protected through all the 28 countries of the EU. Registration is much the same as if you were to apply for a trade mark here in the UK. You should see if the trade mark is already taken, then submit your application. Once the application is accepted by the office it will be published. If no challenges occur during the publication period, registration is granted. You will hold the trade mark for 10 years before needing to renew it.

The new regulations on EU trade marks should make it cheaper, easier and fairer to own an EU trade mark. Here’s a brief summary of some of the changes:

1. Some name changes

Community Trade Marks (CTM) will now be known as EU trade marks. The Office for Harmonization in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO).

2. Reductions to fees, and introduction of a one fee per class system

Different fees now apply for different numbers of classes, rather than the old blanket fee of €900. You can now e-file a one class application for €850 or two classes for €900. Each further class costs €150.

Class          Current (€)          New (€)

1                  900                        850
2                  900                        900
3                  900                        1050

The fees for renewing your trade mark have decreased from a blanket €1,350.00 to a reduplication of the cost of registration. That is, €1,050 for three classes, €900 for two classes or €850 for one class, and additional classes at €150 per class.

Class          Current (€)          New (€)

1                  1350                        850
2                 1350                        900
3                  1350                        1050

A number of other fees have also been reduced.

  • The opposition fee has been reduced from €350 to €320
  • The revocation or invalidity fee has reduced down from €700 to €630
  • The fee for Appeal has gone from €800 to €720

3. Change of time limits to renewal and proof of use

The renewal date for your trade mark is now the same date you filed your trade mark, plus 10 years (rather than the end of the month in which you filed).

When contesting proof of use against someone using a new trade mark, proof of use has to be furnished if the 5 year grace period ended before or at the application date of the younger trade mark, as opposed to the date of publication of the trade mark.

4. Overly generalised descriptions have been abolished

Trade marks are now only protected for the goods and services that can be inferred from the literal interpretation of the Nice descriptions of goods and services. Formally, a few EU member states and OHIM permitted the use of overly general class headings to protect all goods or services contained in the alphabetical list. Those that relied on this ‘class heading covers all’ practice have a six month grace period, from March 23 to September 23, in which to declare to EUIPO (formally OHIM) that their intention had been to seek protection beyond that covered by the literal meaning of the class heading.

5. Search reports and monitoring letters no longer mandatory

Prior to the changes, applicants were not able to refuse search reports and monitoring of trade mark applications as provided by OHIM. From now on, applicants of a trade mark can choose whether they wish to receive search reports, and owners of trade marks can opt out of monitoring letters regarding younger trade mark applications.This will encourage private monitoring or availability searches and eradicate excess paper work.

The following provisions will come into force in October 2017 as they have to be developed by secondary legislation.

6. Trade marks no longer have to be represented graphically.

A trade mark no longer needs to be represented graphically. For example, if you wish to trade mark a sound, you don’t need to provide the visual notation, just the sound file will do.

7. Introduction of EU certification marks

Certifying institutions and organizations can now file EU trade marks as a signifier for goods or services that comply with certification requirements.

A Startup’s Guide to Copyrights, Trade Marks & Patents

A guide to trademarks, patents and copyrights for startups

As a growing number of people start their own businesses, they have to understand the basics of various matters which will affect their business. One area that needs to be understood by entrepreneurs is intellectual property (IP). In this post, we’ll be defining the difference between copyright, patents and trade marks and how important they can be!  Read on for a basic overview regarding what protection you might need to consider for your company and products.

Copyright

A copyright is one form of intellectual property rights and it protects the expression of ideas. These include (but not limited to) architecture, art, books, computer software, music, and photographs.

An important aspect to note however is that while copyrights protect the expression of ideas, they do not protect the ideas or concepts themselves.  For instance a copyright can protect a particular photograph of a tiger, but other people may still create their own photographs of the same type of tiger.

Sometimes there is a requirement that the work is “an original work of authorship”, so titles, facts, phrases etc. typically can’t be eligible for copyright. However, there are some unique circumstances which allow this, so it is worth checking with a lawyer who specialises in IP.

Here in the United Kingdom there is no copyright registration procedure and therefore businesses can include the “©” symbol or the word “Copyright” with all materials it distributes. They should also include the year of first publication, the name of the owner, and the language “All rights reserved.”

When it comes to using third-party photos, music, or writings on website, marketing materials, etc. It is advised that you should find out if the piece of work can be reused for commercial or personal purposes. If it isn’t, then you could be subject to copyright infringement from the owner of the original piece of work.

Trade Marks

As you would have read from our other blog posts, a trade mark is a sign which distinguishes your companies products or services from its competitors. It can be a word, symbol, logos, slogans that identify the source of goods and/or services.

One of the most important aspects of a trade mark is that it adds consumer confidence in a product or service by association. Everyone recognises the trade mark symbol and therefore it acts as a great marketing tool.  Once you have a registered trade mark you can use the appropriate trade mark symbol ® next to your brand name.

As a startup you should look into protecting your brand early by registering your key trade marks. The cost of not protecting your brand can be very high, so getting a trade mark in the right stage of your startup is essential. In the UK and EU, trade mark registration can be done online and there are a number of trade mark packages available to choose from. Trade marks need to be filed in the appropriate classification, which can be a complicated process for most and is the reason why you should use a trade mark attorney to register your application.

Patents

It is extremely important for startups and businesses to understand the function of patents and how they fit into their business.

Not every startup business will warrant the need to build a patent portfolio, and patents are not easy to register. Briefly, patents protect your original inventions from your key competitors, and they also help you reduce the risk of being exposed to assertions of patent infringement by competitors and third parties.

An invention that hasn’t been introduced in the market is worthy of a patent application. In the UK, a website cannot be patented even if it offers a new function. If you feel you have a distinctively different website or app, then you should consider speaking to an IP attorney.

Patents are the most expensive and time consuming of all the types of IP. A patent gives you the exclusive right to make, use or sell an invention, meaning that it can exclude a competitor from making or selling the patented invention.

Patents have many additional benefits including helping to attract investors.  Plus, the filing of a patent application will enable the company to advertise “patent pending” along with its product or service, so it will help with investors, consumers etc.

Conclusion

So that should hopefully explain a little bit more about the ways you can protect your ideas, work and business, but do check out our infographic on copyrights, trade marks, patents and designs for a quick summary and FreemanHarris are on hand to help you if you have any questions.

Domain Names & Trade Marks

Domain names and trade marks

For many people there can be some confusion surrounding the terms trade mark and domain name, and this blog hopefully clarifies both terms as well as encourage startups and existing businesses to use companies with expertise in these areas.

Will a trademark give you right over a domain?

One question that is often asked is whether having a trade mark, automatically means you have a domain name.  Quite simply, no, they are two different things.  As you know from previous posts a trade mark identifies the origin of goods or services, and if an owner of a good or service would like to use its trade mark as its domain name, the owner must purchase the domain name registration.   There are companies whose brand is their domain name for e.g. ASOS.com. in such a case the domain name needs to be registered as a trade mark.

It is important to note that the use of a domain name merely as an informational part of the domain name holder’s internet address does not qualify as trade mark use.   Some examples of domain name used only as an Internet address include:

  • A domain name that displays only in the Internet address bar
  • A domain name that merely redirects website traffic to another website
  • A domain name that is used in close proximity to language referring to the domain name as an address
  • A domain name that is displayed merely as part of the contact information for the domain name owner

What does a domain need to be considered as a trade mark?

To qualify as a trade mark, the domain name must function as a mark.  That means it must serve as an indicator of source and not merely as an informational part of an Internet address. If the domain name functions separately as an indicator of source, it may be registered with the appropriate trade mark office as a trade mark. For example, a domain name that is displayed prominently and frequently on a webpage might function as a trade mark.  A key factor in determining whether the use of a domain name rises to the level of trade mark use is whether consumers view the domain name as a symbol of origin separate and apart from anything else.

It is important to note that both domain names and trade marks can expire.  The expiration date of a domain name depends on the term agreed when you registered the domain name, and this can easily be renewed.  If a trade mark is not renewed before the due date, the registration expires (they usually run for ten year periods).  These processes are both quite straight-forward (but many people make mistakes, which can be costly and time consuming), so Trademark Hub are always on hand if you ever have any questions, or if you need to renew your trade mark.

Remember, a trade mark and a domain name are not the same, and quite simply are two very different things.  The two can inter-link, however, it is advised that you speak to an expert when looking at getting any aspect of your business trade marked, even if it is the domain name!

The International Trade Mark Registration Process – Infographic

If you are thinking about expanding your business to other countries, or run an online business that can be accessed by people all over the world, then you may want to think about protecting your brand with international trade marks. If your business isn’t protected, then someone else abroad could either leverage the status of your brand to help their business, or damage your brand’s reputation by using your name on a business with inferior product or poor business practices.

To register an international trade mark, you have to apply to each country individually, however this can be managed centrally through the Madrid System from the WIPO (World Intellectual Property Organisation.) The process is still lengthy, taking 12-18 months depending on the country, but considerable amounts of time and money are saved by using the centralised Madrid System compared to separate applications.

The international trade mark application process is quite complex, so we have created the following infographic to help explain it.

Infographic displaying the international trademark process

5 Useful Tips For Registering A Trade Mark In The UK – Part 2

Registering a trade mark in the UK

This is a continuation of the the first part of 5 Useful Tips For Registering A Trade Mark In The UK. Read on for tips on how to register your trade mark in the UK.

3 – Prior searches

Once you have a unique and distinctive mark, and prepared a list of goods and services, it is time to check for conflicting marks (identical or confusingly similar). There might be a conflicting mark, which has been filed or registered with similar goods and services as yours. You will have to check both the UK IPO and OHIM (which is the European Trade Mark Office). A community trade mark (CTM) provides protection in 28 countries, which are part of the European Union and therefore a person may have acquired the right to use an identical or similar mark to yours in the UK by registering their mark as a CTM. Click here to know more about the “Differences between a European trade mark (CTM) and a UK trade mark”.

If you find a trade mark which conflicts with your mark, it does not mean that your trade mark will not get registered. It should however make you alert that you risk facing an opposition from the owner of that trade mark. UK IPO itself does not object to your application on that basis, but they might inform the owner of your application and/or the owner might have put in place a trademarking watch service which means they will be notified of your application through that service. It is then up to the owner to file an opposition against your application.

Apart from recently filed or registered trade mark, you should consider conflicting unregistered marks that are in use. A large number of entrepreneurs do not register their brands, but have been trading under that mark for some time and are known by consumers under that mark. Therefore, they could be entitled to prevent you from registering your mark. It is very difficult to find all unregistered marks, which might conflict with yours. You may want to start your searches on the internet, trade directories and in the relevant sector of trade. However, your searches might not reveal all conflicting unregistered marks.

4 – Make sure you file your application correctly

When you file a trade mark application with the UK IPO, it is important to get these 3 things right:

a – The details of the applicant. Who will be the owner of the trade mark? Your company or yourself as an individual? And will you be the only owner or will it be a joint ownership? While those details could be amended later, it would make your life easier if those details were correct from the beginning.
b – Your mark. It is not possible to change your mark once you have filed your application, so make sure you have selected the correct mark you wanted to protect. For a word mark, it is not important if you have written the word in lower or uppercase as any style of writings the word will be considered to be covered.
c – The list of goods and services. After filing your application, you cannot add any items in your list of goods and services. Your only possibility will be to file a new application to add those items. To avoid this situation and the extra costs involved, make sure you have everything included in the application that you want to cover. To guide you, here is the list of the Nice classification by the UKIPO.

5 – How to overcome a complication?

There are 3 ways to file your application with UKIPO: online, by post or by fax. Filing your application online will give you a £30 discount for the first class (instead of paying £200 it will be £170, then £50 per extra class) if you do not go for the RightStart option which we talked about in the 1st section.

Once your application has been filed, it will take between 5-6 months to get registered if everything goes smoothly. Click here to learn more about the UK IPO application process.

It is not rare for applicants to face an objection from the UK IPO or an opposition from the owner of an earlier registered mark. When this happens, it does not that your application will never get registered. There might be a way to overcome such objections or oppositions and this is why it is important to have in-depth knowledge of trade mark law. To know your chances of succeeding and/or filing a response, it’s best to seek legal advice from a trade mark attorney or a specialist UK solicitor. We know that you might be worried about costs, but sometimes instructing a professional may be the more costs effective way as they would be able to tell you if it is worth responding and if it is, they would find the right arguments to succeed.

5 Useful Tips For Registering A Trade Mark In The UK – Part 1

Registering a trade mark in the UK

The process of registering a trade mark can be complicated, which is why we highly recommend that you use a trade mark attorney or a specialist solicitor to register your trade mark. Saying that, we 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 5 steps which will help you register a trade mark.

1 – Signs which are not registrable

Firstly, it is 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?”. This is the question the 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 RightStart application. This application process includes trade mark assistance for non-professionals. Through this procedure, you only pay half of the fees upfront as the examiner only examines your application to inform you if there will be any obstacles to registering your trade mark. If the examiner thinks that your mark is not in compliance with trade mark law or finds a confusingly similar trade mark, you are free to abandon the application at this point. You must note that the government fees will not be refunded.

2 – Prepare your list of goods and services

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. include 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;

In the second part, we’ll give you tips on searching existing trade marks, which might conflict with yours and how to file your application correctly.

 

Protecting Your Business Abroad – What You Need To Know About International Trade Marks?

Searching for international trade marks

So you’ve registered your trade mark in the UK, and you’ve also applied for a Community Trade Mark to protect your business in the EU, but now you want to think about worldwide expansion. How do you go about getting a trade mark registered everywhere else?

What is an international trade mark?

The first thing to understand is that there is no such thing as a standalone ‘international trade mark’. If you want to register your trade mark outside of the EU, you have to apply to each country individually and your application will be processed by each respective country’s IP office.

Applying to individual countries sounds complicated, however the process isn’t quite as tricky and time consuming as you may think. The World Intellectual Property Organisation (WIPO) offers a solution called the Madrid System, which allows you to apply for a trade mark in multiple countries at once.

What is the Madrid System?

The Madrid Union is a 120 year-old agreement between countries to facilitate the registration of international trade marks. Today it has 97 members, including the UK, EU and OAPI (African Intellectual Property Organisation,) that represent 113 countries and 80% of world trade. Using the WIPO’s Madrid System, you can register a trade mark in any number and combination of these countries by filling in a single application and then the status of your trade mark in each country can be tracked and managed centrally through the WIPO site.

Without the Madrid System, international trade mark applications may have to be translated, incurring additional costs, and fees paid in multiple currencies, whereas WIPO requires a single payment in one currency (Swiss Francs.)

What can be registered as a trade mark internationally?

Anything that you can trade mark in the UK, you can apply for a trade mark for internationally, however you must have an existing UK or EU trade mark (or current application) before you can apply for that trade mark internationally. Your international application must be identical to your existing trade mark registration, and you cannot add any classes but you can subtract some. (For a refresher on trade mark classifications, see our understanding trade mark classes blog post)

The fate of your international trade mark is also tied to your UK registration. If within the first 5 years of your Madrid System application, your UK registration or application is withdrawn, refused, cancelled or restricted, the same will also apply to your international application.

Due to these strict rules and the complexity of trade mark applications, it’s a good idea to work with a trade mark attorney on your Madrid System application.

Have more questions about international trade marks? Give us a call on +44(0)20 7791 9050 or fill in our contact form and one of our experienced trade mark attorneys will get back to you ASAP for a free, no obligation chat and advice!

FAQs

How much does it cost?

The cost of an international trade mark application depends on which countries you have chosen and how many countries. The WIPO has a fee calculator you can use to work out the cost of your application.

Regardless of which countries you apply to, the fee is charged in Swiss Francs (CHF).

How long does it take?

International trade mark applications take on average 12-18 months. Each country has its own time limit for processing applications.

How long does an international trade mark last?

Trade mark registrations abroad last the same length of time as in the UK – 10 years – and can be renewed the same as UK trade marks.

Am I guaranteed to get my trade mark?

There are no guarantees that your application will succeed in every country you apply to. As with UK and EU trade marks, your application can be contested.

In some countries, if your application is contested and you withdraw it, or lose your challenge to the opposition, you may have to pay towards their costs, therefore it is advisable to seek advice from a trade mark attorney in this case.

The good news is that if your trade mark application is contested or refused in any particular country, it won’t affect your applications in other countries in any way.

I need to register my trade mark in the UK first. How do I do that?

Find out more by reading our UK trade mark application process blog post.

US Trade Mark Categories – Infographic

A person searching for US trade mark categories

The process of registering a trade mark is different across the pond in the United States. Trade marks in the US are divided by categories, which are ranked by distinctiveness. This system allows the United States Patents and Trademarks Office (USPTO) to evaluate trade mark applications. The 5 categories are listed as follows:

  • Fanciful trade marks: Fanciful trade marks are made-up words which are invented to be used as a trade mark name. They don’t have a meaning or are associated with anything. Good examples of fanciful trade marks include Polaroid and Exxon. From a legal point of view, once fanciful trade marks have become reputable, they would be easier to protect due to their uniqueness. It would be easy to find and prevent competitors from using a similar or identical mark.
  • Arbitrary trade marks: Arbitrary trade marks are words that have a real, common meaning. However, the meaning of the mark is unrelated to the goods or services offered under the mark. Good examples of arbitrary trade marks include Apple and Dove. Apple is a fruit, but it doesn’t have any relation to computer hardware produced by Apple.
  • Suggestive trade marks:  A suggestive trade mark is named after a characteristic of the product or service. There has to be an imaginative element to the trade mark so that the consumers can make a connection with the goods or service. Good examples of suggestive trade marks include Netflix and Microsoft. Netflix suggests online films in a suggestive and unique manner. A potential problem with suggestive trade marks is that some of them can be seen as descriptive by others.
  • Descriptive trade marks: Descriptive trade marks are descriptive of the goods or service. They can partly or wholly describe the goods or services being sold under the mark.  Good examples of descriptive trademarks include British Airways and Best Buy. For a descriptive mark to acquire substantial protection by the USPTO, the brand has to develop a “secondary meaning”, which is developed through “significant advertising budget” and over a 5 year period.
  • Generic trade marks: Generic trademarks cannot be protected as they are simply a generic description of the product or service. The USPTO has decided that categorical terms should be freely available for public use. Good examples of generic trademarks include Band Aid and Thermos. Certain marks, like the examples provided, were once protected trade marks, but they have been afflicted with “genericide”. This is when a word becomes so generic it loses its legal power as a trade mark.

Our infographic below summarises the five categories with examples of famous trade marks in each category.

Infographic displaying trade mark categories used in USA

It should be noted that the generic trade marks shown in the image above have all been afflicted with ‘genericide’.

Now, which category of trade marks should you choose in the US. It is unanimously agreed that fanciful and arbitrary trade marks are the way to go. They are easier to register, and make it easy for you to enforce your protection in the future. However, most companies would prefer to register a suggestive or descriptive trade mark so that consumers can make an instant connection with the goods and service sold under the mark. From a marketing perspective, it would take considerable time and effort to build a brand reputation with a fanciful or arbitrary mark. Hence the preference for the other two categories.

When looking to register a trade mark in the US, you should speak to a trade mark attorney in order to get professional advice. They will help you choose the right mark, which is sound from a legal perspective and is also marketable.

Understanding Trade Mark Classes

Image showing an idea and understanding trademark classes

What is a Trade Mark?

Briefly, a trade mark is a sign which can distinguish your goods/services from those of other traders. This can include: for example, words, logos, colours or a combination.

Very often companies use their trade mark as a marketing tool, not only so that customers recognise their products/services but also because it can be a very valuable asset, and very often products/services which are trademarked are deemed to be reliable and of good quality.   Plus in the event of conflict with other brands and companies your registered trade mark can assist you.

The Trade Mark Classification

The Trade Mark Classification system is divided between goods, in classes 1 – 34 and services, in classes 35 – 45.  The examples provided in these classes are not exhaustive and you would therefore need to use the Classification Search Tool if your goods/services were not on the list.  This is because your trade mark gives your product or service the correct protection, and very often applications fail because the correct class or classes were not indicated when submitting an application.

It can be confusing and due to the costs involved (especially if you have to make repeat applications) it is advised that using a Trade Mark Attorney makes for a much easier process.

Some of the classes for the Classification of Goods include:-

Class 11 - Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus; electric kettles; gas and electric cookers; vehicle lights and vehicle air conditioning units.
Class 12 - Vehicles; apparatus for locomotion by land, air or water; wheelchairs; motors and engines for land vehicles; vehicle body parts and transmissions.

Class 15 - Musical instruments; stands and cases adapted for musical instruments.
Class 16 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
Class 25 - Clothing, footwear, headgear.

Some of the classes for the Classification of Services include:-

Class 35 -  Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; retail services connected with the sale of [list specific goods].
Class 36 - Insurance; financial services; real estate agency services; building society services; banking; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information.
Class 38 -  Telecommunications services; chat room services; portal services; e-mail services; providing user access to the Internet; radio and television broadcasting.
Class 43 -  Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; retirement home services; creche services.

The reason that there is a Classification List of 45 classes is an attempt to ease the process of identifying which category your particular goods or services belong.  Basically:

  •         a product is classified according to its function or purpose.
  •         raw materials are classified according to the material of which they consist.
  •         services are classified according to activity
  •         information services are classified in the same classes as the services that correspond to the subject matter of the advice.

Since the implementation of the new Trade Marks Act on 31 October 1994 applicants have been able to file an application covering more than one class of goods/services, these are more commonly called multi-class applications, and are a very useful tool for some companies.

When filing a trade mark application, you must identify which class or classes of goods/services you wish to apply for and pay a separate filing fee for each class.

Although the trade mark office reviews each class of goods and services independently, you should file an application to cover all classes that you intend to file your trade mark under. Even if your trade mark is rejected for a specific class, you will still be able to register your trade mark for the remaining classes.

The value of filing your trade mark is supported by the fact that a 2011 IPO (Intellectual Property Office) study found that companies who apply for trade marks are on average 7% more productive than those that do not.

In 2014 there were 110,838 UK trade mark applications, and these are increasing year on year, and the benefits are substantial.

However, the classification list is long, and it can be hard to ascertain quite where your product or service sits, and it can be far easier to seek the help and advice of a trade mark attorney who deals with these applications on a regular basis.

Trade Mark Search On The OHIM Database

The OHIM headquarters and searching for a trade mark

You can search the OHIM trade mark database on our website to find out if your trade mark is available. There are over 7 million registered trade marks in the OHIM database, which is the European registry of trade marks. Save time and money by searching our fast and easy database to see if your trade mark is available to register.

Our OHIM trade mark search is free and we do not ask for your details. We recommend that you conduct a search to find out if your trade mark is available. Your application can face an objection if you file without checking.

How do you search the trade mark database?

To search our database, type in your trade mark into the search bar shown below and press submit.


The search results

The search results (shown below) will show similar trade marks that can be found on the OHIM trade mark database. The results will only show trade marks registered in the OHIM database which is the European registry of trade marks.

Search results of a trade mark search on the OHIM database

If the trade mark you want to register does not show any similar results, you can proceed to apply for your trade mark.

Things to note

  • When similar results are found, you should put yourself in the position of a consumer and consider if your trade mark can be mistaken for any of the similar marks. If the similarity would be confusing, then you will have a problem.
  • When searching for similar trade marks, your search should include identical marks that can potentially be confused with your trade mark. This will help make sure that objections are not raised when your trade mark is filed.
  • If a similar trade mark is found, you should check the class of that trade mark. There is a good chance that you can file your trade mark if the class of the similar mark is different to yours.