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How to deal with a trade mark infringement threat

Dealing with a trade mark infrongement

Building a brand takes a lot of work.  After all the effort and hard labour you’ve put into creating your distinctive brand, it’s not pleasant to find out someone is using or manipulating the materials you’ve created. If you’ve registered a trade mark and someone is using it, or a deceptively similar mark, without your authorisation then they could be infringing upon your trade mark.

Identifying trade mark infringement

If you think that someone is using your trade mark in a way that is likely to confuse, deceive or mislead customers then you can start a trade mark infringement threat against them. To claim trade mark infringement, you have to prove the following:

  • that you have a valid trade mark registration that is legitimate and should be protected;
  • that a third party is infringing it and using it in trade;
  • and that the third party does not have consent to use the mark;

As these cases can be complicated, it is essential that you consult with a trade mark attorney before proceeding.

Using a Cease and Desist letter

If you do have a valid mark that ought to be protected, then the first port-of-call is normally to send carefully worded Cease and Desist letter (also known as a Letter of Claim or a Letter Before Action). This letter is designed to open communication and bring about an amicable settlement without the need for legal action.

The letter notifies the infringing party that you have a registered trade mark and insists that the third parties use of the trade mark stops. Alongside this letter, you can send a legally binding undertaking – a type of legal promise- which outlines the obligations of the third party not to commit any further infringing acts.

Unjustified trade mark infringement threats

If you have your solicitor send a Cease and Desist letter or Letter of Claim it must be very carefully worded so as to avoid unjustified threats of trade mark infringement. In the UK, if you file a trade mark infringement threat against a third party, but it is found to be wrongly alleged then you could be liable for making an ‘unjustified threat’.

In short, if you file for trade mark infringement against someone who turns out not to have infringed your trade mark you could make yourself liable! Any ‘aggrieved person’ could bring action against you for making a threat with no grounds. ‘Aggrieved person’ is a large and vague category, covering not only the person to whom the threat was given but anyone whose commercial interests might be affected. This could expand to include manufacturers or distributors. This particular piece of legislation is unique to the UK, and may change soon as the Unjustified Threats Bills is currently before Parliament, as of April 2016.

Lack of cooperation from trade mark infringer

If you’ve sent Letters of Claim, the party is continuing to infringe your trade mark and there is sufficient evidence of a breach then you can make a claim in the Chancery Division of the High Court (the Court of Session in Scotland), or the Intellectual Property and Enterprise Court (IPEC). An injunction can be obtained from either court to prevent the repetition of trade mark infringement.

Remedies for infringement of trade marks

Apart from a court injunction, there are a number of other remedies available. These include an inquiry into the damages caused or profits made by the trade mark infringer. Better known brands can order forcing the defendant to publicise the judgement through a publicity order. This is only necessary if there is a need for a supplementary deterrent and/or to contribute to public awareness about the infringement.

Court proceedings will ensure the infringer will cease trading and may have to pay compensation for damages if applicable. It is still possible (and indeed, often advisable) to reach a settlement before going to court.

Simplified Steps to Claiming Trade Mark Infringement

(Remember that settlement can occur at any point in these steps.)

  1. Identify the offending mark and check it is infringing your mark
  2. Check that your mark is valid and ought to be protected
  3. Send a Cease and Desist Letter
  4. Send a legally binding undertaking (optional)
  5. Issue a claim form to start civil proceedings (if no settlement is reached)
  6. Approach Trading Standards Officers (applies to criminal proceedings only for e.g. counterfeit products)
  7. Attend court and reach settlement
  8. If necessary, appeal against the court’s decision.

What to do if you’ve been issued with an infringement notice

If you’ve been served an infringement notice, arguing that your trade mark violates another party’s then you should contact a trade mark attorney immediately. You should check to ascertain whether your trade mark is in violation of anothers or not, and check the validities and expirations of all marks. If you have made a mistake, then it is best to come to an amicable agreement by liaising with the other party through your attorney.

Why you should use a lawyer to file your trade mark registration

Trade mark lawyer filing a trade mark

Filing a trade mark registration can be an expensive process, so it is unsurprising that many people question whether they should try to reduce costs by filing the application themselves, rather than employing a trade mark attorney. However, it is important to weigh up the potential savings against the risk of problems and higher costs later on that can come from not having professional help. Any errors made in your trade mark application can end up being very costly, both in time and money.

Correctly Filed Trade Mark Application

If your trade mark application is improperly filled in, or incorrectly filed, then it is very likely to be rejected and you will lose the filing fees. If you want to try again to register your trade mark, you will have to pay the full fees again, making the filing process a lot more costly than necessary. Using a trade mark lawyer to help you file your application means that it will be filled in correctly the first time, leading to a much lower risk that it will get rejected, saving you the cost of subsequent re-applications.

Using a trade mark attorney can also speed up the process of obtaining your trade mark. The application process can take 5-8 months depending on the type of trade mark. If you fill in the application yourself and it is rejected due to mistakes, you will have to re-apply and potentially wait another 8 months for your trade mark protection. A professional trade mark lawyer will know how to file your application correctly, greatly reducing the chance that your application will be rejected and the process will have to be repeated.

Once you file an application, your trade mark is provisionally protected, but you cannot enforce this protection by filing a trade mark infringement or damages claim until the trade mark registration is complete. If your application is rejected because you have filled it out incorrectly, this leaves you without protection and your competitors could use your mark without any legal consequences.

Trade Mark Classes & Descriptions

The trade mark application process is a lengthy and relatively complicated one, particularly when it comes to classifications. There are 45 classes of goods and services that you have to choose from, and often registrations fail because the incorrect class or classes were indicated on the application. In addition to this, if you select a class on your trade mark application, then don’t use your mark for those specific goods or services within 5 years or registration, your trade mark could be challenged and possibly revoked. A trade mark lawyer will be familiar with all of the classes and their definitions, and will be able to advise you on which ones you should select to protect your trade mark, removing the confusion and considerably decreasing the risk of your application being rejected.

Third parties, i.e. your competitors, have an opportunity to oppose your trade mark application as part of the registration process. If this happens, you will have to defend your application.  In the UK, if you fail to defend your application, it is deemed to be abandoned and the you may be liable to pay third party costs.  A trade mark attorney is best placed to advise on the necessary steps to take in case of an opposition. They will find the arguments to put forward for a case and can allow you to overcome that opposition.

UK or EU Registration

When registering a trade mark in the UK, you have a choice of applying for a UK trade mark, or an EU trade mark. The UK trade mark and EU trade mark provide different protections for your brand, and your trade mark attorney will be able to advise on which is best for your business and specific trade mark. Although the EU trade mark filing fees are more expensive than for a UK trade mark, your trade mark attorney will be able to let you know whether it is advisable to apply for EU protection to avoid potential greater costs and barriers to international trading in the future.

So how much does it actually cost to use a trade mark attorney to register a trade mark? Take a look at our trade mark calculator to get an idea of how much your application will cost with our team of experienced lawyers. We offer three different packages – Bronze, Silver and Gold – depending on the level of support you require, and our Gold package even comes with a money-back guarantee!* Plus, you can complete the entire process online with us – no need to come to our offices or spend hours on the phone.

Got more questions? Contact us with your query and we can phone or email you back, or you can talk to us using our live chat feature, we’re here to make the trade mark application process as easy and straightforward as possible for our clients.

*T&Cs apply

What is a trade mark class?

A trade mark class, or classification, is a category which describes the type of goods or services your trade mark represents.

E.g. Class 25 – clothing, footwear, headgear. Class 35 – advertising, business management, business administration

Find out more about trade mark classes

What is the difference between a UK trade mark and an EU trade mark?

A UK trade mark protects your brand in the UK, and is less expensive to file than an EU trade mark.

An EU trade mark, or Community Trade Mark, protects your brand in all 28 countries that are part of the EU.

Find out more about UK and CTM trade marks

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.


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.


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.


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. 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!


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.