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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.