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Differences between an EU trade mark and a UK trade mark

Difference between an EU and UK trade mark in an infographic
From the 23rd of March, there have been changes to the EU trade mark registration process. This post has been updated to reflect those changes.

Trade mark protection is regional. A trade mark registered in the UK will only protect the brand in the UK. Companies that trade in different countries have to file a trade mark in each country separately, unless all the countries are part of the European Union (EU). The EU offers a single trade mark registration for all member countries called the EU Trade Mark.

Deciding between a EU trade mark and a UK trade mark

If you trade in countries, which are part of the EU and you wish to protect your brand in these countries, then you should file an EU trade mark. An EU trade mark registration will also protect your brand in the UK and it is a cheaper alternative to filing in each country individually.The brand protection is valid in all 28 countries which are part of the EU.

If you trade only in the UK and wish to protect your brand in the UK, then a UK trade mark is the way to go. Financially, it is cheaper than filing an EU trade mark application and it allows you prevent others from filing a confusingly similar mark in the UK and the EU.

The downside of a EU trade mark and a UK trade mark

An EU trade mark registration protects your brand throughout the EU so no specific country can be selected or excluded.The trade mark application is also at a higher risk of facing an objection from the European trade mark office or an opposition from the owner of an earlier right. As for a UK trade mark registration, it does not give you rights outside of the UK territory.

Please note that if your application is refused, you will not be able to recover the filing fees paid.

Difference between an EU and UK trade mark in an infographic

The Fees

EU trade mark – £700 (€850) for 1 class | £45 (€50) for 2nd class | £135 (€150) per extra class

UK trade mark – £170 for 1 class | £50 per extra class

You can calculate the fees for your trade mark by using our trade mark calculator.

Deciding between filing your application in the UK or the EU is not always as straightforward as you might think. In doubts, it is highly advisable to consult with a specialist in trade mark law who will be able to give you the best trade mark filing strategy adapted to your needs. Click here to complete our form and one of our trade mark lawyer will contact you to discuss your options.

The Trade Mark Registration Process In The UK – Infographic

A flow chart of the trade mark process in the UK

Trade marks registration can be a complicated process. This is why the entire process can take between 4 to 5 months. There is no guarantee that the trade mark will be registered, but if clear guide lines are followed and a trade mark attorney is involved, your trade mark has a good chance of being filed. A trade mark is in essence your brand. It has to be unique for it to be registered. A registered trade mark gives the owner legal rights to take action against others who use the brand name without permission. Trade mark protection is limited to the country where the trade mark has been registered.

If you trade in the UK only, then you should register a trade mark in the UK. The infographic below shows the trade mark registration process in the UK.

A flow chart of the trade mark process in the UK

The Trade Mark Registration Process In The EU – Infographic (Updated)

Flow chart of the EU trademark
From the 23rd of March, there have been changes to the EU trade mark registration process. This post has been updated to reflect those changes.

The European Union (EU) provides business owners an opportunity to register a trade mark in all the member states of the EU through a EU Trade Mark. The process has some similarities to the UK trade mark registration process. The registration process takes between 5 to 8 months and gives the trade mark owner legal rights to take action against others who use the brand name without permission.

If you trade in the EU, or looking to expand into the EU then you should register a EU trade mark. The infographic below shows the trade mark registration process in the EU.

The EU trademark process displayed in a flow chart.

Why being too descriptive when choosing a trade mark is bad?

Creating a descriptive trade mark

You can’t register a trade mark which is too descriptive. According to UK and EU law, descriptive marks are “trade marks which consist exclusively of signs or indications, which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical, origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;” Confused? A couple of examples may help. So “Food land” for a supermarket, “Cold and creamy” for ice creams or “Seven days” for newspapers would be seen as being too descriptive.

Unfortunately it is a common mistake by small companies and new start-ups when choosing their trading name. Descriptive names come readily to mind for the simple reason that a name that describes what you do seems to make perfect sense. At the time it appears a great idea as consumers would have no doubt what you do. You may even have made this mistake yourself. However when the time comes to register your trade mark the Intellectual Property Office will most likely object to their registration.

Why descriptive marks cannot be registered

You need to think about that the definition itself of a trade mark, its function. The Trade Mark law says that it is a sign capable of graphical representation that distinguishes the goods and services of your business from those of other businesses. This means that its main purpose is to differentiate your business from another business especially in the same area of trade. It helps consumers to identify the source/origin of the goods and services offered, in other words from which company it’s coming. Think about the examples given earlier, how would they fulfil this condition? It is pretty clear that if I say “food land”, the average consumer would think about a supermarket or a market that sells food. It would probably not think of your company as it would be indistinguishable from others. It would also be unfair and against competition law to prevent other companies from using those words when they describe particular goods or services and make it difficult for them to promote their products.

Would it be possible to overcome this decision?

In some circumstances, there’s still hope! In most countries, registration may still happen if you think that your trade mark has acquired a secondary meaning for the consumers. You will have to prove that your trade mark has acquired distinctiveness through use by demonstrating to the examiner that the consumers in the marketplace associate your mark with your business, that they can identify that the products you sell or the services you provide come from your company. IPOs usually review all your evidence and if you have been able to demonstrate that your trade mark has acquired distinctiveness through use as a matter of fact, then your trade mark application would be accepted and would proceed to publication. Going through this process is not easy and generally requires the help of trademark attorneys such as ourselves.

How to avoid this situation

Make sure your trade mark distinguishes your company from another, and that it has a distinctive character. Make it something different, something out of the ordinary! The best would be something so original that when you see it you don’t have to think twice and immediately recognise your company, what you sell, the quality of your product etc…. the more original your trade mark is, the stronger it will be. Think about Rolex and their nice luxurious Swiss watches, the quality of them, the beautiful designs… or Nokia and their modern cameras or smartphones. Be innovative and imaginative!