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.