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.