Any natural or legal person can register his or her trade mark, even if they are not based in the UK, but have a UK address for service.
First of all the applicant has to check if he/she can register his/her trade mark.
The trade mark must be unique. It can consist of words, logos, colours, 3D shape and even sounds, or their combination.
The applicant can`t register the offensive trade mark or if it describes the goods or services it will relate to, or if it`s misleading, or too common and non-distinctive, or if it looks too similar to state symbols or names of international organizations.
The applicant can also register collective and certification trademarks.
A certification mark is registered as a rule, in the name of government departments, trade associations, etc.
A collective mark is used for the goods or services originating from members of a trade association.
There`s one more action, the applicant should do before filing the application ― to check if there are any similar trademark already registered in the same class of goods or services. It could be done with the help of database.
The applicant can also ask for help of a trademark expert or attorney with that search.
The UK Intellectual Property Office uses the international trade mark classification system (Nice classification). It consist of 45 different classes of goods and services. 1 to 34 classes cover goods and 35 to 45 classes cover services.
The trade mark can get the protection only for the goods and/or services the applicant selects. That makes the applicant`s choice so important. It`s impossible to add extra goods or services after the application.
The registration process itself could be described in three steps.
- Application.
The applicant has to point out the following data in his/her application: applicant`s personal data, details of the trade mark, the classes of goods and services for it.
The applicant has the right to make series applications when he/she has similar versions of the trade mark (up to six marks). All these versions must have minimal differences.
The applicant can also use the ‘Right Start’ service. It will cost more but the applicant will receive a report from the UK Intellectual Property Office, telling him if his/her application meets the rules. If the applicant wants to continue, he/she must pay the full fee within 14 days.
The applicant can`t change the trademark after application and get the fees back.
- Examination & publication.
If the applicant follows the ordinary way, he/she will get the examination report in up to 12 weeks. If the UK IPO has no objections, they publish the application in the trade marks journal for 2 months. This is the period for opposition.
The IPO will inform the applicant if someone opposes his or her application. In this case, the applicant can withdraw or defend his/her application. The applicant cannot register the trade mark until this problem is solved.
- Registration.
If there`s no opposition, the UK IPO will register the trade mark approximately two weeks after the end of the opposition period. The applicant will get a certificate. This certificate protects the trade mark in the United Kingdom only.
The applicant can take some actions after the registration process. He or she is able to take legal action against any person who uses the similar trade mark without the applicant`s permission, including counterfeiters, the applicant can also sell and license his/her trade mark.
The trade mark is valid for 10 years and could be renewed after that time. However, from the other side, the registered trade mark can be revoked if it’s not used for five years.
Cost of trademark registration in UK
A single online trade mark application covering one class …………… £170.
Extra classes ………………………………………………………… £50 per class.
The same application covering three classes …………………………. £270:
£170 for the application and first class;
£100 for the two extra classes (£50 each).
The ‘Right Start’ service ………….£100 initially, plus £50 for each additional class.
