Registering a Trade Mark
A Trade Mark is a distinctive logo, word, phrase or graphic that distinguishes the products and services of one company from the next. A Trade Mark is an integral part of a company's branding that enables customers and other businesses to associate a given product or service with the supplying company.
The UK Patent Office is responsible for registering and maintaining Trade Marks records in the UK , with this said a Trade Mark does not need to be registered. Provided a company has acquired a reputation and goodwill with a specific mark, a certain degree of protection is afforded by common law. A registered Trade Mark can provide added piece of mind for a business as it is easier for a company to defend its intellectual property rights. Without a registered Trade Mark a company would have to prove in court that the mark in question embodies a reputation and the alleged infringement has done actual damage to your business.
How do I register a Trade Mark?
You can either register a Trade Mark with a third party such as a Trade Mark Attorney or you can register the mark directly with the Patent Office. The basic cost for registering a mark with the Patent Office is £200, this fee entitles protection within one class of goods or services.
What are Classes?
Classes are internationally recognised groups of activities that are used to define the nature of the product or service that your Trade Mark will be associated with. For example class 8 covers hand tools and implements. There are a total of 45 classes all of which can be viewed in detail here. It costs an additional £50 per class to extend the coverage of your Trade Mark.
How to check if your Trade Mark is already registered
One thing to be aware of when making a Trade Mark application with the Patent Office is that you will not receive a refund on your application fee if the Trade Mark application is rejected. This means that you should carry out as many checks as possible before making the application to increase the likelihood of it going through successfully. The Patent Office provide a search and advisory service that will allow you to send them notification of your proposed Trade Mark so that they can check the mark against their records and advise you if the mark will be accepted on the register, the cost for this service is £82.25. If you want to search the Trade Mark registry then this can be done on the Patent Office website using their monitoring service.
Things to consider before making your application
Here are a number of points you may wish to consider before lodging your application with the Patent Office.
- You cannot make alterations to your mark once it has been submitted.
- You should not use descriptive Trade Marks (e.g. luxury cars). Your Trade Mark will be rejected if you attempt to use words or phrases that would otherwise be used regularly by other businesses in your industry.
- A Trade Mark will last 10 years once it has been registered. After which you can renew the mark for £200 plus £50 for each additional class.
- Once the Trade Mark has been successfully registered you can include the ® symbol after your mark or display the letters RTM. You should not use either of these indicators if before your mark has been registered.
How long does it take to register a Trade Mark?
It can take several months to register a Trade Mark with the Patent Office. On submission of your application with the relevant fee your mark will be initially viewed by an examiner. The examiner will carryout a number of assessments to ensure your mark is unique and that it is compliant with current guidelines. If the mark is approved by the examiner it will be referred to the Trade Mark journal for publishing. At this point the mark has not been registered rather it is entered into the journal and made available publicly for a period of three months whereby any objections can be raised.
If the Trade Mark is rejected by the examiner a notice will be sent to the applicant detailing the reason(s) why the mark was not successful. Following this the applicant has a right to a hearing to voice any arguments raised against the decision. If an objection is raised by another company after the mark has been published in the Journal you have the right to challenge the objection, a hearing officer will listen to both sides of the argument and will decide as to whether the mark is cancelled or the objections are overruled.
If there are no objections raised during the 3 month period when the mark is published in the Trade Mark Journal then you will receive a registration certificate shortly afterwards.
Completing form TM3
Form TM3 is the statutory form for making a Trade Mark application it is now also available to complete and submit online. The form will ask you to provide an illustration of the mark either in colour or black and white (If the mark is in colour this will be considered as a distinguishing element of the design). The form is straight forward to complete and will ask you to provide details of the applicant and owner of the mark along with a list of classes for which the mark will cover. Once the form is complete you must send the form to the Patent Office in Newport along with the relevant fee for consideration.
Can I file a worldwide Trade Mark?
This is currently not possible, but as well as applying to register your trade mark in the UK, you may also:
- apply for a European Community Trade Mark (CTM) by means of the OHIM (Office for Harmonization in the Internal Market) in Alicante, Spain (www.oami.eu.int or phone (+34) 965 138 800); or
- apply, via the UK Patent Office, to register your trade mark through the international "Madrid Protocol" system which covers various countries around the world which have joined the Protocol. This is administered by the World Intellectual Property Organisation (WIPO) in Geneva. (www.wipo.org or phone (+41) 227 335 428).
You may find the following links useful in answering any further questions you may have about registering a Trade Mark.
The Patent Office - Here you will find information and forms for registering a Trade Mark in the UK.
Trade Mark Search - Online search facility to find information on existing Trade Marks in the UK.
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