Trade marks: an overview of the registration process

The purpose of this note is to provide an overview of the process of applying to register trade marks as well as an overview of the opposition process. It will cover questions including how long it takes for a trade mark to be registered.

The information in this note is based on the applicable UK legislation currently in force, which is subject to change, potentially with retrospective effect.

This note is prepared as a general guide, but it should not be relied upon as legal advice – we recommend engaging a qualified lawyer to assist with these complex matters.

The process of applying to register a trade mark in the UK and EU

Step 1: Preliminary checks

You should first check whether your brand qualifies as a trade mark that is capable of registration.

Broadly speaking, a trade mark is any sign that is capable of distinguishing the goods and services of one trader from another.

Importantly, a trade mark cannot:

• describe the goods or services to which it will relate (e.g., the word “ballet” on its own cannot be a trade mark for a company offering ballet lessons); or
• be misleading (e.g., using the word “organic” as part of a trade mark for goods that include non-organic food).

Your proposed trade mark is likely to be a word mark or a figurative mark (i.e. a logo, with a stylised image or writing). However, it could also be almost anything – including a colour, shape, sound or a GIF. We can advise you on whether your proposed brand or sign would qualify as a trade mark.

If the proposed mark is descriptive, or is otherwise not distinctive, you can still obtain registered protection if you are able to demonstrate that the customers already identify the brand as yours, and only yours.

Step 2: Search the trade mark register

Once you are happy that your brand would qualify as a trade mark, you should conduct pre-application searches to check whether anyone else has registered protection for the brand. If someone else has already registered your brand as their trade mark, you may not be able to register (or use) it as a trade mark (for the same or similar goods and services). In the UK ad EU, this will only be the case if the owner of the prior trade mark objects (although it is worth noting that the trade mark offices in some territories unilaterally block applications on this basis).

Even if nobody has registered your exact brand as a trade mark, they may still take issue if you apply to register (or use) a similar trade mark to theirs (covering similar goods and services) if they have reason to believe that it could lead to customers confusing your respective brands, or that your use of the brand might dilute or cause other harm to their trade mark.

In certain circumstances, even if nobody has registered protection for identical or similar marks, they may still be able to object to your application (or use of a brand) if they have been using an identical or similar brand. For example in the UK, ‘unregistered rights’ are protected by the law of passing off and can be used as a ground of opposition. Many territories have similar provisions.

Before applying for (and ideally before using) a trade mark, we recommend conducting thorough searches of the trade mark register(s) and the state of the market, in order to ascertain the level of risk you would be taking on by applying to register (and by using) a particular trade mark.

Step 3: Classify the goods and services of your trade mark

Trade marks give the owner protection for a distinct set of goods and services, and these must be clearly set out in the application. There is a globally harmonised system which splits goods and services into 45 different classes.

This system enables, in theory, registration of the same name for very different goods such as Polo for cars, confectionery, and clothing or Burton for beer, biscuits and snowboards.

We can assist you with classifying the goods or services for which you require protection and drafting a specification, which sets those goods or services out in the requisite level of detail.

When making a trade mark application, you have to give a statement that you intend to use the mark in relation to all of the goods and services within it and after five years of the registration date, the mark becomes ‘vulnerable to revocation’. This means that third parties can challenge you to prove use of your mark, in relation to all of the goods and services within it and if you cannot, the mark will be removed (or partially removed) from the register.

Step 4: Making the Application

We can make the application on your behalf and can provide cost estimates for doing this (which will depend on the mark, the number of classes and the territories in which you wish to apply).

We recommend using a law firm or trade mark attorney firm to handle the application process for you. This is particularly important if there are likely to be objections, oppositions and therefore a number of communications (and deadlines) to deal with.

Step 5: Examination report issued

An examiner will review your application and will reply to you with any feedback within around four weeks of submission.

At this point, they may raise objections and ask for clarification on certain points.

Step 6: Publication

If the examiner has no objections, your application will be published in the trade marks journal for two months in the UK or three months in the EU – the time scales vary globally. The examiner will also alert the owners of any prior conflicting marks to your application.

During this period, third parties can make “observations” to explain why they believe the application should not proceed to registration. If any of the observations are deemed particularly relevant, the examiner can re-open the examination stage.

Step 7: Oppositions

Within the publication period, a third party can formally oppose the application in the following ways:

A third party could file a Notice of Opposition. If the dispute cannot be settled, a fully fought opposition process can take up to two years, depending on whether it results in a hearing. It can be expensive to oppose an application, and the opponent will usually be required to pay a contribution towards the applicant’s costs if they are unsuccessful (and vice versa). An application can only be opposed on certain grounds set out in the legislation. The most common grounds for opposition are:

• the applicant’s trade mark within the application cannot operate as a trade mark (because for instance it is descriptive or otherwise not distinctive);
• the applicant’s trade mark is identical to an earlier trade mark and covers identical goods or services;
• the applicant’s trade mark is similar to an earlier trade mark and covers similar goods or services, such that a likelihood of confusion may arise;
• the applicant’s trade mark is identical with or similar to an earlier trade mark that has a reputation in the UK and registration of the applicant’s trade mark would take unfair advantage of or be detrimental to that reputation; and
• the applicant’s trade mark would be unacceptable because use of the mark would be preventable by unregistered rights, for example, the law of passing off in the UK.
• the applicant’s trade mark would be unacceptable because use of the mark would be preventable by the law of copyright (in the UK but not EU).

In the UK, a third party could file a Fast Track Opposition if their opposition is particularly straightforward. It can be filed by the owner of an earlier mark on the grounds of complete identity or a likelihood of confusion. A fast-track opposition is quicker and cheaper than a standard opposition, but it is rarely appropriate unless the case is very straightforward (for example in relation to an exact rip off mark) as the grounds of objection available are limited.

In the UK, a third party could make a request to extend the opposition period (for that party only) from two months to three months by filing form TM7a. They will then be able to file a Notice of Opposition up to three months after publication of the application (but are not obliged to do so).

The majority of trade mark oppositions settle, either because one party backs down or because a suitable ‘co-existence’ arrangement is agreed. There are mechanisms to suspend proceedings whilst negotiations are going on and the UKIPO and EUIPO both encourage the parties to engage in alternative dispute resolution.

Step 8: Registration

If no oppositions have been filed, your trade mark will be registered around two weeks after the opposition period ends. The date on which it is registered will be the official registration date, but rights will date back to the filing date.

Step 9: Certificate issued

After registration, you will be issued with a Registration Certificate confirming that you legally own the intellectual property.

Step 10: Renewal and Use

How long does a registered trade mark last in the UK?

Every 10 years, you will need to pay a fee to renew the registered trade mark, which can be done online. If a renewal application is made late, there is usually a 6-month grace period. After the 6-month period, it is rarely possible to renew a registration and it will be lost.

As we say above, after 5 years, the mark becomes ‘vulnerable to revocation’ which means it can be challenged by third parties and in response you will have to prove that you have made genuine use of it. If you cannot prove such use, the mark will be wholly or partially revoked. In some territories (the USA for example) the office will ask you to actively demonstrate that you are continuing to use the mark.

The process of applying to register a trade mark outside the UK or EU

This note will not cover the process of applying to register trade marks in other jurisdictions in detail. However, there are broadly two ways of making an application outside the UK:

Firstly, you could apply to the relevant jurisdiction’s intellectual property office directly. Each jurisdiction has their own unique process, but it often mirrors the process in the UK in some respects. We have offices in the EU and Middle East and an extensive network of trusted foreign lawyer contacts who we regularly use to file marks on behalf of our clients.

Alternatively, if you have already registered (or applied to register) your trade mark in the UK, you could make an international application through the World Intellectual Property Organisation (WIPO). This allows you in a single application to select the other jurisdictions in which you want registered protection, provided that they are WIPO contracting parties. WIPO will then arrange for the applications to be made in the intellectual property office of each designated jurisdiction. This process essentially results in a bundle of national rights.

Do you need a lawyer to register a trade mark?

Technically no, but the process of registering and maintaining trade mark rights (especially internationally) can be quite complicated. Communications and deadlines set by the offices are usually strict and it is not unusual for rights to be lost without a comprehensive administration safeguards in place. For this reason, we recommend do engaging professional advisors to maintain your portfolio.

Contact

If you have any queries, please contact Charlotte Duly.