Securing official trade mark registration for your trade mark is a smart move for any business in the UK.  This is because it can help prevent third parties using a similar mark to take advantage of your brand loyalty and recognition.  It also boosts consumer trust and enables use of the ® symbol.

As such, trade mark registration is essential to reduce operating risk and safeguard your brand identity as well as enhance brand loyalty and engagement among your customers.  You can read more about the benefits of registering a trade mark in our dedicated article here.

This guide ensures you are aware of the main stages of registrations to help you understand the main registration stages.

Step 1: Create a strong trade mark

If your business/brand doesn’t have an established identity, invest time designing a unique, memorable trade mark.

To be registerable, trade marks must be distinctive and so should not be descriptive of the goods/services you offer.  For example, a furniture business specialising in chairs would not be able to register a trade mark of Great Chairs.

Aim to select a trade mark that is unrelated to the goods/services you offer, for example many of the most well-known brands are made up words entirely, so you could try to think of a new word to represent your brand.

Step 2: Preliminary trade mark search

Before applying or even using your trade mark, it is important to understand if it is available for use and registration.  We have covered this in more detail here, but to summarise, you should at least:

• search existing trade mark registrations on the Intellectual Property Office (IPO) website here; and
• search more generally for businesses in your field using a similar trade mark.

We strongly recommend that we conduct searching on your behalf as assessment of whether an existing registration is a legal risk is complex.  We can also use professional searching tools to search more completely for “similar” trade marks that could cause problems.

To conduct a search on your behalf, we just need the mark and an explanation of how it is used in trade, or how you intend to use it.

The advice we provide with searching results will explain if your trade mark is available in relation to your use/intended use.

If it is not available, you should go back to step 1 and re-design your trade mark so that it is more unique and less similar to the search results identified.  It is then advisable to top-up the search to cover the re-designed trade mark and ensure that it is available.

Step 3: File the application

If following searches you are happy to proceed with filing, let us know and provide the following information ready for the application if you haven’t already:

• the trade mark;
• the applicant name and address; and
• an exhaustive list of goods/services that will be offered under your trade mark both now and in the next five years.

We will then prepare a draft trade mark specification that ensures the trade mark application is able to provide strong value for your business both now and in future, while also aligning with UK trade mark law.

Once you have approved the specification, we will file it on your behalf at the IPO.

Step 4: Trade mark examination and publication

The IPO will examine your application to ensure that it complies with UK trade mark law.  This process usually happens 1-3 months after filing the application.

We will let you know if any examination report is issued and will recommend the best way to respond, as well as keep you reminded of any important deadlines.

Once examination is completed, the trade mark application is published in the IPO journal for opposition. Third parties can contest your registration during a two month period starting from the date of publication on grounds like potential confusion between their registered mark and your application.

If a third party does raise an issue with your application, or file an opposition, we will explain your options and provide a recommendation about how we can proceed to achieve the best outcome.  Further details about oppositions are also provided here.

Step 5: Registration granted

Barring opposition, your trademark will be granted soon after the expiry of the opposition period.  We will let you know as soon as the application is granted.

You can now use the ® symbol and have full legal rights to prevent others from using the trade mark in relation to the registered goods/services.

Assuming no objections/oppositions, the trade mark registration process from application to registration therefore usually takes 5-6 months.

Ongoing maintenance and policing

Trade mark registrations last 10 years and are renewable indefinitely as long as you use the mark in trade for the goods/services it is registered for.  We will remind you in advance of the renewal date and handle the renewal of the registration for you.

If you notice that a third party has started using, or is attempting to register, a similar trade mark for similar goods/services as those protected under your registration, you may be able to take action against them.

Please let us know if this is the case and we can ensure the situation is dealt with in a strategic way to avoid unnecessary expense and stand the best chance of reaching a favourable outcome.

It is important to note that a UK trade mark registration only covers the UK.  If you plan to use the trade mark in other countries, protection may be required in each of them.  We can advise if this is relevant to your business, as well as develop and execute a cost-effective international protection strategy on your behalf if required.

Conclusion

We hope this guide has demystified the trade mark registration process for your trade mark and provides a handy reference as you navigate the registration process.

If you feel you are ready to proceed with trade mark registration or have any questions, please get in touch!