The complete trade mark application process
Stage 1: Development
The first stage of registering a trade mark, may be obvious, but it is to actually develop your trade mark. This may seem a straightforward step but it can take a substantial amount of time and effort to ensure you are happy with the branding you have chosen and that will be attached to your business for years to come. It must be unique and allow customers to identify you over competitors.
You may already have a business name or logo which you want to be protected but you must ensure they are capable of being a trade mark. A mark must be capable of graphical representation, distinctive, not descriptive of any aspect of the business and must not conflict with any existing marks. This clarification will come at the next stage but it is crucial to be considering this from the earliest opportunity.
The Trademarkroom can give you guidance on this but it is important to come to us with ideas on which we can collaborate to create a complete brand. You will therefore need to take some time to create your business identity.
Stage 2: Searching
This is a very important stage that many applicants overlook but it can save a lot of time and money. Once you have established your brand, you need to ensure that there are no conflicting marks which already have protection. These marks can be identical or similar to your proposed mark in an identical or similar class of goods or services. While your application will not be refused by the UK Intellectual Property Office, the brand owner can object, as you will see further at further stages.
You do not want to waste time and money submitting an application that can be halted by an existing mark which could be easily found in a search.
The Trademarkroom does offer a very basic free search which may be a good starting point but we always recommend our detailed search and advice report which includes a detailed search of both registered and unregistered existing brands and the drafting of a full class specification which will be attached to your application to give an indication of what your trade mark will cover, in relations to goods and services.
Stage 3: The application
Following a full search and clear consideration of the brand, it is time to then submit the application. This is submitted to the UK Intellectual Property Office, either online or through the paper form. The Trademarkroom will draft this application on your behalf with all the details discussed at the previous stages. After this is submitted, the fate is no longer in your hands, it is time for the IP gods to do their work.
Stage 4: Examination
When your application is submitted, it will be considered by an UK Intellectual Property Office examiner who will conduct their own search and research to ensure your mark is distinctive and capable of being a registered trade mark. At this stage, the examiner will not look at existing marks which may be of issue.
Within 21 days of the UK IPO receiving your application, you will receive feedback on the examiner’s findings. If there are any issues, you will have a further 2 months to make any amendments which may be needed to ensure it is registrable. Of course, The Trademarkroom will do everything they can to ensure the application is as good as it can before submitting, but the examination stage is subjective therefore there is no guarantee that a mark will succeed.
If the examiner is satisfied that your mark does have the elements of a successfully constructed trade mark, your application will move on to the final stage.
Stage 5 Publication and Oppositions
With the examiner’s satisfaction, your mark will be published in the Trade Marks Journal. For a 2- month period, the mark can be viewed by existing trade mark owners, who can lodge an objection if they feel your application will affect their already registered mark. If you are subject to an opposition, you can either withdraw your application, contact the opposer to discuss their opposition and try and reach a solution or formally defend against it. This will of course delay your application. If the opposition is successful, your application will be refused. The Trademarkroom will assist with any oppositions if there were to arise.
Success! Your application has been accepted
If the 2- month period expires with no outstanding or successful oppositions, your application has been successful and your trade mark will be added to the Trade Mark Register.
Following this, you will receive a certificate of registration from the UK IPO which is your proof of registration. You will have protection in your trade mark for 10 years, which can be renewed after this period indefinitely.
If you want to start this process, The Trademarkroom are awaiting your call to kickstart the protection of your brand.
By Ellis Sweetenham