UK trade mark application: start to finish
For those who are new to trade marks, the application process can seem complicated and may deter you from going ahead and protecting your brand.
However, the application process is broken down into stages which can make it more business friendly.
The Trademarkroom has filed thousands of trade marks around the world and therefore can aid you through the whole process.
However, we would like our clients to be completely clear of each stage to ensure you are happy with how things are progressing.
The application process starts with an idea. An idea for a new and innovative brand which is different to those that already exist. The key function of a trade mark is to distinguish a business from others in the industry, therefore it is important you stand out from the crowd.
While you may think the brand you have created is the first of its kind, it is important to have more concrete evidence.
At this stage we would recommend you complete a search.
Before any time and money is put into an application, it is very important to be sure that the mark is free to be registered.
The Trademarkroom can complete the search for you. We would recommend our UK/EU Advanced search report (searches for other jurisdictions are available). This search firstly looks at the mark itself and compares it to the criteria of a registered trade mark outlined in the UK Trade Marks Act 1994. Secondly, the search will highlight any existing marks which may conflict with your application and therefore prevent you going ahead and protecting your brand. Our Advanced search report also includes an unregistered rights search which highlights any company which may have built a reputation in a brand which conflict with yours but has not formally registered their rights. They can still take action against you, through their unregistered rights, therefore it is important you are aware of them.
If the application is successful, you can proceed to drafting the application. In preparation, our focus will turn to classes. Each trade mark is registered in at least one class of goods and services which represents the goods and services which will be supplied under the mark. A mark cannot be registered for all goods and services; therefore, it is important you highlight those your business will be supplying in a bid to prevent holes in your protection. The Trademarkroom will draft you a bespoke class specification which will be approved by you to ensure everything has been covered.
Once all details of the application have been confirmed, we can go ahead and formally file the application.
Once the application has been filed with the UK Intellectual Property Office, it is assigned to an examiner.
The examiner will consider the application and produce a report on whether the mark complies with the criteria in the UK Trade Marks Act 1994. This stage is the examination stage and can take between 3-5 weeks depending on the work load of the UK Intellectual Property Office.
If the examiner considers the mark capable of being a registered trade mark, the report will state that it has passed the examination stage. At this point, the mark moves into the publication stage. If the examiner does not believe the mark complies, the report will outline the problems and you will be given an opportunity to amend the application if possible or argue against the ruling. If no action is taken or arguments are unsuccessful, the application will be refused and will be withdrawn.
In the publication stage, the mark is published in the Trade Marks Journal for a minimum of 2 months. During this period, any existing trade mark owner can file an opposition against your application, if they believe your mark is confusingly similar to theirs. If an opposition is filed, the UK Intellectual Property Office will consider both sides and reach a decision on whether the opposition is successful. If the opposition is successful, the application will be refused and withdrawn.
If the mark does not receive any successful oppositions in the 2-month time period, the UK Intellectual Property Office will confirm the successful registration of the trade mark and issue the certificate.
And the application process is over!
If you require more information on trade marks or how to protect your brand, contact The Trademarkroom team today.
By Ellis Sweetenham