It is not compulsory to register a trade mark in the UK as rights can be acquired under common law through use of a mark. These rights can be defended through the tort of passing off. However passing off requires a proprietor to prove goodwill, misrepresentation and damage, even then protection can be limited to a local area.
A registered trade mark has the protection of the Trade Marks Act 1994 which offers nationwide protection and does not require a proprietor to prove goodwill, misrepresentation or damage (which can be very difficult and expensive to prove).
All UK trade mark applications should be filed at the UK Trade Marks Registry which is part of the UK Intellectual Property Office (IPO).
A proprietor of a registered UK trade mark has an exclusive right over the mark in the UK for the goods and services it has been registered under. Although the registration process takes up to 4 months protection of a mark dates from the date the application was filed.
To register a trade mark a proprietor will need the following; a representation of the actual mark, the details of the individual or legal entity (and country incorporated) that the mark is to be registered to, the name of agent if being filed by an agent, a list of goods and services (currently and in the future) which they intend to provide under the mark, any disclosures or priority claims.
The first step before filing a trade mark application is to conduct a trade mark a search against the UK IPO database of registered trade marks. Without this search it is impossible to determine whether the proposed mark has already taken or whether a mark which similar enough to be confusing to the public has already been taken. If your mark, or a mark similar to it has been filed by another trader you could end up losing you application fees and legal costs if you proceed to application without a search.
Review the results of your search to see whether there are any relative (identical or similar mark already registered) or absolute grounds (your mark is devoid of distinct character etc) for refusal. If you feel you mark has a good chance of passing the examination process (as trade mark law is subjective) then file your trade mark application through the UK IPO trade mark database.
An Examiner will send you out an examination report which will point out any relative grounds or absolute grounds. An examiner can refuse registration on absolute grounds and may inform other previously registered proprietors of relative grounds for refusal who may oppose you application. You can ignore any relevant grounds for refusal (similar or identical marks already registered) and continue with the application. It may be that the proprietors of the previous marks raised by the examiner will not oppose your application (and may not be notified in certain cases for previously registered European marks).
UK registered marks will automatically be informed of any similar or identical marks which are filed for application.
You can respond the Examiner on any previous marks which are raised argue your point to have them waived.
If your application is accepted by the Examiner it will be published in the trade marks journals for a period of 2 months to allow for oppositions from the general public.
Very often brand owners will check these publications for potentially conflicting marks.
If your mark is not opposed the mark should be automatically registered at the end of the two month publication period and your certificate should be posted out to you.
If you have any more questions about trademark registration please see our FAQs or call us free on 0800 862 0370
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