Trade mark registration: A guide for business owners

Trade marks are an important business asset and are one of the main ways in which you can communicate information about your business, its values and the quality of its goods and services to the public. Trade marks are inextricably linked to a business’s reputation and its perceived value so it is important to protect them from misuse by others. Trade mark registration provides the best measure of protection for a mark in the UK, as long as you proactively monitor and enforce your registered rights.

In this article, Ben Evans, head of trade marks at Harper, James discusses the benefits of trade mark registration, how to register a trade mark and the typical cost of registering a trade mark.

What types of marks can be registered?

A trade mark must be capable of distinguishing the goods or services of one business from those of another. In practical terms, this means that the mark must be distinctive enough to function as a trade mark – it cannot be simply descriptive and it must have something about it that will stick in the minds of consumer, so single letters or numbers, commonplace symbols or geographical place names where the goods or services are made or provided, are unlikely to satisfy the requirements.

A trade mark can consist of a word or words, a phrase, an image, combined word(s) and device(s), a sound or sounds, a 3 dimensional shape, multimedia, holograms, colours and even smells.

Objections can also be raised against trade marks that consist of or contain protected emblems or symbols, are offensive or contrary to public policy, or are generic or deceptive in respect of the goods and services applied for.

What are the benefits of trade mark registration?

Having a registered trade mark means that you have a legal record to show that your mark is valid and in force. You can use the registered ® symbol immediately after the registered word(s) or image to show third parties that the mark is protected and to act as a warning against its unauthorised use.  This is only possible if the mark is registered as it is a criminal offence to use the ® symbol if the mark is not registered.

You will be notified of subsequent registration applications for marks that are confusingly similar to yours, for the same or similar goods or services and will be able to oppose those applications if you consider them to be a threat to your brand. Your registered mark will be cited in formal clearance searches conducted by third parties and can deter them from choosing a mark that is too similar.

Registering the trade mark allows you to take action for its infringement in the courts if another person uses the same or a confusingly similar mark. If your mark is not registered, you would only be able to bring an action for ‘passing off’, which is harder to prove and requires you to demonstrate established goodwill in your brand and damage or a likelihood of damage caused by the unauthorised use.

Some websites and online marketplaces such as ‘Amazon’ and ‘Facebook’ allow you to file a request for a ‘takedown notice’ if you have a registered trade mark that you believe is being infringed by another user on the platform.

A registered trade mark can be sold, assigned, licenced or used as security for a loan. Having a registered mark will be more attractive to investors and potential business partners and can be exploited as a business asset to gain licence or franchise fees.

Once your mark has been filed, you can apply to register the same mark in other countries within 6 months’ of the initial filing date and gain ‘priority’ over similar marks that are filed in that 6 month period. Your application will be back dated to the date of the earlier application which can assist if a similar mark were filed in the interim which could otherwise present a barrier to your application.

You also need your mark to be registered in order to record your rights at HMRC. The Border Force can then notify you and take action against imports and exports that infringe your registered trade mark. 

How do I check if a trade mark is available?

When you apply to register a trade mark, the Examiner will search the Register and advise you of any marks that he/she considers to be confusingly similar to yours for similar goods and services and will write to those owners to inform them of your application. This gives them the opportunity to oppose your application, during the ‘opposition period’. Even if they have not been informed by the Examiner, any third party that is using or has registered an identical or similar mark or who thinks that your registration will infringe their IP rights in some way, can file an opposition.

It is important to conduct a trade mark clearance search before you apply for registration to ensure that you are free to use and/or register your chosen mark. You can search the IPO Register yourself online, but it is usually recommended that you instruct a trade mark solicitor or attorney to do this for you and to analyse and advise you on the results of the search in terms of legal and commercial risk.  For example, a mark may be registered that is over 5 years’ old and the owner may not have used that mark for the goods and services it is registered for, in the past 5 years. This means that in the event of an opposition by this mark owner, you could counterclaim for its revocation on grounds of non-use.

Can I register a trade mark that is already being used by someone else?

You may be able to register a mark that is already in use, but this may cause you problems either in the process or later on when you start to use the mark in business.

If a third party is using a mark that is confusingly similar to yours for the same or similar goods and services but has not registered the mark, they will not be notified of your application. They can still oppose it if they discover it during the ‘opposition period’ or they can bring an action to have the registration cancelled after it has been registered based on their prior unregistered use of the mark.

If the mark is identical but the third party is using it for completely unrelated goods or services, both businesses may be able to coexist and use their respective marks without any problem. If the third party’s mark is very well-known, they could have rights that extend wider than their current use so you should conduct careful investigations before settling on such a mark.

If an opposition is filed against your application during the ‘opposition period’, the registration process is suspended whilst the opposition is dealt with. You will have a period of time in which to try and resolve matters with the opponent, you can resolve the issue by entering into a coexistence agreement and/or by limiting the goods and services that you applied for, by deleting some or adding a limitation or disclaimer. If you cannot resolve the issue, the court proceedings will then begin and each party will be given the opportunity to file evidence and submissions in support of their case. A decision will eventually be made by the IPO tribunal either at a formal hearing or by considering written submissions. If the opponent wins, your application may be cancelled for all or some of the goods and services that you applied for.

How to register a trademark

A trade mark application must be filed at the Intellectual Property Office together with the application fee. The application must show a representation of the mark and specify the goods and services that it is to cover, listed in the appropriate Classes. Drafting the specification can be tricky as the terms must not be too broad and must comply with the version of the ‘NICE classification’ of goods and services in force at the time. Often an attorney or solicitor will prepare the specification with your input, to ensure that the correct terms are used and that it is neither too wide nor too narrow in scope. You should have a ‘bona fide’ intention to use the mark for all the goods and services listed.

How much does trade mark registration cost?

The Registry fee for an application for a UK trade mark in 1 Class is £170 if filed online and £200 if filed on paper in the post. There is an extra fee of £50 for each additional Class of goods and services that you include in the application.  

It is usually recommended that you instruct a trade mark solicitor when preparing and filing your application. So, there will be advisor costs to add to the Registry fees.

How long does the trade mark registration process take?

It is relatively quick to register a UK trade mark, provided that you do not encounter an objection or opposition. Once filed at the IPO, normally, your application will be examined within a few weeks and you will receive an examination report. This will either state that your application is being published for a further two months or outline an objection that you will need to overcome. There is usually a two month deadline given for you to reply to such an objection but you can request that this be extended.

Once the mark has been published, there is a 2 month ‘opposition period’, which can be extended to 3 months if a third party files a notice of threatened opposition (Form TM7A). If no opposition is filed, the mark will proceed to registration, and you should receive a registration certificate within a few weeks’ of the end of the publication period. Receiving an opposition against your application will prolong the process and it can then take up to a year or longer to resolve the proceedings if they go all the way to a tribunal hearing or decision.

Renewing your trade mark

A trade mark registration must be renewed every 10 years in order to remain in force. The renewal request can be filed online via the IPO website or by submitting a paper form by post. There is a renewal fee of £200 plus an additional £30 for each Class of goods and services over the first. If you miss the renewal deadline, you can still request a late renewal within 6 months’ of the expiry date of the trade mark, provided that you pay an additional late renewal fee of £50. If you are more than 6 month’s late in renewing the mark, the mark will be removed from the register however, there is still an opportunity, before 12 months’ have passed, to file a request the restore the trade mark registration. You will need to file such a request by post and pay an additional restoral fee of £100. You will also need to include a written statement explaining why you did not renew the registration on time.

Summary

Trade mark registration can be a straightforward process and is not unduly expensive. However, it can easily become more lengthy and costly if you do not take appropriate legal advice and fall foul of one or more of the registration ‘pitfalls’. It is all too easy to miss an important deadline or to bypass a fundamental check or requirement and have to spend additional time and effort in overcoming an objection or opposition or have to completely abandon your application and the fees that you have already paid and start afresh.