How do I register a Trade Mark?

Registering a Trade Mark isn’t a necessary action if you own a company, but it is an important one if you want to protect your brand. So, what can be registered as a Trade Mark? A Trade Mark in the UK is an entity that differentiates the goods and services of one trader from another – it could be words, logos, sounds, colours or a combination of these things. If you’re wondering if and how you should register a Trade Mark – we’ve provided a little more detail for your consideration.

What are the benefits of registering a Trade Mark?

By registering a Trade Mark, you are essentially giving yourself the exclusive right to your mark for the goods and services specified in the registration, and in turn preventing others from using that mark in the same ‘class’.

This form of protection becomes particularly important when you start considering the value of your brand. Whilst this is often hard to put a numerary value on, any good feeling, trust and positive customer sentiment associated with your brand, should be yours to keep. By registering a Trade Mark, you prohibit others from counterfeiting or trying to replicate similar marks with the aim of maximising that good feeling towards your brand.

Having a registered Trade Mark is also an asset and much like any other asset, it can be used to increase revenue, either through selling it, collecting associated royalties or using it as security against a loan.

And how do I register a Trade Mark in the UK?

Step 1 in registering within the UK is to perform a Trade Mark search, which will help to determine whether any other Trade Marks have been filed. If other Trade Marks have been filed, this could interfere with your registration being successful. Even third parties with existing similar Trade Marks within the same goods and services class, have the right to oppose your registration, which could also prevent your registration from being successful.

Presuming you are happy with the results of your search; step 2 is to file your Trade Mark at the UK IPO. To do this, you need to complete a type of application form called a TM3, which must include an exact representation of your Trade Mark, along with the goods and services you wish to be covered. Costs will depend on the number of Trade Mark classes (goods and services) you wish to register your Trade Mark for, but generally speaking the filing of a Trade Mark in the UK does not tend to be overly expensive. Do note that in order to apply for a UK Trade Mark, you must have an address for service within the UK. This could be the address of the Trade Mark owner I they are UK based, or if they’re overseas, an appointed representative within the UK.

Step 3 is known as the prosecution phase – the phase after you’ve filed your Trade Mark. This is the time when the UKIPO will examine your Trade Mark to ensure it meets all the necessary formalities. They’ll also run checks for other existing Trade Marks that are identical or similar (something you shouldn’t need to worry about if you’ve carried out Step 1 thoroughly). Should there be any objections, you will receive an official notice from the UKIPO with a deadline in which to file your response. If no objections arise, or the objections are overcome, the application will proceed to acceptance and then publication in the Trade Mark journal.

Once published in the Trade Mark Journal, third parties have two months (extendable to three months) to file an official opposition. If no oppositions are filed, then your Trade Mark will be formally registered and a Certificate issued.

What does it mean once my Trade Mark is registered?

Once your Trade Mark is registered it will be protected in the UK for a period of ten years from the filing date and the ® symbol can be used. After this ten-year period, you will have to pay a renewal fee (protection in the UK lasts indefinitely, providing that you renew the mark every ten years). You also should note that if you do not use the mark in any five-year period in respect of the goods and services covered by the registration, the mark may become susceptible to cancellation on the grounds of non-use.