How to register a trade mark in the UK? A step-by-step guide

Step 1: Understand what to register

A registered trade mark can be a word, logo, slogan, shape, colour, sound or a combination of any of them.  The most important thing is that the trade mark in question must distinguish your goods or services from those of others.  What this means in practice is that trade marks that are generic, descriptive or otherwise misleading will likely be refused by the UK Intellectual Property Office.  The grounds this refusal will be based on are known as the “absolute grounds for refusal”.

As a practical example, if you were to try and register “Best Coffee” for coffee shop services,  the trade mark would likely be refused because it is descriptive of the services that would be provided under the trade mark and it also lacks distinctiveness.

The most common registered trade marks are words (such as business or brand names) and logos.  A common question our intellectual property solicitors receive is whether it is worth registering both a word and logo.  The answer is that it ultimately depends; exclusivity attaches to the trade mark applied for.  Registration of words provides exclusivity over those words but what if those words are highly stylised on packaging / advertising materials? That “get up” also has the potential to be registerable in its own right.  Many retailers also register the packaging materials for their products.

Step 2: Due diligence

There are hundreds of thousands of registered trade marks in the United Kingdom.  Furthermore, there are many more businesses that operate under trading names that are unregistered.  It is vitally important that you check whether there are any existing rights that could present a risk to not only your trade mark application but also your use of the trade mark more generally.

As its most basic, trade mark due diligence includes carrying out clearance searches for existing registered trade marks.  However,  it is advisable to conduct much more detailed searches for company names, domain names, social media account availability, app name availability and unregistered use of the trade mark (which is protected under the tort of passing off). Our intellectual property solicitors utilise software that can conduct clearance searches and they have cleared trade marks for use throughout the world.

What if I don’t carry out due diligence?

Due diligence is not compulsory, but it is highly recommended.  These are known as the “relative grounds for refusal”.  These concern earlier rights that may prevent your later registration of the trade mark.  They may include existing registered trade marks (that are identical, confusingly similar or those which benefit from a reputation and the later registration of a similar trade mark may take unfair advantage of or be detrimental to that reputation) or unregistered rights such as goodwill that is protectable under the tort of passing off, design rights and copyright.

Due diligence will paint a picture as to the risks faced by your application and use of the trade mark. It helps avoid not only trade mark opposition proceedings but also trade mark infringement and/or passing off proceedings that may be brought separately before the courts.  It is generally much quicker and cheaper to avoid any opposition or infringement action before it arises.

The UK Intellectual Property Office will not refuse a trade mark application based on the relative grounds for refusal on its own accord, it is for the owner of the earlier right to formally oppose the trade mark application.

Step 3: Identify the correct classification

The UK Intellectual Property Office classifies trade marks in accordance with the Nice classification system.  There are 45 different classes that a trade mark can be registered in, with 34 classes covering goods and 11 covering services.  As set out above, the exclusivity that attaches to a registered trade mark is for the goods and services that it is registered for.  This means that the classes you register in are vitally important.  What’s more important is the goods or services that you include in those classes.  You need to specifically mention all of the goods and services that will be provided under the trade mark.

If your trade mark specification is too narrow so will your protection.  If it is too broad you could open yourself up to a claim that you are applying in bad faith.  Our intellectual property solicitors can support with ensuring that your classification is sufficient.

Step 4: Submit the application

Once you have decided what trade mark(s) you wish to register and what goods and services those trade marks will cover, you will then be in a position to submit the trade mark application(s).  The application is submitted via the UK Intellectual Property Office by filing form TM3.  There is an official fee to be paid to the UK Intellectual Property Office, totalling £170 for the first class, with each additional class costing £50.  The application can be submitted digitally or via a paper application.  Our intellectual property solicitors can attend to the filing of the application itself.

Step 5: Examination phase

Once a trade mark application has been submitted, the UK Intellectual Property Office will examine it (usually within 2-3 weeks).  In doing so, they will check that the requirements for registration, as set out above, are met.  Once examination is complete you will be provided with an examination report which sets out any objections if there are any.  This will also set out whether the examiner considers your trade mark to be potentially similar to existing registered trade marks.  This doesn’t in and of itself mean that the application will later be opposed by the owner of such trade marks.

If there are no objections or once any objections are overcome, the application will proceed to publication.

Step 6: Publication

Trade mark applications that have been accepted by the UK Intellectual Property Office will then be published in the trade marks journal for a period of two months.  During this period (which is known as the “opposition period”, third parties can oppose your application by filing a notice of opposition (form TM7) or make observation regarding your application.  This period can also be extended by one month if a third party files form TM7a, which is a notice of intended opposition.

If no oppositions are filed – or, if one is threatened but you manage to resolve it successfully via negotiation – the trade mark will then proceed to registration.

Step 7: Registration

If no oppositions are filed – or, if one is threatened but you manage to resolve it successfully via negotiation – the trade mark will then proceed to registration.  A registered trade mark lasts for 10 years and can be renewed for an indefinite period, subject to any later challenge to it

Step 8: Post-Registration

Many businesses think that the hard work is finished once a trade mark has been registered.  Whilst that is true to a degree, it is vitally important to ensure that the trade mark continues to fulfil its primary role of distinguishing the brand in question from those of third parties.  If the trade mark is not used for a continuous 5-year period, it may be revoked due to non-use.  Furthermore, if the owner of a trade mark acquiesces in third-party use of the trade mark, not only does that diminish the distinctiveness of the trade mark but it could also lead to a validity challenge.

Brand owners should continuously monitor the marketplace to ensure that third-party infringement does not take place.  We have tools that can help simplify this process.

Once a trade mark has been registered it can be licensed and assigned (transferred), often through creative collaborations across industries.