Trademark Registration in the UK: A Practical Guide | LegalDocuments.co.uk

Overview

A trademark is a sign that distinguishes your goods or services from everyone else's. In practice that usually means a brand name, a logo, a strapline, or sometimes a shape, colour or sound. Registering that sign with the UK Intellectual Property Office converts it from an informal brand asset into a registered legal right that you can enforce, license or sell.

Registration covers specific classes of goods and services drawn from the Nice Classification system, so you don't get blanket protection across every possible use, you get protection for what you've actually registered for, plus similar goods and services where confusion is likely. A UK registration lasts ten years and can be renewed indefinitely while it remains in use.

It gives you the right to use the ® symbol, a presumption of ownership in disputes, and grounds to object to later applications that clash with yours. It's worth noting that unregistered rights do exist in the UK through the law of passing off, but they are slower, harder and more expensive to enforce than a registered mark.

Key steps

1. Work out what you actually want to protect. Decide whether you're registering a word mark, a figurative mark (a logo), or both. A word mark protects the name however it's styled; a figurative mark protects the specific visual design. Most brands benefit from registering the name as a word mark first, because styling changes over time but the name usually doesn't.
2. Choose the right classes of goods and services. The Nice Classification has 45 classes, and you must pick the ones that genuinely reflect what you sell or plan to sell in the near future. Picking too few leaves gaps in your protection; picking too many increases the fee and can expose you to non-use challenges later. Be specific and realistic about your commercial activity.
3. Run a clearance search before you file. Check the IPO's trademark database, Companies House, domain registries and general web results for existing marks that could block or challenge yours. An application that conflicts with an earlier mark can be opposed, and the fee isn't refundable if it fails. This step is tedious but it saves a lot of grief.
4. Submit the application to the IPO. You file online through the IPO's system, providing the mark, the owner details, the classes and a specification of goods and services. Fees depend on the number of classes and whether you use the standard or Right Start service. The IPO will then examine your application for absolute grounds such as descriptiveness or lack of distinctiveness.
5. Respond to examination and publication. If the examiner raises objections you'll have a window to respond or amend. Once accepted, the mark is published in the Trade Marks Journal for a two-month opposition period during which third parties can object. If nobody opposes, or any opposition is resolved in your favour, the mark proceeds to registration and you'll receive a registration certificate.

Common questions