Summary – United Kingdom
For a straightforward trade mark application which does not meet with objections, opposition or representations from third parties, the application process can be completed in the UK in around 3 months.
Below, we provide an overview of the process of applying to register a trade mark in the UK which is not opposed and underneath a brief explanation of each of the steps.
Step 1 – Tell us about your trade mark.
There are several different types of trade marks. The most common are word marks, device (logo) marks and word/logo combinations. However, letters, numbers, colours, sounds or the shape of goods or their packaging can also act as trade marks and be registered in the UK, so long as they are distinctive.
Step 2 – Tell us about the goods and services you wish to use the trade mark on
In considering whether a trade mark is registrable, we have to consider whether the mark is ‘descriptive’ or ‘distinctive’. This assessment reviews the mark by reference to the goods and services which will be applied for. Descriptive marks are not allowed on the UK register. For example, the mark “JUICE” is descriptive for “fruit juice” but could be distinctive for “musical instruments”.
Step 3 – Consider earlier registrations
Earlier registered trade marks owned by other companies can prevent a later trade mark application from being registered. The earlier owner can also stop you from using the mark on the basis that such use infringes the earlier registration. We can instruct trade mark searches to be carried out as a pro-active step before an application is filed. This step is not vital but can be useful and informative. This should be done before you commit to a trade mark and incur significant expense in relation to a mark which may not available for commercial exploitation.
Step 4 – Draft and Finalise the Application
On the basis of what you tell us about how you intend to use the mark our Chartered Trade Mark Attorneys will draft a specification for your review and consideration. It is not possible to add goods or services to a trade mark application after it has been filed. As such, it is important that everything you want to use the mark in relation to, is included in the draft. All of the goods and services will fall into one of 45 classes. Our Attorneys will guide you through the application process. The class headings can be found *here*.
Step 5 – File the Application
An important date for a trade mark application is its filing date. Any resulting registration will be enforceable from the filing date. Also, the UK is a first to file jurisdiction and the filing date is generally the date which you formally assert your rights in the trade mark. Any dispute raised against the application/registration will usually be by reference to the filing date. Once filed, we will receive a certificate of filing.
Step 6 – The Application is Examined
The application will be examined by the UK IPO. This is usually within a few weeks of filing. On completion, an examination report will be issued to us. The report identifies any challenges to application and may contain:
- objections to its registrability;
- objections if the examiner considers the mark to be descriptive or not distinctive;
- questions about the goods or services eg if the examiner does not understand a term or requests amendment for the purposes of clarification; or
- information about earlier trade marks which the examiner considers relevant.
There may not be any issues raised by the examiner, in which case, the report will say that the application will be published. We will assist in addressing any issues which the examiner raises in the report.
Step 7 – Amend the Application
This step may not be necessary if the examiner does not raise any issues in the report. It is possible to limit the specification, re-classify terms or delete terms from the application. Terms can not be added and the mark applied for can not be changed. Our Attorneys will offer advice about how best to deal with any issues raised by the examiner.
Step 8 – The Application is Published
When the application is accepted, it is published in the UK Trade Marks Journal. A new UK journal is published weekly (for 50 weeks a year). When published, the application is open for opposition for a period of two months. If someone is considering opposing the application, they can extend the opposition period for a further month to a maximum of three months.
Step 9 – The Application becomes Registered
If nobody opposes your application, it will be registered. The Certificate of Registration will be issued around two weeks after the end of the opposition period. It will then be effective from the filing date. Once the mark is registered, you can use the ® symbol in the UK.