UK Trade Marks Registration

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How do you register in the UK?

Once a mark has been chosen, an application is made to the UK Intellectual Property Office. The application must specify the goods and/or services on which the mark will be used.

The Register of Trade Marks is divided into 45 administrative classes of goods and services, e.g. soft drinks fall into class 32. A charge is made for each class covered by an application.

In theory it is possible to register a mark for all goods or services in a class, and for all classes. However, there are three drawbacks to this policy:

it would be very expensive;
the UK Intellectual Property Office would probably not allow it as an applicant must have a real intention to use the mark on all goods and services for which he has applied;
if the mark is not used for five years on the full range of goods and services covered, the registration can become invalid and can be removed from the register for those goods or services for which there has been no use.
Thus it is advisable to register a mark only for those goods and/or services on which you ( or someone with your permission) are intending to use it in the near future.

A UK registration must be renewed every ten years. If you are also interested in protecting your mark in other European countries in addition to the UK, the European Union Trade Mark (EUTM)1 application is an option – see our separate page on this topic: European Union Trade Marks – The Basics.

How do you register abroad?

The principles of registration abroad are similar to those of the UK. The details of the laws and the procedures for registration in each country vary, and you will need professional advice about each country.

In many countries, rights in trade marks are obtained only by registration. Therefore, it is unsafe to rely on use to protect your rights abroad – an application has to be made. At present, in general, a separate application is necessary in each country of interest.

However, there are also two international systems at present: (a) the EUTM system, covering the 27 European Union countries and (b) the Madrid Agreement and Madrid Protocol systems, covering a range of countries. We can advise you further on these if you wish.

It is advisable to apply for registration as soon as possible in countries where you are trading or intending to trade. This will prevent third parties from pre-empting you and registering your mark, which could prevent you from t rading under that mark in that country.

As in the UK, you should search the overseas registers first, before you start using the mark and before you apply to register the mark

How can we help in this ?

  • We can advise you on marks which may be registrable in the UK, under the international systems mentioned above, and in other countries.

  • We can carry out searches prior to application in the UK to try to establish whether the same or similar marks already exist. We can also arrange for searches to be carried out in other countries.

  • We can advise on appropriate classes of goods and services, and complete and file an application with the UK Intellectual Property Office. For applications abroad we use local associates, selected on the basis of previous experience.

  • Where there is a choice of routes to protection in a set of countries, we can advise on the appropriate strategy.

  • We correspond on your behalf directly with the UK Intellectual Property Office and the EUIPO2, and respond to any official objections raised against an application.

  • We can provide advice on how to protect your mark during use in advertising and media coverage.

  • We can arrange to watch for marks applied for by others that may conflict with your own, and oppose their registration.

  • We can advise you on possible infringements and on enforcing your mark against any infringers.

  • We can advise you on the protection of your mark in assignments, appointment of agents and distributors and in licensing agreements.

The advantages of registration

You have stronger rights to use and protect a registered trade mark.

An act for infringement of a registered trade mark is generally easier, quicker and less costly than an action for passing-off.

Licensing of a registered trade mark is far safer.

Having a registered trade mark in the UK is a good platform for applications in many overseas countries.

Having a mark on the register warns others of your claim to that mark and thereby acts as a deterrent.

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