The application process for registering a trade mark

When you are looking to register a trade mark, whether that is for a UK mark or a Community Trade Mark for protection across the EU, the application will be dealt with by the UK Intellectual Property Office (IPO). They oversee all activity in relation to all types of intellectual property in the UK, not only trade marks.

The IPO website outlines the process to submit an application to register a trade mark, including fees and time-scales.

The first stage, suggested by the UK IPO is to make sure your proposed trade mark satisfies qualifying criteria. This is largely based on the points outlined in the Trade Marks Act 1994 and highlights some key do’s and don’ts. The format of the mark has to be words, sounds, logos, colours or a combination of any. In addition, the mark can not include any offensive or misleading language and must be distinctive. Once the mark itself is suitable for registration, the IPO suggest you complete a check to make sure there is no existing trade marks which you would infringement if you carried on with your application. The UK IPO website does offer a free basic search facility but an extensive search which covers all bases is recommended. This is something that trademarkroom specialises in and can aid you with.

After you have checked that your proposed mark is suitable for registration, your application needs to be submitted. The application can either be submitted online or by post.  Applications online are encouraged and can be submitted in one of two ways. The first is the standard application, which has a fee of £170 for registration in one class of goods or services, including £50 extra for any additional classes. The second type of application that can be submitted online is a Right Start application that includes an examination report from the IPO on the suitability of your proposed mark. This costs £100 upfront with an addition £100 if you proceed with your application after receiving the report. Alternatively, if you would like to apply by post, the form TM3 needs to be filled out, attaching an additional fee sheet (known as the FS2 form) to your application. The application will cost slightly more than an online application with the fee at £200, with an additional £50 per extra class.

After you apply, you will receive feedback on your application within 20 days. After this you will have 2 months to resolve any problems they identify. If there are no objections, the proposed mark will be posted in the Trade Marks Journal for 2 months allowing any opposition to be submitted. If no objections are submitted, then your mark will be registered. The IPO will issue you a certificate to confirm this. In general, you application can take around four months from beginning to end, making exceptions for multiple oppositions, which can stall an application considerably.

Once your trade mark is registered, you will enjoy the benefits of protection in your brand for ten years before an application for renewal has to be sent.

By Ellis Sweetenham