- May 9, 2020
- Posted by: United Legal Experts
- Category: Trademarks
Products or services associated with a particular business require registering a trademark (a specific sign) to protect their identity, according to the respective country’s laws. The registered trademark provides the owner with exclusive rights to market and takes legal action against any misuse. However, in the UK unregistered trademarks also have similar advantages somehow. The trademark law has strict requirements over what signs can be registered. This manuscript will reveal step by step guidelines of registering a trademark.
Hunt for a logo or brand name to Register as a Trademark in the UK
The most important requirement to register a trademark in the UK against a brand name is about its unique in nature, regarded as coined words. It could either be words, sounds, logos, colors, or a combination of any of these. Besides the requirements stated above, it must not be in conflict with effective standards in the UK. A trademark is not acceptable if it is offensive, misleading a 3-dimensional shape, too common, and non-distinctive. It is completely prohibited if it will be literal or descriptive towards the goods or services, it will relate. Finally, it is a requirement that a brand should not resemble or similar to state symbols like flags or hallmarks including shields and labels.
Prior Trademark Search
Once you have a unique and distinctive trademark in hand, it is necessary to conduct a prior trademark search in the UKIPO trademark database or get the Comprehensive Trademark Search service. It is essential to find out conflicting marks (identical or confusingly similar), before making an application to register a trademark. There might be a conflicting mark that has been already filed or registered with similar goods and services like yours, which could pose problems in filing the application. There are certain ways to manage these challenges by taking the consent letter from the holder of an existing trademark. The holder of the already registered trademark could also search through Trademark number, Trademark owner, keyword, phrase, or image. One can seek a trademark attorney advice considering the important documentation relating to intellectual property that can complete a search of trademark, draft a letter of consent and registration.
File an application for registration
When you have chosen and searched about your mark, the subsequent step is to make an application to the UK Intellectual Property Office (IPO) either online, by post or through fax. When you file a trademark application, ensure the below requirements to mention properly. Therefore, a trademark once applied cannot change afterward.
- The details of the applicant; either a company or an individual or joint ownership
- Your mark, i.e. details of what you want to register or a description of the trademark, along with any graphics, etc.
- Identify trademark classes you want to register for – each class of goods and services contains a list of pre-approved terms, e.g. class 1: chemicals, class 43: food and drink services, or class 25: includes clothing, footwear, and headgear. In case of any additional goods/services, after filing, one has to submit a new application which involved extra costs. Multiple class trademark applications are also possible in the UK.
What happens after application submission for a trademark?
Once a trademark application has accepted by the UKIPO, it undergoes formal and substantive examinations. An initial examination report will be provided around 20 days after filing the trademark application. However, the application can take approximately 3-5 months to get registered, if no objections are being raised. If any concerns raised, the applicant can act or resolve those within two months.
Published for Opposition
The application approved at this stage will publish in the trademark journal for two months, and during this time, third parties can oppose the trademark if found similar or create a likelihood of confusion with the trademark. The trademark will register officially, in case no opposition filed by any party or if anyone filed an opposition, the opposition procedure will be started by the Tribunal. If your application is opposed by someone, you can either withdraw your trademark application or defend your application. This depends on the situation in which an Expert can advise you on that.
After successfully passing through the opposition period, the applicant will receive a Trademark Certificate upon registration. Once a trademark has registered successfully, it will last for 10 years from the date of application. The registration is renewable (renewal must be filed 6 months prior to the expiration date) for successive periods of 10 years.
Once your trademark is registered, ensure you report any changes to your name, address, or email address. Additionally, you can also compete with other people’s trademarks, e.g if you think they are identical or similar to yours and sell, market, license, and mortgage your trademark.