There are around five million businesses in the UK, and each enterprise needs to stand out from its competition and create and retain brand recognition and loyalty.
Investing in strong trademarks will protect your business against competitors and increase the attractiveness of your business to investors.
You may have heard that you don’t need a registered trademark to protect your brand - the common law of passing off will safeguard it, but this is untrue, and passing off claims can be both expensive and lengthy.
Registering a trademark shows investors and competitors that your company is well-organised and serious about protecting its intellectual property.
In this article, we provide a brief overview of how to register a trademark in the UK and the legal considerations you should make.
What can be trademarked?
Trademarks can consist of words, slogans, designs, letters, numerals (e.g. 501 Levi jeans), the shape and/or packaging of goods, internet domain names, smells, sounds, colours, and moving digital images.
To apply for registration, your proposed trademark cannot be:
- Offensive
- Descriptive - the mark cannot simply describe the product or service it relates to
- Misleading
- Non-distinctive or common
- A three-dimensional shape of the product it is related to
- Look too similar to state symbols like flags or hallmarks, based on World Intellectual Property Organization (WPO) guidelines
Most importantly, your mark must be original to avoid objections to your application.
How do I run a trademark clearance search?
Objections to trademark applications can delay the registration process and result in expenses related to defending your mark’s uniqueness.
Therefore, running a trademark clearance search is imperative to ensure no one else has registered a mark similar to yours. This step is important as you don’t want to waste money paying filing fees to the trademark office and find out there’s a mark already registered after that.
There are two ways to undertake a trademark clearance search:
1. Manually
Identifying a list of potential trademarks and their owners, which require further investigation. You can find any person or company that may have a similar name to the one you wish to register through Google search, company directories or social media.
Once all the applicable information is collected, it needs to be analysed and a final report compiled.
2. Using AI-based searches
Using AI products can reduce the time required to conduct trademark clearance searches from weeks to seconds. You need to consider marks that sound or look similar to the trademark you want to register. Concentrating on exact matches will not capture all potential opponents.
A trademark solicitor can assist you with designing an international or UK trademark search and interpreting its results. Furthermore, they will help you select and define the Nice Classes you need to register your mark under.
What is a Nice classification?
The WIPO defines the Nice Classification on its website as:
"The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks."
There are 45 classes, and you may likely want to register your mark under more than one.
To register your mark, each territory you apply under may assign a different Nice classification when interpreting your product or service description.
How do I make a trademark application?
Once you have run a trademark clearance search, you will be ready to apply to the UK Intellectual Property Office (IPO) to register your trademark. If you are unsure how to register a trademark in the UK, your solicitor could do this for you online. A confirmation email will be sent upon completing the application and payment of the non refundable fee.
How long does it take to get a trademark registered in the UK?
Upon receipt of your application, an IPO officer will examine it and publish it in the online trademarks journal. If there are no objections, your mark should be registered in around four months.
How to register a trademark in Europe?
Trademark rights are territorial. Unfortunately, no ‘global’ trademark exists, so you must consider which territories you want to protect your mark(s).
If you decide to protect your trademark in Europe, then the application must be made to the European Intellectual Property Office (EUIPO). If you are based outside the EEA/EU (such as the United Kingdom following Brexit), you must appoint an EU/EEA-based representative to handle the application process on your behalf.
Learn more about registering a trademark in Europe
Can a trademark lawyer help me register a trademark?
We have in the past been asked by several of our clients whether they can make a trademark application directly.
Whilst theoretically, applicants do not have to be legally represented, it helps to instruct a trademark expert on your behalf to help you navigate the process.
The requirements and terminology are unfamiliar to most people without a business legal background, and the pitfalls of getting it wrong can be serious.
Below are four ways a trademark lawyer can advise and assist you in successfully registering a trademark.1
1. The application process
A trademark lawyer can advise on all aspects of the application process. First and foremost is analysing the potential trademark itself and whether it can even be protected at all.
As we explained above, trademarks which fall into specific categories (e.g. non-distinctive or descriptive) will be outright rejected by the trademark office with no refund of fees already paid.
2. Checking if the mark is available
Running a conflict check is an essential part of any trademark application. It involves thorough searches of trademark databases to ensure the sign is free to use.
If a different company or individual has trademarked an identical or similar sign in the same field, this will probably be a barrier for you to use and register the mark.
With millions of marks registered, trademark lawyers are trained in the art of using shrewd search criteria to discover problematic existing marks (e.g. not just identical but similar marks, marks starting/ending with or containing a particular term, synonymous marks, and even phonetic equivalents).
They can also find out any risk posed by potentially confusingly similar marks and suggest disclaimer limitations to mitigate this risk.
3. Selecting the correct Nice classification
One of the main benefits of working with a trademark specialist is to help you choose the correct classes to protect your mark.
This is based on a system agreed upon internationally composed of 45 classes (34 cover goods and 11 cover services). Getting it right can be tricky and confusing if you are not well-versed in the system.
For example, if you sell violin cases, that activity belongs in the class of goods and services 15. You shouldn’t protect ‘cases’ under class 9 by mistake, as this applies to cases for glasses. Solar panels for electricity generation fall under class 9, versus solar panels for use in heating which falls under class 11. The list could go on and on…
Examples of clients not aware of the intricacies of the classification system. An application protected for ‘charitable services’ under class 36. This would cover charitable activities in collections and fundraising; the client provided temporary housing. This is proper to class 43, meaning a mismatch between the protection granted by the trademark and the reality of what the client was offering.
4. Drafting the specification
Finally comes the all-important list/statement of goods and services against which the trademark will be used.
The drafting and scope of trademark protection must be accurate and determine to what extent other parties may use similar/identical marks. It must also be clear and comprehensive. For example, ‘repair services’ would be rejected as seems to be a vague description, whereas ‘repair of computer software’ or ‘electric appliance repair’ would be acceptable.
Wrapping up
As you can see above, filing a trademark application requires expert knowledge. Our experienced intellectual property solicitors have access to AI clearance search tools and know how to interpret the search results accurately.
We can ensure that your mark application is filed under the correct Nice Class and is not declined due to being merely descriptive or offensive. Investing in expert legal advice will mitigate risks of your branding budget and ensure the process runs smoothly.
Get legal assistance from LawBite
Applying for a trademark can be challenging to navigate. Our intellectual property lawyers are experts in trademark law and can provide you with expert guidance through the trademark registration process.
If you have questions about a trademark application, international trademark registration, trademark protection, trademark infringement, or trademark filing, book a free 15 minute consultation or call us on 020 3808 8314.
