Trade Marks

Trade Marks FAQS

Below, we have answered some frequently asked questions concerning trade mark solicitors

• Does a trade mark need to be registered?

  In the UK, there is no strict requirement that a trade mark be registered. However, in the event that a third party uses your trade mark in the UK without your consent, your ability to prevent that illicit use is strengthened if you have a registered trade mark.

  Reliance on unregistered rights requires that you demonstrate, amongst other things, that your trade mark has goodwill sufficient to distinguish your products or services. For some businesses this will not be problematic, for others this may prove difficult, if not impossible, to prove.

  A registered trade mark is a monopoly right and so prevents an unauthorised third party from using the trade mark (or something similar) in relation to identical or similar products and services for which the trade mark is registered (within the jurisdiction where the mark is registered). Whilst it may also prove necessary to show that there is a risk of confusion caused by the unauthorised use, there is no requirement to show that your trade mark has a reputation so as to demonstrate infringement.

  Put another way, your right to the trade mark is established by its inclusion on the trade mark register. The mere fact of registration can prove to be a valuable deterrent to would-be infringers and is an asset that you, as a business, can exploit.

• What protection does a registered trade mark provide?

  Broadly speaking, a registered trade mark allows the proprietor (and in certain circumstances, it’s licensee) to prevent an unauthorised third party from using the trade mark, or something similar to it, in relation to goods and services that are identical or similar to the goods and services for which the trade mark is registered.

• Will a registered trade mark provide worldwide protection?

  No – trade marks are territorial in nature. For example, a UK registered trade mark will provide protection across the whole of the United Kingdom but cannot be used to prevent a third party from using that trade mark in, for example, America.

  Businesses should consider where they intend to use their trade marks (or where they are already using their trade marks) and consider filing for registration in those jurisdictions, as part of their trade mark strategy.

  Most countries operate a trade mark registration system but to apply for protection throughout the world is expensive, not only in terms of filing fees but also renewal fees (trade marks have to be renewed periodically).

  A number of countries have signed up to what is referred to as the ‘Madrid protocol.’ This can be a cost-effective way to apply for registration in multiple jurisdictions.

• What about European trade marks?

  A registered European Trade Mark (EUTM) will provide protection in all member states of the European Union.

  Whilst the UK has now left the European Union, an EUTM that is registered before 31^st December 2020 (being the end of the transition period) will be enforceable in the UK,  through a  ‘clone’ of the EUTM on the UK trade mark register that’ll be created at the end of the transition period.

  If an application to register an EUTM has not been completed by the end of the transition period, it will be necessary to make a further application to the UK Intellectual Property Office, so as to obtain trade mark protection in the UK. That application will need to be made within nine months of the end of the transition period, so as to be able to benefit from the filing date (and/or priority date) of the EUTM application.

• Are there any steps that I should take before the trade mark application should be made?

  Yes – a trade mark application will always include what is known as the specification. The specification lists all of the goods and services that you would like the trade mark to be registered for. It will also categorise those goods and services by class, as is required by trade mark law.

  Because of this, you should ensure that the specification truly covers all goods and/or services that you intend to use the trade mark for, both now and in the near future. It is important that the specification is accurately drafted and that the goods and services are correctly classified.

  If the specification is not correct, the application may be refused or, alternatively, you might find that the trade mark does not provide you with the protection that you thought it would.

  Once the specification has been drafted, we would also suggest that you obtain a clearance search. This will help to identify whether there are any pre-existing rights that might conflict with your trade mark application. If there are pre-existing rights, you will need to take advice as to how these might not only affect your trade mark application but also your use of the mark.

  If a third party has a pre-existing right that would defeat your trade mark application, they will likely also be able to sue you for trade mark infringement if you are using the mark.

• How long does it take for a trade mark application to be registered?

  This very much depends on each case. If an application is made to register a UK trade mark, assuming that the UK IPO agrees the mark meets the legal requirements and no one opposes your application, you can usually expect to receive your trade mark registration certificate within four to five months of the application being submitted.

  Once registered, your trade mark will have effect from its filing date or, if a successful claim to priority has been made in the application, the priority date. Priority is a way to ‘back date’ the effective date of the trade mark by up to six months.

• What will happen once the application has been submitted?

  In the case of a UK application, the application will be examined by the UK IPO.

  The UK IPO will check that the application meets all of the formality requirements and that the trade mark meets the criteria for registration. It will then issue an examination report and will advise you of any registered third party rights that it considers may conflict with your application.

  The application will then be published, allowing two months (extendable by a further month) for a third party to file an opposition to your trade mark. If no oppositions are filed, the trade mark will then be registered.

  If an opposition is filed, this will delay the registration of your application as the UK IPO will have to decide whether the opposition should be upheld or rejected. If you chose to contest the opposition, you will need to file a defence as well as evidence in support of your position.

  If you successfully defend the opposition or you reach an agreement with your opponent, your trade mark will be registered. If the opposition is successful, your trade mark will not be registered at all.

  Dealing with an objection from the UK IPO and/or an opposition can be expensive; this is another reason to ensure that you get advice at the outset of the process, so as to minimise the risk of issues such as this arising.

• How much does it cost to file a UK trade mark application?

  At Nelsons, we provide a fixed fee service when a party is making a UK trade mark application. This service includes:

  • Our time spent discussing your business and how you use/intend to use your trade mark;
  • Preparing the specification for your approval;
  • Instructing an agent to undertake the clearance search;
  • Advising you on the results of that search; and
  • Submitting the application to the UK IPO.

  There are additional fees to consider. We use an agent to undertake the clearance search as this is more cost-effective for our clients than undertaking the search ourselves. The agent usually charges around £200 but we will always confirm their fees with you in advance as these do depend on the type of mark applied for, and how extensive the specification is.

  The UK IPO will also charge a fee when we submit your application. The amount depends on the number of classes of goods or services that you would want to register the mark for. The fee to register the mark for one class of goods or services is £170. That fee increases by £50 for each additional class.

• Is it worth spending the money to register a UK trade mark?

  A trade mark can be extremely valuable intellectual property, used to differentiate your business from that of your competitors. Trade marks can also be commercialised, through licensing and franchises. In addition, like any form of property, they can in some instances be used as collateral against which to secure loans for your business.

  Trade marks can be protected without registration. However, such protection is only available if it can be shown that goods and/or services supplied under the mark have the benefit of goodwill or reputation. You will need to demonstrate that they are recognised as being ‘your’ goods or services because they are supplied under the mark.

  If that right of goodwill/reputation is disputed, it can be very expensive and sometimes impossible to prove. It may also only be possible to show the existence of such rights in particular localities of the UK, which could negatively impact on any expansion plans for your business.

  In contrast, the existence of a registered trade mark is proved by its registration certificate and appearance on the trade mark register. This makes it a much easier right to enforce and commercialise. In addition, a registered UK trade mark has effect throughout the whole of the United Kingdom, regardless of whether your business operates in a specific region only