How to Register a Trademark in the UK
Looking for ways to protect your brand, work and name? Registering a trademark enhances protection against cybersquatters and counterfeiters infringing on your products. It also ensures that your trademark is not similar to other registered trademarks.
Small business owners struggle with the process of trademark registration. In most cases, they turn to a lawyer, which can be expensive. Below is a step by step guide on how to register a trademark in the UK.
What Is a Trademark?
A trademark is a recognizable symbol, phrase or sign that denotes a service or product. This phrase, sign or symbol differentiates it from similar products and services. Besides phrases and symbols, a trademark can take the form of a logo, shape, sound, font, jingle, colour or a combination.
In the UK, the Trade Marks Act 1994 is the main legislation relating to trademarks. This law implements the EU directive 89/104/EEC. The directive forms the framework for trademark laws in EU member states. It also replaced the Trade Mark Act 1938.
Another legislation that sets out the trademark application process is the Trade Marks Rules 2008. This law also governs several administrative processes that include appeals, revocation and renewal.
Are Unregistered Business Names Protected in the UK?
In the UK, unregistered Business Names are usually protected through the common law of passing off. According to this law, you can claim passing off in conjunction with trademark infringement claims.
To succeed in a claim of passing off, you must…
- Demonstrate reputation or goodwill attached to your goods and services
- Show that your business is likely to suffer damage due to the defendant’s actions
Goodwill must be local to the UK. Having a reputation in the UK is not enough in an action for passing off. You ought to know that innocence cannot act as defence in a passing-off case. Also, bringing a case of passing off usually involves a heavy burden of proof.
Register a Trademark in the UK
1) Conduct a Trademark Search
In 2020, there were 6 million small businesses in the UK. This accounts for 99% of all businesses. Before registering your trademark, conduct a trademark search. This is to ensure no other business registered a trademark similar to yours.
There are 45 classes broken down into different industries in areas of science, technology and business. If another business registers a trademark in area 32, you can still register your trademark but in another class, for example, 42.
If your mark is already taken in your relevant class, you cannot register a similar trademark. To register in the same class, come up with a new mark.
2) Start Your Trademark Application
Head to the UK Intellectual Property Office website, and click ‘Apply Now’ On the next page, select who is completing the trademark application. The IPO office in the UK requires at least one of the trademark owners to have a postal address in the:
- Channel Islands
Click ‘Continue’ then ‘Continue to apply for a trademark’.
3) Add Name and Address
Add owner details that include…
- Owner type
- Postal code
- Telephone number
- Email address
Check the following…
- I understand the IPO will use my email address for corresponding only
- I understand that name and details will be published
- I confirm this owner is entitled to hold property
Click ‘Save for later’ and then continue with your application.
4) Enter Your Trademark’s Format
In the next stage of your application, you need to answer the question, ‘Does your trademark have words, letters or number?’ Select yes or no, then enter any words, letters or numbers in the textbox provided. Click ‘Next’ then enter a more advanced format of your trademark.
Select the right category for your trademark.
- Statement A – it has letters, numbers and words with styling graphics
- Statement B – it has numbers, letters and words in a particular colour, with a picture and style
- Statement C – for unusual types of trademarks such as sound
If you want to protect your name, design or phrase, select Statement B. Once you select this option, upload your graphic or logo.
5) Select a Single or Series of Trademarks
A single trademark is for one word, design or phrase. This option gives you a good amount of protection if someone tries to copy your trademark. You can trademark a series of variations.
A series of trademarks are several marks with very small differences. Differences between the marks must not change how they sound, look or alter their meaning. A series of more than 2 trademarks will cost you an extra £50 per mark. The fees are non-refundable even when the mark does not qualify as a series.
6) Select Your Term and Class
It would be best if you informed the Intellectual Property Office (IPO) what goods and services you trade. To help you with this, IPO uses a classification system of 45 categories called classes. They contain pre-approved terms. Application for more than one class is subject to an additional fee of £50.
There are two options…
- Select goods and services from an approved list
- Select class and enter the goods and services
You can select terms that describe your goods and services from an approved list. If you do so, no objection will occur to your goods and services when your trademark gets examined. You need to ensure your description of goods and services is clear and unambiguous.
7) Add a Disclaimer and File a Priority Claim
On the next page, add a disclaimer. A disclaimer describes the rights you’re claiming in regards to your trademark. This is relevant for 99.9% of all applications, and the protection offered is usually good. If unsure, we recommend consulting a lawyer.
In this stage, answer the question Do you want to supply a disclaimer? Choose yes or no, then click ‘Next’ The next stage of the application is to file a priority claim. If you’ve applied for this trademark outside the UK in the last six months, you may claim priority.
Check yes, then continue with your application.
8) Select the Type of Trademark
According to IPO, 99% of trademark applications are for an ordinary trademark. There are three options:
- Certification Mark
- Collective Mark
A certification mark offers a guarantee that goods and services bearing your trademark meet a certain standard. The collective mark is for trade associations. To proceed, click the relevant option.
9) Choose Your Trademark Examination Type
There are two examination types…
- Standard – takes 20 days for examination costs £170. This fee is payable upfront, and it’s non-refundable.
- Right start – takes 20 days for examination and costs £200. You need to pay £100 upfront, and if your application gets rejected, you only pay £100. If you added multiple classes, there is an additional fee of £50.
If you fail to pay the balance within 14 working days, your application will get withdrawn.
10) Review Your Trademark Application
In the final section, review your trademark application. If needed, amend any details. Once satisfied with your application, click ‘Submit’.
The site will take you to the payment page. Once payment gets confirmed, you’ll see a confirmation page. Screenshot your application number and check your email. Now, sit back and wait for your trademark to get filed. This usually takes around three months.
In a straightforward case, a trademark application in the UK usually takes 3 to 6 months. The UK Intellectual Property Office allows the filing of trademark applications online. The system is fast and efficient.
It’s also less expensive compared to the paper filing system. Once your trademark gets filed, it’s important to use it correctly and in the format it’s registered.