How to Apply and how to Register your mark - A summary

This synopsis of complex procedures cannot, and is not intended, to replace proper advice on individual requirements.

In the United Kingdom, there is no legal obligation to register a trade mark but continued use of the mark might be blocked by a later user who does secure a valid registration in good faith. Clearance searches should be conducted to see if a new trade mark is free for use. We can readily conduct searches of the Trade Marks Register. These usually cost from around £275.00 to £300.00 dependent on complexity. It is not possible to conduct at an economic cost similarly exhaustive searches of all unregistered rights claimed by third parties. Many clients rely upon the Register searches which we conduct augmented by their own knowledge of the trade concerned to reach a decision. Trade Marks must be registered for specified goods or services, categorised into a number of different classes.  Applications can cover more than one class but official fees must be paid for each class covered.  The cost of filing in one class is £350.00 to include the applicable Government Official fees. If there are no problems, the cost of taking the mark to registration is £150. Not all trade marks are accepted straight away. The trade mark must be refused if it conflicts with an earlier right or is a simple descriptive or laudatory term. A budget of about £500.00 will often take a trade mark facing a straightforward objection to acceptance or to the point at which it becomes clear acceptance cannot be secured or will be secured only on significant expenditure. Once accepted, the application is published for opposition in the Trade Marks Journal for three months. If no objection arises, the mark is registered. Third parties may object to registration if for example they own an earlier registered trade mark or can show that they have an established reputation of an unregistered trade mark and that use of the mark applied for will result in confusion and damage to their trade. Dealing with such objections will increase the cost. Rights remain in force for ten years renewable indefinitely at ten year intervals. All registrations handled by us are entered into our computerized diary system.

In more detail

A Community Trade Mark covers all member states of the European Union. Again, Trade Marks must be registered for specified goods or services, and official fees must be paid, dependant on number of classes claimed.  An application typically costs around £900.00 including official fees. This compares very favourably with the cost of seeking protection in each individual member state of the European Union. Registration must be refused if the trade mark is a simple descriptive or laudatory term. We are allowed to argue against any formal objection. The Examiners also notify us if the trade mark is thought similar to any prior trade mark  on the CTM Register but will not refuse the mark on this basis unless the proprietor of the earlier trade mark brings successful opposition proceedings. Cost of processing an application to the point of registration can be broadly similar to the UK but the risk of third party intervention is higher because objection can come from the owner of any earlier right in the whole EU. Following acceptance the application is published for opposition before it can proceed to registration upon payment of registration fees. These depend on number of classes claimed and the value of the euro (in which they are paid) but typically will be around £1100 including official fees and our services for the attendant formalities. If the mark is refused because of some formal objection, it may be possible to convert it on payment of additional fees, into a series of National applications covering one or more individual state of the European Union.

In more detail