How to apply and how to register your mark in the UK
This synopsis of complex procedures cannot, and is not intended, to replace proper advice on individual requirements.
Choosing a Trade Mark:
Some trade marks are easier to protect than others.
Registration must be refused if for example the trade mark conflicts with some earlier right or is thought to be a simple descriptive or laudatory term.
There is no legal obligation to register a trade mark. However, the user of an unregistered mark can be prevented from continuing or extending use by a later user who does secure a valid registration in good faith. Also, it is, with certain limited restrictions, the first applicant who will be granted registration of the trade mark.
Therefore there are clear and powerful reasons for seeking trade mark registration.
A trade mark registration is infringed by unauthorised use of the same or similar trade mark either on the goods covered by the registration or on similar goods if there is likely to be confusion.
Moreover, a registered trade mark which has become well known in the United Kingdom will be infringed by the use of the same or similar mark on totally dissimilar goods where the later use, being without due cause, takes unfair advantage of or is detrimental to the distinctive character or the repute of the well known registered trade mark.
Therefore once a trade mark has been chosen it is very important to conduct clearance searches to see if the trade mark is free for use. We can readily conduct searches of the Trade Marks Register.
The Cost of Clearance Searches:
The cost depends upon the amount of time taken to conduct the search and to analyse the results. Much depends upon the nature of the goods to be covered and the resultant complexity of the search report.
It is not possible to give a firm quotation but as a general guideline the cost of conducting a register search against a word mark will be around £250.00 to £300.00 dependant on complexity. This includes disbursements in search fees and our services for analysing and advising on the resultant report.
If the trade mark is a fanciful logo it will be prudent to search against that logo also which may further increase costs.
Unregistered Use and Further Searches:
The user of a trade mark who can establish to the satisfaction of the Courts that he has acquired an exclusive reputation can seek to prevent others from trading in a manner likely to deceive the public into thinking there is a trade connection, with resultant damage to his business.
Unfortunately, there is no register of unregistered trade marks. Therefore it is not possible to conduct exhaustive searches of publicly available records to see whether proposed use will impinge upon any unregistered rights claimed by a third party. Searches against unregistered rights can be time consuming, expensive and not totally exhaustive.
For this reason many clients rely upon their own knowledge of the trade concerned, augmented by the Register searches which we can conduct, to reach a decision on the commercial risk involved.
In our experience most traders are readily able to satisfy themselves on this basis whether or not any risk involved is at an acceptable commercial level.
The next step is for us to prepare and file an application to register the trade mark. Costs for this stage will be £350 for the first or only class of goods covered plus £100 for each additional class of goods covered to include the applicable Government Official fees.
If there are no problems it will cost £220.00 to get your trade mark registered following application. However, not all trade marks are accepted straight away. Therefore it is not possible to give a firm estimate of the costs involved for this stage until we know what problems are likely to arise.
However, a budget of about £500.00 will often take a trade mark that has been objected to the point of acceptance or to the point at which it becomes clear acceptance will not be secured or will be secured only on significant expenditure.
Once accepted, the application is published for opposition purposes in the Trade Marks Journal. It lies open to objection by third parties for a period of three months. At the end of this period, if no objection arises, the mark is registered upon completion of registration formalities.
Once registered, registration rights remain in force for a period of ten years from the date of application. These rights can be renewed indefinitely thereafter, at ten year intervals, upon payment of the appropriate renewal fees.
All registrations handled by us are entered into our computerized diary system, with a view to the proprietor being reminded to instruct us to renew the trade mark in good time before renewal falls due.
Please note that all costs indicated exclude VAT at the applicable rate.