Trade mark frequently asked questions

What is a trade mark?

Trade marks are your badge of origin, and serve to identify you. They are your brand. Without trade marks, it would be impossible to find the products and services we like and to avoid those we don't.

Names are the most common form of mark registered, but many other signs are also typically registered such as logos, or slogans. It is also possible to register musical jingles and in theory smells. Your trade mark could also relate to the shape (for example, the coca cola bottle), or a form of packaging.

What names qualify for trade mark registration?

Distinctive names qualify. Any name that is purely descriptive of the product or service you provide will not qualify. Descriptive words are those that your competitors may legitimately want to use to describe or advertise their products and services.

I have formed a company and bought a domain, do I still need to register a trade mark?

Different rules apply for company, domains and trade marks. Of the three, trade marks give the widest monopoly over names. If when you buy your company or domain a competing business has trade mark rights in that name, then you could be stopped from using the name later, so a basic search of the trade mark register is prudent before you start using a name.

What searches do you do before filing a trade mark application?

We advise you have a basic search or a clearance search. It is essentially a risk management exercise and we assume you will do your own google searches to find out whether a competitor is using the same mark. Our standard searches are detailed on our search pages. Please ask for a quote for other searches, including common law searches.

What might the searches of the register show?

Depending on the search you buy, they will show whether your chosen name is already registered as a trade mark, or whether a competing business is using a confusingly similar name. The search may suggest ways in which you could file your application to increase your chances of a successful application. If the search shows that someone has a claim to a similar name, this alerts you to the possibility of an objection to your application once it is advertised for opposition purposes.

How likely is it that my chosen name will already be registered by someone else?

As there are a great number of registered marks, it may be difficult to find names that are available. If your business name infringes another's trade mark, you risk having to find a new name for your business, despite having built up a reputation in the original name. So, always avoid committing to a business name if someone else has a trade mark to use it in an overlapping business area.

Do I have to register a trade mark?

Although it is not necessary to register a trade mark to use a name, the danger in not doing so is that someone else registers the name first. This risk is particularly great if you have chosen a desirable, inventive name. If possible, register a trade mark straight away, so that your competitors know you have a better right to the mark when they come to choose a name. Conflicts that otherwise arise when two businesses later discover they are using the same or similar names, are less likely to happen.

How long do trade marks last for?

Trade marks are valid for 10 years, after which renewal fees are due. Legally trade marks are a form of property, and like any other valuable asset, may be sold, mortgaged or licensed to others.

What do the ® and ™ symbols mean?

You put others on notice that you have a registered trade mark by adding the ® symbol next to your name, or using the letters RTM. (The ™ symbol, on the other hand, indicates that you claim unregistered trade mark rights – although it does not necessarily mean that your claim is valid, as the name in question may be too descriptive to be registrable.)

Can I trade mark names to sell to others in future?

No. You must have a genuine intention to use a mark at the time you file to register it, and also, if a trade mark is not put to genuine use for 5 years it is liable to be cancelled.

If I register a name can I stop others using it?

Yes, but only if they are using it for the same or similar goods and services. Trade marks are registered in the classes in which you do business, and there are 45 categories in all. Another company will be prevented from registering the same or a similar name to yours, for the same or similar goods or services.

If I register for only one class, how can I extend the application to other classes?

There are 45 classes in all. If your business later expands into providing new goods and services, you may only add those to your trade mark registration by making a fresh application to include the new classes. Once an application is filed, no amendments or refunds are possible, even if your application is unsuccessful.

What is the difference between a UK trade mark and a CTM?

Trade marks are territorial, which means that they only provide protection in the countries in which you have registered them. A UK mark will protect you in the UK but not in France. On the other hand a CTM covers the whole of the European Union, so that registration will give you protection in the UK as well.

How long is my application likely to take?

Applications for UK trade marks are currently taking about 9 months to process, and CTMs are taking 18 months.

Why do applications to register trade marks take so long?

Once filed, a UK application is examined by the Registry to decide whether the mark is capable of registration. If it is, then your trade mark is published in the Trade Marks Journal, so that everyone has an opportunity to object if they wish. Assuming no-one objects within three months, the application is granted, and a certificate issued. A CTM application, once filed, undergoes ‘formalities examination’. About 9 months after filing, the results of searches conducted by the Community Office, and by the majority of the Member States, for possible conflicting earlier trade marks are sent out to you. The searches do not form a bar to registration, but may provide guidance as to whether there are third parties in any Member State who may oppose the application. Acceptance of the application is published for opposition purposes, within 12-15 months of filing, in the CTM Bulletin. There is then a 3 month period during which objections to your application may be made. From 1st October 2007 UK procedure is set to change in line with the European practice.

What is a CTM?

A CTM application covers the whole European Union with one application. If you do business in the EU, it is worth considering applying for a CTM as it is quite cost effective. The application is filed with the Office for the Harmonisation in the Internal Market, (OHIM) based in Alicante, Spain. The filing fee is in two parts. On application there is a basic fee. A further fee is then payable once the application is accepted and proceeds to registration. Note that even if grounds for refusal of an application exist in just one Member State, the application as a whole will be refused. On the other hand, if no substantial objections are raised, the trade mark proceeds to registration about 18 months after filing, and you have trade mark protection throughout the EU.

What happens if anyone objects to my mark?

If anyone does object, it is necessary to put your case to the authority. If this does not resolve matters, and the challenge is more significant, then you need to consider whether to proceed. The cost implications may be significant. Losing your case or withdrawing your application may result in your having to pay towards the other person’s costs. Neither these costs, nor your legal costs in challenging an opposition are included in our quote to register a trade mark. Additional budgets would therefore need to be set.

What is an international trade mark?

A UK trade mark registration may form the basis for an application for trade marks in other countries which are members of an international agreement known as the Madrid system. The application is through the World Intellectual Property Organisation (WIPO) in Geneva (see WIPO website for list of countries). At the time of writing not all countries are parties to the Protocol— Canada and South Africa are not parties.

Under the application, you name the countries in which you wish to trade, and make the appropriate payments for those countries, which then have 18 months in which to raise any objections to your application. It is possible to add countries later as and when you need to.

There are many advantages of registering through the Protocol, in terms of ease of administration, cost savings, and flexibility. The basic fee for the application is in Swiss Francs and additional fees are payable depending on the number of countries in which you seek to register your mark. Apart from the basic fee, there is a further individual country fee payable depending on the country you name. Once you file an application under the Madrid system, if objections are raised on it in some countries that you are unable to overcome, your mark will not be accepted in those countries. However, unlike the CTM, your application will continue to be acceptable in other countries unless there are valid objections in any of those countries.

Can you help me if I want trade mark protection in the US?

Yes, if you require trade mark protection in the USA then we will file an application on your behalf, either through a Madrid application, or by instructing US attorneys.