What is trade mark and why it should be registered?
The Trade Mark Registry is held by The Patent Office (UK Intellectual Property Office) within the UK.
A trade mark could be described as a sign and is used to distinguish the goods and / or services and cannot be used by other companies in relation to certain products. A sign generally includes any word, symbol, logo or numeral, a combination of colours, sound or pictures.
It protects your company from others who may try to profit from your brand or reputation and enables customers to identify the certain goods and services with a particular company that bears this mark.
The protection provided by the trade mark only applies to the type of goods or services that you selected upon registration.
All goods and services are categorised in ‘’Classes’’. There are 45 classes in total in which 34 for goods and 11 for services which you can find here.
Points that you should consider before submitting an application
Not all applications to register trade marks will be accepted.
The main points which need to be considered prior to making the application is whether the proposed trade mark is a distinctive word, logo, picture or other sign that will clearly identify your goods from those of other people within the same market? If the examiner does not think it is, the mark will be objected to.
It is worthwhile considering a logo i.e. a design or picture together with words which will make the mark distinctive and easily identifiable from goods/services of other traders. It is obvious that an application will be refused if the mark has already been registered or looks the same as a trade mark which has already been applied for or is similar to it.
The Patent Office has a trade mark search and advisory service which for a cost of less than £100 can give a definitive opinion on whether a trade mark is sufficiently distinctive or not. The fee depends on the number of classes of goods or service you are interested in. Once the application has been sent you cannot alter your trade mark or add more goods / services and application fee is not refundable for any reason.
According to the official Patent Office’s booklet, ‘’7 days a week’’ will not be accepted as a trade mark as nowadays many traders widely advertise their goods or services being provided seven days a week. To find out more sorts of marks stated within this booklet that will be rejected please click here.
What happens next?
If you decided to apply for your trade mark registration, an examiner will check you application. The examination report will then be sent notifying whether your mark is acceptable or not. Normally it takes around 2 months from the date of the receipt of the application. This will include The Patent Office’s objections is your application is considered to be unsuitable for registration. If you can respond to these objections they might be waived. In case if you are unable to do so, you application fails at this stage.
If the mark is not objected to, the trade mark will be advertised in the Trade Marks Journal published every Friday, following which there is a period of 3 months when people are allowed to oppose the registration of the trade mark. Your application details, including your name and address will appear on records of the Patent Office on their official website and are open to the public.
How long it will take?
If nobody objects, questions or opposes the trade mark it will normally take around 6 months for your trade mark to be registered. However, if you are able to overcome the objections or an opposition it will make the process longer.
If someone objects to the registration of the trade mark, they will then need to decide whether they wish to challenge the objection or withdraw the application. If they decide to challenge there are various different procedures that need to be complied with.
Fee for registration
The application requires to be submitted with an official fee of £200 for an application to register a trade mark in one category (class) of goods or services and a further £50 for each extra class.
In the case of encyclopaedia, we may need to consider both publishing of books and magazines as well as various categories, which may be applicable to the internet. This is likely to cover three or four classes of goods and therefore the full application will be approximately £350 – £400.
Renewal or cancellation of your trade mark:
Once registration is granted, the initial term of protection lasts for 10 years from the date of filing. You can renew your trade mark for ever. Therefore, in order to keep your trade mark in force, you must renew it on the 10th anniversary of the date of filing and every 10 years after that. However, it is a not necessary procedure and you may choose not to renew it.
The official cost of renewing a trade mark is currently £200 for one class of services or goods, and a further £50 for each additional class.
If you do not use your trade mark within five years since registration or stop using it for at least five years, anyone may intend to have you trade mark removed from the register.
You may cancel you trade mark registration at any time.
Use of the letters “™”, the sign ® or the word “Registered”
The letters “™” simply inform the public that your mark is a trademark used to distinguish the goods / services of one proprietor from another and not that it is actually registered. You can use the “™” designation at any time
If ® symbol, the word “Registered” or the abbreviation “RTM” (for Registered Trade Mark) is used with a mark it means that this mark is registered in the country concerned. However, it may be registered somewhere other than in the UK.
It is a criminal offence to use either the sign ® or if you mark is not registered anywhere in the world and may result in a fine.
Registration of your trade mark internationally
A United Kingdom trade mark registration will only provide protection throughout the UK. There are different ways to register and protect your trade mark if you want to use it in countries other than the United Kingdom.
The Community Trade Mark Systemidentifies and distinguishes goods and services throughout the European Union and allows the applicant by way of a single application to register and protect you trade mark in all the 27 countries of the European Union. All applications are passed to OHIM (the Office for Harmonisation in the Internal Market) which is based in Alicante, Spain.
A typical application which proceeds without complications can take around 12 months before registration is granted.
The Madrid Protocol is an essential instrument in trade mark protection throughout the world. It is an international registration system administered by WIPO (the World Intellectual Property Organization) which is based in Geneva, Switzerland.