Filing a trade mark is an essential first step for any business owner who wishes to protect the distinctiveness of their brand. With a registered trade mark, one is able to rely on the law for straightforward protection, unlike unregistered trade marks, which require complex processes for defending.
Required criteria for a UK trade mark
In order to successfully register a trade mark in the UK, it is crucial to understand the required criteria:
1. Eligibility of the trade mark
The first step is to ensure that your trade mark is something that can be represented graphically and distinguishes the goods and/or services of your business.
- It can be a name, a logo, a slogan, or even a colour, pattern, sound, smell or taste, amongst many other identifiers.
2. Distinctiveness
The trade mark must be distinctive. It cannot closely resemble any other existing marks, as this could result in a likelihood of confusion. The more unique it is, the easier it is to trade mark in the UK and protect.
- Think highly creative names like “Google.”
3. Descriptiveness
The trade mark can not be descriptive in nature. It must not simply describe common characteristics related to the goods or services of the business.
- For example, a company that sells apples cannot trade mark “Apple Co.” However, “Apple Inc.” was able to use it due to their use of the term in a non-descriptive way, as they are a tech company.
4. Actual or Intended Use
The applicant must be currently using the trade mark in good faith or genuinely intends to use it for the business purposes specified within 5 years of registration. This is a critical aspect of trade mark applications in the UK.
5. Lawful
Lastly, a trade mark that does not comply with legal, ethical and societal standards, cannot be considered for registration.
A UK trade mark must not:
- Promote illegal activities, such as the sale of illegal drugs
- Be offensive, immoral, or vulgar
- Be deceptive to the public
- Be contrary to public policy
- Include prohibited symbols, including but not limited to, national flags and protected emblems
Beyond the key requirements
Once the foundational requirements for registrability are satisfied, applicants must navigate the procedural steps involved in filing and securing a UK trade mark.
These include conducting a UK trade mark search, understanding the Nice Classification system, correctly filing the application, responding to examination and potential objections, and anticipating the possibility of opposition.
Further considerations such as infringement, international expansion, and complementary intellectual property rights also form part of a complete trade mark strategy.
Conducting a UK trade mark search
It is crucial to carry out a comprehensive search of the UK trade mark registry on the UKIPO’s official online database before applying for a trade mark.
An extensive search will reveal other similar trade marks that are currently registered or are under application. This not only helps the applicant to be aware of the possible objections, but also helps in avoiding many oppositions after publication.
The Nice Classification System: Explained
Trade marks are registered in particular classes in accordance with the Nice Classification, which is an international system that divides goods and services into 45 classes (1-34 for goods and 35-45 for services).
The selection of the proper class or classes is a strategic decision. For example:
Class 25: Clothing
Class 41: Education and training services
Errors in classification may lead to protection being obtained where it is not required or, on the other hand, fail to cover important aspects of the company’s operations.
It is also possible to claim protection simultaneously for several classes of products and services, although this will lead to additional expenses. However, it is recommended that applicants think not only about their present operations, but also about near future developments in order to ensure adequate protection.
Filing the application
Once the classification is confirmed, the applicant submits details to the UKIPO. This includes:
- A clear representation of the mark
- The selected class(es) and corresponding goods/services
- Name and address of the applicant
Finally, the applicant will be asked to pay their dues before submitting the application.
Examination and objections
The UKIPO examines applications for compliance with both absolute and relative grounds.
- Absolute grounds include descriptiveness, lack of distinctiveness, and non-compliance with public policy or morality.
- Relative grounds concern earlier marks that are identical or similar.
If objections are raised, applicants may respond by making representations or amending the application.
To learn more about the opposition process, read our guide on understanding trade mark opposition.
Publication and opposition
Provided that no objections are raised or after they have been addressed, the application is published in the UK Trade Marks Journal. At this point, third parties have two months to oppose registration.
Oppositions are typical of holders of earlier rights and are resolved either in the form of written submissions, negotiations or a formal hearing before the UKIPO Tribunal.
If registration is denied
Where the application fails due to unresolved objections or successful opposition, the trade mark will not be registered. The applicant may:
- File a fresh application with modifications.
- Request a hearing to challenge the decision.
- Appeal to the Appointed Person or the High Court in certain cases.
Trade mark infringement
Once registered, the mark is protected under the Trade Marks Act 1994. Infringement occurs where:
- A third party uses an identical or confusingly similar sign.
- The use is in the course of trade.
- It affects the origin-indicating function of the mark.
Remedies include injunctions, damages, and destruction of infringing goods.
(For more, see: Trade mark infringement: Detailed guide for beginners)
International trade mark protection
A UK trade mark can serve as a basis for international protection through the Madrid Protocol, allowing streamlined registration in multiple jurisdictions.
(See also: Secure the international trademark — before it’s too late)
Related IP rights: Patents and design registrations
While trade marks protect brand identifiers, businesses may also consider patent protection for inventions, or registered designs for the appearance of products. These IP rights are distinct but often complementary.
(Explore further: Trade Marks, Copyright, and Design Rights (UK))
Seek legal assistance for UK trade mark registrations
Without legal assistance, you run a higher risk of finding out that the trade mark application not cover all of the key requirements necessary, making the trade mark subject to opposition, delaying or preventing successful registration.
A UK trade mark lawyer will help you by ensuring that your trade mark meets all criteria and conducting proper due diligence beforehand. This will ensure legal protection and confidently establish your brand identity.
For expert guidance in registering a UK trade mark, contact Freeman Harris Solicitors.
