Intellectual Property and Technology

Thinking of ... Registering a Trade Mark?

What are the advantages of a UK Trade Mark registration?

You will have the right to the exclusive use of the mark in connection with the goods and services for which it is registered.

Your rights will be enforceable throughout the UK notwithstanding that your use of the mark may principally have been in Scotland.

You will find that it is easier to licence others to use a mark which is registered (as opposed to one which is unregistered) and to raise proceedings for trade mark infringement against third parties using an identical or similar mark to yours (provided that their use is in connection with identical or similar goods or services).

You may find it easier to put a stop to the use of your trade mark as part of the domain name or operation of a website which may be critical or derogatory of your business activities.

Once registered - and provided it is renewed every 10 years (the costs are relatively modest) a trade mark can last forever and, in this sense, it is unique among intellectual property rights.

What can I register?

You can apply to register any sign which distinguishes your goods and services from those of another trader. Your Trade Mark can include words, logos, pictures, or a combination of these. A Trade Mark is really a marketing tool so that customers can recognise your products and make the connection between them and your business. To be registrable a mark must:

be distinctive for the goods/services for which a registration is sought, and
not be deceptive, or contrary to law or morality, and
not be identical or similar to any earlier marks for the same or similar goods/services.

Where should I register?

This can usually be answered by the question: where will the proposed mark be used? If almost exclusively within the UK then a UK trademark registration should suffice. It will also be cheaper and quicker than seeking wider protection.

If use in a number of European countries or even internationally is envisaged then a European or an International application may be desirable. These will take a little longer and cost more and consideration should be given to which countries the mark will be used in.

What goods/services should be covered by the registration?

For a UK Trade Mark registration there are 45 trade/service mark classes in total. You should compile a list of the scope of your activities which require to be covered by the registration.

How much will a registration cost?

The initial registration dues payable to the Patent Office for a UK Trade Mark (in addition to a Solicitors or a Trade Marks Agent’s time preparing the application, if required) are £200.00 to apply to register a trade mark in one class of goods or services, and £50.00 for each extra class. That could vary if, on filing, the Trade Marks Registry raise serious objections to the applications or, later on, if any oppositions are filed by third parties. European and International applications cost more.

Where can I find out more?

For more general information visit the Patent Office website which includes the Trade Mark registry at www.ipo.gov.uk. For further advice ask any of our team.