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Trademark Registration

Trademark Registration

Registering your trademark gives you exclusive rights and brings many benefits, including: 

• Taking legal action against anyone using your brand without permission 

• Displaying the ® symbol to show ownership and warning against unauthorised use

• Selling or licensing your brand for extra income. 

Trademarks can cover words, sounds, logos, and colors, but there are rules. Offensive, misleading, or too common trademarks won't be accepted.

A trademark lasts 10 years and needs to be renewed regularly. To register, you provide details to the Intellectual Property Office (IPO).

Lawhive's commercial lawyers can help you through the process, making sure everything is done correctly.

Contact us today for a free case evaluation and free fixed-fee quote.

• What can you register a trademark for?

• What do you need to apply for a trademark?

• How do I register a trademark?

• What do you need for a trademark application?

• How much does it cost to register a trademark in the UK? 

• What happens after I apply for trademark registration? 

• Do I need a solicitor to register a trademark? 

• What happens if my trademark registration receives an objection?

• On what grounds can a trademark registration be refused?

• What changes to a trademark should you report?

• Get expert advice about registering a trademark

What can you register a trademark for? 

Your trademark can include any of the following elements:

• Words

• Sounds

• Logos

• Colours.

However, there are certain restrictions including:

• Offensive content, such as swear words or explicit imagery, cannot be registered.

• Descriptive terms for the goods or services

• Misleading terms

• Common or non-distinctive phrases

• Generic shapes associated with your business

• Usage of national flags without permission or official emblems/hallmarks is prohibited.

• Your trademark cannot be identical or similar to another trademark selling the same goods or services.

What do you need to apply for a trademark? 

Before you apply for a trademark, you need to:

Choose Categories and Terms

A class represents a broad category of goods or services, while a term is more specific.

You must decide which category of goods or services your trademark will cover. These categories are known as "classes." Additionally, you need to specify the exact goods or services your trademark will represent, known as "terms."

Your trademark will only be protected in the classes and terms you choose. While you can choose multiple classes or terms, you should choose only those relevant to your business.

Choosing too many terms increases the risk of similarity with other trademarks. Furthermore, you shouldn’t select terms for goods or services you don’t plan to sell in the next 5 years. Otherwise, your trademark may face challenges.

Once you submit your application, you can’t add more terms. So choose wisely!

Check for Similar Trademarks

You should also check if anyone else has registered a similar trademark to make sure your trademark is unique and doesn't infringe on existing rights.

You can do this by either: 

1. Pay £100 for a Right Start application where the Intellectual Property Office will search for similar trademarks on your behalf before you go ahead and pay the full fee.

2. Search the trade marks database.

If you discover a trademark similar to yours, you should get professional advice from a trademark lawyer to understand your options before you proceed.

How do I register a trademark?

To register a trademark, you need to:

• Submit information about your trademark and the goods or services it will be used for to the IPO either online or by post.

• The IPO will review your application to ensure that your trademark is not identical or too similar to existing trademarks.

• If your application meets the criteria, the details will be published in the journal for public review. This allows others to oppose your trademark if they believe it infringes on theirs.

• If there are no issues, your trademark will typically be granted within 3 to 4 months from the date of application.

If any issues arise during the review process, the IPO will tell you. You'll need to resolve these issues before your trademark can be registered.

Once you submit your application, it will be publicly available online. This is important to know as anyone can access this and could take certain actions at this stage. For example, if you haven’t already purchased the website domain for your brand name, they might do this.

Also, when you register a trademark in the UK, it provides protection only in the UK and the Isle of Man. Different processes exist to register a trademark abroad.

What do you need for a trademark application?

When applying to register for a trademark, you’ll need to provide: 

• Trademark details including words, slogans, or illustrations you want to register

• Details of the intended owner of the trademark 

• The types of goods and services you intend to use your trademark for categorised into classes and terms. 

How much does it cost to register a trademark in the UK? 

The cost of registering a trademark starts at £170; it depends on the application type and the number of classes selected.

If you have multiple versions of your trademark (e.g., different logo colours), a series application may be suitable as it covers up to 6 variations.

If you want to be sure your application meets registration rules before paying the full fee, a Right Start application may be the better choice. 

Cost of a standard application 

Registering a single trademark in one class costs £170. For each additional class, it's £50.

If you're applying for a series, the fee includes the first 2 versions of the trademark. Each extra version costs £50, up to a maximum of 6.

Cost of a Right Start Application 

For a Right Start application, you pay £100 plus £25 for each additional class to check if your application meets the registration rules.

You'll receive a report indicating whether your application meets the requirements.

To proceed with your application if it meets the rules, or to challenge the decision if it doesn't, you'll need to pay another £100 (plus £25 for each additional class).

You have 28 days to decide whether to continue your application, challenge the decision, or discuss it further.

Cost of a paper application 

If you can't apply online, you should fill out a paper application form and apply by post.

The cost is £200 for one class, with an additional £50 for each extra class.

What happens after I apply for trademark registration? 

After you submit your trademark application, you'll receive a report from the Intellectual Property Office within 2-3 weeks. This report lists any issues that could delay your trademark approval.

If there are no problems, your application will be published for 2 months in the trade marks journal, during which anyone can object.

If there are no objections, your trademark will be officially registered about 10 weeks later. You'll get a certificate confirming this, which lasts for 10 years. After that, you'll need to renew your trademark.

Do I need a solicitor to register a trademark? 

While you don’t need a solicitor to register a trademark, given the complexity of the process, seeking help from a solicitor with expertise in trademarks and intellectual property law is advisable.

Errors in your application can lead to unsuccessful trademark registration.

Further, if another trademark owner objects to your application, a solicitor can advise on the most cost-effective solutions, which might involve alternative dispute resolution methods instead of taking the matter to court.

What happens if my trademark registration receives an objection?

If someone opposes your application, the IPO will notify you. You won’t be able to register your trademark until the issue is resolved. 

To do this you can discuss the objection with the other party and come to an agreement or you can defend your application legally. Alternatively, you may choose to withdraw your application. 

If you wish to defend an objection to your trademark application, our trademark solicitors can support you for fixed fees. Get in touch for a free case evaluation and fixed-fee quote. 

On what grounds can a trademark registration be refused? 

There are several grounds for refusal of registration of a trademark. These include: 

1. Absolute grounds

2. Specially protected emblems 

3. Relative grounds for refusal 

4. Earlier trade mark

5. Relative grounds in opposition proceedings in case of non-use 

6. Relative grounds in case of honest concurrent use

7. Power to require that relative grounds be raised in opposition proceedings 

Absolute grounds for refusal 

Certain signs can’t be registered as trademarks at all including: 

• Signs that don’t meet specific requirements

• Trademarks lacking distinctive character 

• Those consisting of signs indicating characteristics like quality or geographical origin 

• Trademarks exclusively made up of shapes or characteristics inherent to the goods, necessary for technical results, or giving substantial value to the goods

• Trademarks contrary to public policy or morality

• If the use of the trademark is prohibited by law or international agreements

• Applications made in bad faith. 

For example, Alcohol Research UK applied for the trademark "DRY JANUARY," but faced opposition from Big Drop Brewing Company Limited.

The dispute revolved around the term's lack of distinctiveness, a direct reference to abstaining from alcohol in January, and its descriptive nature. The opponent argued that prior use by others, including themselves, makes the term unsuitable for trademark protection. They also claim potential confusion with their prior use of a similar term.

Big Drop Brewing Company Limited was successful in their opposition and Alcohol UK was ordered to pay costs £1850 to cover some of the legal costs involved in opposing the trademark registration. 

Specially protected emblems 

Certain symbols or representations can’t be registered as trademarks without consent, including: 

• Royal emblems unless consent is obtained from the appropriate authority

• National flags of specific regions, if their use would mislead or offend

• Trademarks containing national emblems of Convention countries or emblems of certain international organisations 

• Trademarks containing personal coats of arms or similar insignia without consent. 

Relative grounds for refusal 

A trademark can’t be registered if it: 

• Is identical to an earlier trademark and is used for the same goods or services

• Is similar to an earlier trademark and is used for similar or related goods or services, causing confusion

• Is identical or similar to an earlier trademark with a reputation in the UK, and using the new trademark would unfairly benefit from or harm the reputation of the earlier trade mark.

• Its use in the UK could infringe on the rights of others, like unregistered trademarks protected by common law or earlier rights like copyrights or industrial property rights.

In these circumstances, the owner of the earlier trademark or rights may consent to the trademark registration or oppose it.

If there are reasons to refuse a trademark application for only some of the goods or services it covers, the application will be rejected only for those specific goods or services. 

For example, Soni Air Limited applied for a trademark in the UK, which was opposed by Sony Group Corporation. Sony claimed similarities between their registered mark and Soni Air’s application could lead to confusion due to similar services. Sony also asserted that Soni Air’s mark could unfairly benefit from or harm Sony’s reputation. 

Sony was successful in its opposition and the application was refused. Soni Air was ordered to pay a £1,650 contribution towards Sony's costs. 

Earlier trade mark

An "earlier trade mark" is a trademark that was registered or applied for before another trademark.

It includes: 

• A registered trade mark or international trade mark (UK) with an earlier date of application than the trade mark in question

• A comparable trade mark (EU) or a trade mark registered under specific provisions, claiming seniority from an earlier trade mark even if surrendered or expired.

• A trade mark entitled to protection under the Paris Convention or the WTO agreement as a well-known trademark

• References to an earlier trade mark include pending applications that, if registered, would become earlier trade marks 

• The date of application for pending applications is determined according to specific provisions. 

For example, Goya International Ltd. applied for a trademark in the UK, which was partially opposed by Goya Foods, Inc based on the potential for confusion with their earlier marks.

The opposition against the trademark application was successful for certain goods and services, leading to the refusal of the application in those categories.

However, the decision stated that the application may proceed to registration for other goods and services not directed by the opposition. A supplementary decision will be issued once the registrability of the First Earlier Mark is confirmed. 

Relative grounds in opposition proceedings in case of non-use 

If someone applies for a new trade mark but it clashes with an earlier one, the new application might be rejected. However, this can only happen if the earlier trade mark has been genuinely used in the UK for similar goods or services within the last five years.

Alternatively, it might still be rejected if the earlier trade mark hasn’t been used but there’s good reason for it. 

Using a trade mark also includes slightly changing its form without losing its distinctiveness. It’s also considered use if the trade mark is put on goods for export from the UK. 

Relative grounds in case of honest concurrent use

If there's an earlier trademark or right that could cause issues for a new trademark application, but the applicant can prove they've been using their trademark honestly alongside the earlier one, the application might still go through.

However, this only happens if the owner of the earlier trademark or right doesn't object during opposition proceedings.

Power to require that relative grounds be raised in opposition proceedings 

The Secretary of State can order that a trademark can't be rejected for certain reasons unless the owner of an earlier trademark objects to opposition proceedings.

The order can also include rules about how trademark searches are conducted and who can apply to invalidate a trademark based on these relative grounds.

The order might change some existing procedures, like stopping the requirement for trademark searches in certain cases or limiting who can apply to invalidate a trademark.

What changes to a trademark should you report? 

If you hold a trademark, you should report changes including: 

• Changes to your details

• If you decide to relinquish your rights to your trademark

• If you plan to designate a representative or agent to manage your trademark affairs. 

You can report changes through the relevant trademark office website or by submitting the necessary forms and documentation directly to the office. 

Failing to report changes could lead to confusion or potential issues with your trademark registration. 

Get expert advice about registering a trademark

At Lawhive, our network of experienced trademark registration lawyers is here to help whether you’re just starting the process of registering a trademark or facing challenges with existing applications. 

We offer fixed-fee services to ensure transparency and peace of mind throughout the process. Get in touch today for a free case evaluation and quote to take the first steps in safeguarding your brand with the support of Lawhive’s network of trusted legal professionals.