Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 4 months, if no objections or oppositions arise.
Does having a registered trademark in the United Kingdom afford me any right?
Yes. You have to register first your trademark before you can obtain any right.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
Yes. You must be actually using the mark or you must intend to use the mark in order to apply for registration.
What are the grounds for a Trademark Application to be opposed?
Your application may be opposed on the grounds of: proprietary rights, breach of copyright, marks proven to be non-registrable, application in bad faith, and any mark that go against the UK law.
Who can contest my trademark registration?
Anyone can object to your registration.
Is it possible to cancel a registration?
Yes. The following are grounds for cancellation of a registered mark:
- Mark is proven to be unregistrable (refer to list of non-registrable marks)
- Proprietary rights
- Breach of copyright
- Violation of rights of registered and unregistered designs
- Violation of rights under Article 6septies, Article 6bis and Article 6ter of the Paris Convention
- Bad faith
Are there any rights established by having a registered trademark?
Yes. As owner of a registered mark, you will enjoy the following rights:
- Exclusive rights to use and benefit from the mark
- Right to oppose and request the cancellation of conflicting applications
- Right to formally appeal to court against third parties that use identical mark
- Right to obtain damages from third parties that are guilty of infringement
- Right to give license to other businesses to use the mark
- Right to request for the confiscation of counterfeit goods from customs authorities
How long is the opposition period?
The opposition period starts on the date the application is published in the Trade Marks Journal and it will end two months after the date of that publication. This time period can be extended by another month when a request for extension is granted.
Is the United Kingdom a member of the Madrid System?
Yes. The UK is a member of the international treaty, Madrid Protocol.
Do I need to present periodic statement of use?
No, it is not required to present periodic statements of use.
When should I renew my trademark?
Renewal of trademark must be done every 10 years.
What will be the renewal date of my trademark?
Renew your trademark 10 years from the date you filed your application.
Is there any documentation that should be presented when renewing a trademark?
No. Documentation is not necessary for the renewal of registered trademarks.
If my trademark expires, do I have a grace period?
When your trademark expires, you still have 6 months to renew it.
If I register my trademark in the United Kingdom, do I have protection in other territories?
When you register your trademark in the UK, it will be protected in Wales, England, Scotland, Northern Ireland, the Isle of Man and the Falkland Islands.
Do I need to sign a Power of Attorney?
No. It is not a filing requirement and will not be needed during prosecution.
Are there any benefits from a pre-filing use of the trademark?
Yes. There are a number of benefits from pre-filing use:
- Show distinctiveness of mark
- Dismiss oppositions based on non-distinctiveness
- Invalidate a similar registered mark if use is earlier than the date of its application
- Establish reputation and obtain better protection
Will there be problems in case I don’t use my trademark after registration?
Yes. Not using your trademark makes it vulnerable to cancellation or revocation.
What are the types of trademark that can be registered in the United Kingdom?
Registrable marks are those that can be interpreted graphically and can make the business distinct from its competitors: words, slogans, names, devices, sounds, scents, holograms, motions, touch, taste, 3-dimensional shapes and colors.
What are the phases of application after a trademark has been filed in the United Kingdom?
The application will go through 3 phases:
Examination – The application must comply with respect to formalities, classification, descriptiveness, distinctiveness and clarity.
Publication – The filing details will be posted online including the mark itself, goods/services involved, applicant’s name and address, date and number of application, information about priority claim, and the trademark’s representation.
Registration – After the prosecution, and if no opposition was filed, the issuance of registration will come next.
What type of trademark is non-registrable?
This jurisdiction prohibits the registration of the following:
- Marks that go against standards of moral or marks that interfere with public order
- Words or terms that have a broad meaning
- Marks that represent the Royal Family
- Applications made in bad faith
- Words that are illegal in the UK and the EU
- Marks that does not show distinctiveness
- Marks that are deceptive
- Unauthorized use of flags/symbols/names of international organization and states/nations
- Marks that serve as names of geographic location
Does the United Kingdom use the "Nice Classification" system?
Yes. United Kingdom uses the Nice Classification system.
Is European Union Trademark valid in United Kingdom?
No. The withdrawal of the United Kingdom from the European Union due to Brexit became effective as of February 1, 2020, although there was a transitional period until December 31, 2020. The trademarks that were registered in the European Union up to that date were created in the United Kingdom to maintain their protection. However, those that were not granted registration by that date need to be refiled in the United Kingdom. Applicants have until September 30, 2021 to refile their trademarks in the United Kingdom in order to maintain the filing date of the European Union application.
Is there any possibility to claim priority in the United Kingdom?
Yes. You may claim priority in this jurisdiction when you meet the following requirements:
- The date of the application in your home country does not exceed 6 months from the date of application in this jurisdiction
- Your home country must be a signatory of the Paris Convention
What do I need to do to satisfy the use requirement?
This jurisdiction requires that you use your registered trademark within 5 years from the date the registration process was completed. This is calculated from the date your registration was published in the Trade Marks Journal. Use must take place in this jurisdiction and number of use can be minimal.
Once my trademark has been registered, for how many years will be valid?
Validity of registered trademarks in the UK lasts for 10 years starting on the date of application.
What will be the renewal date of my trademark?
Renew your trademark 10 years from the date you filed your application.
Is it legal to use my trademark even if it is not yet registered?
Yes. You can legally use your mark even if it’s not yet registered.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.