Trademark FAQ

What can I register as a trademark?

There are three types of trademarks:

(i) Word Only – the exact word (or combination of words)

(ii) Logo / device – this can be any pictorial design (e.g. the Ralph Lauren polo-horse or the Microsoft quadrant flag) and even, in certain circumstances, a sound

(iii) Word /Logo combination.

Where should I register my trademark?

If you have a business in the UK or Republic of Ireland that sells goods and services to both a UK and Republic of Ireland market you should file a trademark application (in the registration classes that correspond to your business) at the Trademark Registry with the UK Intellectual Property Office and also with the Irish Patent Office. If your business only markets its goods and services in one of those territories then a single application may be sufficient protection (but bear in mind the possibility of business expansion).

If you want to prevent another business (who could be a competitor) from using your name in any other part of the EU you should consider a Community Trademark (CTM) application. One CTM application triggers separate applications in each member state of the EU. What this means is that you will be protected if you sell products or expand your business into the EU countries. You should also consider protecting your trademarks in your principal markets overseas (i.e. beyond the EU) subject of course to cost considerations. It is possible to cover up to 172 countries by filing one application under the Madrid Protocol.

When will a trademark not be granted trademark protection?

A trademark needs to have distinctive character. Therefore, if your trademark is purely descriptive of the goods or services to which it relates, it will not be granted protection. For example if you are a butcher trading under the name “Quality Meats Butchers” then these words would fail for being too descriptive. However, if the business was trading under the name “Pyramid Quality Meats Butcher”, the word “Pyramid” would probably provide sufficient distinctiveness to an otherwise descriptive statement to enable protection (assuming, of course, that the mark was not the same as or confusingly similar to any other marks for similar goods or services).

When is a mark deemed to be “too similar” to another mark to allow protection?

Trademark applications will be checked to see whether the intended mark is (i) either the same as an existing mark (i.e. an exact match); or (ii) visually similar to another mark (i.e. where there are sufficient similarities between this mark and another mark to give rise to possible consumer confusion); or (iii) phonetic similarities (i.e. where the sound of the intended mark is similar to the sound of another mark that might give rise to possible consumer confusion); or (iv) conceptual similarities (i.e. what is the mark’s meaning).

Why should I bother to register a trademark?

Ask yourself this simple question. Can you afford to lose the name of your company and product names? If not, then why take the risk that you might have to.

How long does it take to register a trademark in the UK?

Typically, an application which is processed without complications will take between 6 to 9 months before registration is granted.

How long does it take to register a trademark as a EU Community trademark?

Typically, an application which is processed without complications will take between 12 to 18 months before registration is granted.

Does a registration in UK offer worldwide protection?

No. A trademark registration is always limited to the territory for which the registration was granted.

I have a word and a logo which I want to register. Do I have to apply for two registrations?

If you ever want to use the word or logo separately from each other, then yes. The question you will need to ask yourself is “how do I intend to use my marks?” Whatever you use on your letterhead or website then this is what you should file as a trademark in your applications.

When can I use the “TM”or “R”designations with my trademarks?

You can use “TM” any time. You can only use the “R” designation if your trademark is registered. Be aware that use of the "R” designation with an unregistered trademark in the UK is against the law.

My company is registered with Companies House. Does this protect my company name as a trademark?

No.

My domain name is registered with a domain name registrar. Does this protect my domain name as a trademark?

No.

If I have registered my trademark for one class of goods or services can someone else register it for a different class of goods or services?

In theory, yes. That is why, when you file your application, you should consider filing as many different classes as are necessary to cover the different products or services you currently provide (and also those which you intend to provide). If you are a manufacturer of various different products you should make sure that all of your products are protected by claiming protection against the appropriate classes.

How long does a UK trademark registration last?

It lasts 10 years and can be renewed for further period of 10 years. If you fail to pay your renewal fee at the next renewal date, your trademark registration will expire. However, you are entitled to an additional six months following the renewal date in which to renew your registration, although you will be required to pay a fee for late renewal. Following this six-month period, you are then allowed a further six-month period, i.e. a total of 12 months after the renewal date, in which you may apply to the Trademark Registry in order to restore your mark.

Can I sell or licence use of my registered trademark?

Yes you can. A trademark constitutes intellectual property (IP) and can be sold or licensed in much the same way as other property you may own. We can provide advice on all matters relating to IP sales, acquisition or licensing.

Once I have registered my trademark, can I increase the classes of goods or services at a later date to match my future business needs?

No. You must make sure your application provides sufficient cover for potential future goods or services. It will not be possible to extend your registration to include additional goods or services after you have applied. However, you can still make a fresh application to cover additional goods or services.

Can I claim a refund of the application fees if my application is rejected?

No. Our fees and the registry fees cover the cost of the processing and the examination of your trademark application.

Visit us for your free trademark search.

What is a Trademark?

A trademark is a sign which enables you to distinguish your goods and services from those of other traders for the purposes of promotion. A sign can include words, logos, drawings (pictures) and even a sound or a combination of these things.

Trademarks differ from copyright (which protects artistic or creative works) or patents (which protects inventions). In contrast to the protection offered by copyright and patents, your trademark registration can last as long as you wish, subject to your renewing it every 10 years.

A trademark can often be one of the most valuable assets your business has, particularly where you trade on a reputation or where your goods are marketed under a particular brand.

There are two types of trademarks:

1. An Unregistered Trademark

You can devise and use a trademark without registering it. You can even claim certain rights of ownership over your unregistered trademark but in the event someone else began to use your mark without your permission you would have a potential problem in protecting your ownership.

This is because one of the the difficulties faced by you as an owner of an unregistered mark is that to prevent unauthorised use you would first need to establish that your mark had been used by your organisation as a bona fide trading entity and that it had accrued sufficient goodwill.

2. A Registered Trademark

As a holder of a registered trademark you don't need to establish any of that to protect your mark. The principal advantages of holding a registered trademark are that:

• you will have the right to take legal action against others who use your trademark (or a confusingly similar mark) in relation to the same or similar goods and services as your trademark without your permission
• you can protect your trademark before your product is even put on the market (although you risk having the mark revoked if it is not used for five years);
• there is a presumption that the registration is valid and therefore it offers you greater protection against a claim of trademark infringement (although you should note that the validity is not guaranteed because the validity of a trademark is always open to challenge); and
• registration reduces the possibility of disputes as it confers on the owner increased certainty, because the registration determines the extent of the goods or services to be protected by that particular trademark.

For more information on trademarks or to speak to a trademark specialist, visit our site.