The general process for registering a UK trade mark

Written by Shamina Knights | September 5, 2022

Trade Marks

Trade marks are hugely important for your business. They provide a monopoly right to use your mark and prevent other companies from using the same or similar mark for the same or similar goods and services.

The process for filing a trade mark in the UK consists generally of the following steps:

Stage one = search.

This is a crucial stage that many regretfully skip out on. Conducting a trade mark search before filing helps to identify any identical or highly similar blocking marks. We run preliminary clearance searches without charge and can advise on the risk of successfully defending an opposition if one were to be raised.

We can also provide further comprehensive searches and will always work on fixed fees where these are requested.

Stage two = filing.

The second stage consists of the official filing of the application. Once the application is filed there isn’t much wiggle room to amend the filing which is why it’s important to ensure all of the details are correct from the outset.

To file a UK trade mark application we need:

  1. Your trade mark name and/or a picture of your logo if you want to register a logo;
  2. Yours (or your company’s) name and address; and
  3. A list of the goods and/or services in relation to your application.

Stage three = the examination stage.

Once the application is filed, the UK Intellectual Property Office (UKIPO) will allocate an examiner who will look at whether the mark is capable of being a registered trade mark. The examination will be based on the following grounds:

  1. Relative grounds: The examiner will search for similar earlier filings. Note: they won’t refuse an application if they discover similar marks however, they will: notify you of the earlier marks, and will also alert the earlier mark owners about your application if you continue to progress to stage four;
  2. Absolute grounds: The examiner will determine whether the trade mark is descriptive or non-distinctive. The examiner does have the right to refuse an application or request that you make amendments to it if an absolute ground for refusal is present.

Stage four = the publication stage.

Once the examination stage is complete and the UKIPO either (i) doesn’t highlight any issues with the marks or, (ii) any highlighted issues are overcome, then the mark will go on to be published in the Online Trade Mark Journal. Any third party will have a 2-month period whereby they can file an opposition against the application based on prior registered or unregistered (see articles on Passing Off) rights.

Stage five = registration.

If the publication stage goes without a hitch, the UKIPO will notify the mark owner (or us if we were to be down as your UK representative) of the end of the publication period. The UKIPO will issue an electronic registration certificate confirming the registration details and dates.

At Briffa, we can help you at all stages of the trade mark process. If you would like to discuss the protection of your brand in the UK (or anywhere else in the world!) then please drop us an email at info@briffa.com and we’d be happy to help.

Written by Shamina Knights, Solicitor

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