Trade Mark Registrations: Everything You Need To Know

Written by Anastasia Troshkova | January 12, 2023

Trade Marks

What is trade mark registration?

Trade mark registration is the process by which you can gain ownership of a trade mark, which is a sign used to distinguish the goods and services of one business from those of another, typically a word or a logo. This trade mark protects the sign and acts as a ‘badge of origin’ in relation to the goods and/or services for which it is registered.

Owning a trade mark gives you rights in that mark, which provides benefits such as enabling you to license out your brand, or stop others from using your brand through enforcement of your rights.

A trade mark can protect a vast range of things, including shapes of products or packaging, motions, smells and sounds.

How does it work?

A trade mark gives you rights in a particular territory in relation to specific goods and services covered by the trade mark registration. This means that for comprehensive protection, a trade mark should be registered for each territory you are going to use the mark in, and for all relevant goods and/or services that your mark is used for or will be used for in the future.

For example, if you are using a mark in the UK, US and China, you would need to make separate applications for each of these territories; a UK trade mark will not give you protection anywhere other than the UK.

There are a couple of exceptions to the territoriality of trade marks, where a trade mark covers a number of territories. For example, the EU trade mark will give you protection in all 27 EU Member States.

A trade mark covers goods and services which are selected with reference to the Nice Classification. There are 45 different trade mark classes in the Nice Classification, the first 34 of which relate to goods, and the remaining relate to services. For example, clothing falls under class 25, vehicles fall under class 12, toy vehicles under class 28 and legal services under class 45.

For more information on trade mark classes, see: What are trade mark classes?

How do I register a trade mark in the UK?

What is the process?

In the UK and EU, once you file your application, it is examined by an examiner who determines whether it complies with the requirements for registrability and considers the absolute grounds for refusal (see below). If the examiner finds that your mark passes those grounds, it is then published, i.e. advertised on the Intellectual Property Office’s website. This is the point at which third parties may oppose your trade mark based on the relative grounds for refusal (see below).

Third parties will want to oppose your application and enforce their rights if they believe they have a similar or identical earlier mark for which they have registered or unregistered rights.

If your application does not receive any opposition, then your trade mark will proceed to registration.

How long does it take?

In our experience, on average, and assuming there are no issues, we find it takes at least 4 months to register a trade mark in the UK, and at least 6 months for an EU trade mark.

How much does it cost?

Fees vary based on the number of territories and classes you wish to register your trade mark for. Please get in touch for a quote.

Can I just do it myself?

Technically you can, however, we would always advise against it. The benefits of instructing solicitors, such as Briffa, to file your trade mark application(s) for you include:

  1. We can perform clearance searches for you prior to registration. These are important because if your mark is similar to one that someone else already owns, they may oppose your application. These searches are the best way to reduce the chances of your registration being opposed. For more information on clearance searches, see: Why complete clearance checks before applying for a trade mark?
  2. We can advise you on the registrability of your mark. This entails assessing whether your registration is likely to be refused by the Intellectual Property Office, and why. We can also advise on which marks are less likely to be refused and help you form your trade mark strategy.
  3. We can advise on how best to protect your brand, ensuring that your registration covers everything you need, including things you may not have thought of. Briffa can advise on how to future-proof your brand, and which trade mark classes would be beneficial for your business.
  4. We would make sure your classes and specifications are all correct and draft a bespoke application. Once an application is filed, you cannot then go back and add more classes; you will need to start a whole new application. This of course increases costs, both in time and money.
  5. We can deal with any objections from the registry or a third party.

For more information on the trade mark registration process, see: The general process for registering a UK trade mark

Do I need to register a trade mark abroad?

As a general rule, wherever you are using a mark, you should file for registration in that place. You should also file for registration anywhere you are planning to use a mark in the future. This ensures you have comprehensive protection for your mark and enables you to enforce your rights in any territory for which you have registration. If you only obtain trade mark registration for example in the UK, you will not be protected anywhere else in the world.

Careful consideration should be given as to which territories should be filed for. Protection will only take effect in those jurisdictions in which they are registered. For example, the mark should be registered in the jurisdiction where goods are manufactured, as well as where they are marketed or sold.

To learn more, check out our post about how to register a trademark overseas.

Why might a trade mark application be refused?

Absolute grounds

To register a trade mark, there are certain criteria your mark needs to satisfy. There are grounds for refusal of your application which are referred to as ‘absolute grounds’. If your mark falls foul of one of these grounds, as the name suggests, your trade mark application will be refused.

  • Grounds where registration will be refused are:
  • Lack of distinctive character, i.e., the mark is not distinctive enough to distinguish the goods or services from other similar goods or services;
  • If the mark is descriptive of the goods or services;
  • Where the mark has become customary for describing that product, for example, ‘hoover’ for vacuum cleaners; or
  • If a mark has been applied for in bad faith.

For more information on how to select a mark which will not be refused registration, see: How to choose a trade mark

Relative grounds

There are also grounds for refusal known as ‘relative grounds’.

Grounds where registration may be refused include:

  • If the mark is identical to an earlier mark and is to be registered in relation to identical goods or services;
  • If the mark is identical or similar to an earlier mark, and is to be registered in relation to similar or identical goods or services and there exists a likelihood of confusion on the part of the public; or
  • If the mark is identical or similar to an earlier trade mark with a reputation in the UK, and use of the mark would take unfair advantage of, or be detrimental to the distinctiveness or repute of, the earlier mark.

Can a trade mark application be opposed?

Yes, a trade mark application can be opposed. In the UK, once someone files a trade mark application, it is examined by the Intellectual Property Office, and then published in the Trade Mark Journal. There is then a two month time period called the opposition period, where anyone can file an opposition to the trade mark application. This period may be extended by one month by filing a notice of threatened opposition.

For more information on oppositions, see: The Complete Guide to Trade Mark Oppositions

Can a trade mark be opposed or challenged after registration?

Once the opposition period has passed without an opposition, the application will proceed to registration.

After registration, it is possible that someone may initiate an invalidity action or a revocation action. This is, however, more costly and complex than filing an opposition.

A trade mark may be invalidated if it should never have been registered in the first place, so one or more of the absolute or relative grounds must apply. For example, this will apply where the mark has been applied for in bad faith.

A trade mark may be revoked if there has not been genuine use of the trade mark for the goods or services for which it is registered 5 years after registration, and there are no proper reasons for not using the mark, or if use has been suspended for an uninterrupted period of 5 years and there are no proper reasons for non-use, or if it has become generic.

For more information on how a trade mark may be lost, see: How can I lose my trade mark?

Do I need to renew my registration?

Trade marks can last forever subject to the timely payment of the renewal fees. For example, UK and EU trade marks initially last for 10 years and then need to be renewed every 10 years to continue to have the mark registered, and a renewal fee is payable each time.

If you fail to renew your trade mark by the renewal deadline, your trade mark will expire, along with your protection. It is possible in certain circumstances to resurrect an expired trade mark, but this comes with extra complications and formalities, which are best avoided where possible.

What are the benefits of registering a trade mark?

  • Registering a trade mark gives you protection for arguably your most valuable asset: your brand. Owning a trade mark gives you the exclusive right to use that trade mark, as well as the legal right to stop others using your mark without authorisation from you. Registering your right maximises your protection and scope for enforcement, as well as being easier to license, as you do not have to prove that the right exists.
  • There are rights which you may be able to rely on which do not require registration, such as passing off or copyright. That said, it is always better to have a registered right, as the threshold you need to reach in order to rely on, and prove infringement of, registered rights is much more easily reached than that for unregistered rights, meaning it is generally more straightforward and less costly to enforce registered rights. Further, trade mark protection is broader than that provided by unregistered rights.
  • Trade mark protection can last forever subject to renewal and use, whereas copyright generally lasts for the duration of the author’s life plus 70 years.
  • Lastly, you get a shiny certificate upon registration proving the status of your trade mark, which can be shown to third parties if you ever wish to quickly demonstrate the existence of your right. This can be useful for example if you want to sell your brand and the potential buyer is conducting due diligence, or it can be used as a tool if you want to stop someone from infringing on your brand.

If you would like more information or advice on anything trade mark related, please get in touch via our website, email us at info@briffa.com, or call us on 0207 288 6003.

This guide was written by Anastasia Troshkova and Laura Gathercole, and all information is correct as of January 2023.

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