Trademark Registration for Businesses in United Kingdom
What is Trademark Registration?
In dictionary terms, trademark is a symbol, word, or words which are legally registered or established by use as representing a company or product. There are various synonyms to the word trademark, such as, insignia, hallmark, mark figure, stamp etc. In a more defined version, it can be described as a recognizable sign, design or expression associated with a product or service, based on which it can be differentiated from other products or services and is generally located on a package, a label, a voucher or on the product. For the sake of recognition, trademarks are mostly displayed on the company buildings, which also helps in getting the trademark associated with the product or the service that particular company is dealing with. Various countries have their way of writing the word trademark. For example, USA and Canada prefers to write and use it as “trademark, UK prefers to use it as trade mark, as per Trade Marks Act 1994.
History of trademark registration goes to 1266, when the very first legislative act related to trademark was passed by the Parliament of England under Henry III to ensure all the breads have distinctive mark on them to distinguish the various bakers. As far as UK is concerned, its oldest registered trademark goes back to year 1876 – The Bass Brewery incorporated its logo, triangle in shape, for its product Ale, and the same was registered under the Trade Mark Registration Act 1875. Two symbols which are associated with trademarks:
Where former stands for the Trademark symbol and later stands for the Registered Trademark symbol. Trademark symbol can be used with any common law usage of a mark, Registered trademark symbol can only be used with the marks which are registered with the concerned authority such as UK Intellectual Property Office (UIPO) in case of UK. Another symbol associated with trademark is SM, written in superscript, and is used for an unregistered service mark and is generally used to promote or brand services. A trademark is usually employed by a small business or some big companies in the construction industry. Trademark in general cases is not warranted by freelancers or contractors, or sole traders.
A trademark once registered, empowers the owner of that particular good or service with a bundle of exclusive rights which majorly includes the usage of the mark in any way as desired in relation to the products or services for which it is registered and also allows the owner of the registered trademark to protect and defend its mark against nay infringements. However, in order to do so, the trade mark needs to be either registered or must have been used for a definite period of time in order to acquire a peculiar distinctiveness.
How to Register Trade Mark in the United Kingdom?
In the United Kingdom, a trade mark covers England, Scotland, Wales and Northern Ireland and the Isle of Man, and can be extended to Jersey and Guernsey by applying to their respective trade mark offices, which comes at an additional cost, apart from the normal fees.
In case of England, Scotland, Wales and Northern Ireland and the Isle of Man, applications of the trade mark registration is sent to UK Intellectual Property Office (UPIO), which is an executive agency sponsored by the Department for Business, Energy and Industry. When a trade mark registration application is sent to the UPIO office, it examines the same for its distinctiveness and peculiarity in relation to the product and service it is intended for. Ideally in case of no objection, it takes time period of three and half to four months for a trade mark to be registered. An objection against a trade mark can be raised either by its previous or current owner or by the UPIO office itself and in case of an objection, time duration for registering that particular trade mark will increase.
When an objection is raised against the trade mark registration, it is generally based on the distinctiveness or uniqueness of the symbol or word or logo etc. So, it is always good to opt for a unique or distinctive trademark so that there is no prior history against that particular trade mark and it also makes the registration process very easy. In case, the trade mark which is submitted for registration is a word, one has to ensure that there is no meaning against it in the dictionary, because in case there is one, an objection against it is guaranteed. However, words in dictionary can still be registered; however these arbitrary trademarks need to be meaningless in the context of their use, such as Apple Corps or Apple Computer. One such example of a unique and distinctive trade mark is ipod.
For a trademark to be registered, it has to fall under one of 45 classes, out of which 34 are reserved against goods whereas 11 are registered against services and each category is identified by its unique number, for example, the registration of a trade mark for sports and gymnastics is categorized in class 28.
As per UK Trade Marks Act, there are certain items which you can register and certain items which you cannot. Trade Marks which can be registered should be unique and fall under one of the following categories:
- A combination of the above
However, there are certain content which cannot be a registered trademark, such as:
- Anything which falls under offensive section, such as an inappropriate image or swear words.
- Items which has misleading context. For example, organic word can be used for items which are not organic.
- Non-distinctive terms which are also very generic. For example: We are the best is a sentence which is very common and has no uniqueness associated with it.
- As per World Intellectual Property Organization guidelines, any image which is too close to state symbols such as national flags etc cannot be trademarked.
- Anything that directly describes the good or the commodity, such as the word ‘food’ cannot be part of a trade mark for a food production company.
So, once you have done your homework on the term, symbol, logo or phrase for your good or service, you have to make sure that it is not already registered with UPIO which can be done by checking the trade marks database. It will help you to check the uniqueness or distinctiveness. In case you find the same name or brand already registered, you have to see if it is registered in the same class. In most of the cases, it will be registered in different class. For example, if a brand is already registered under class 42, you can still register the same under different class, 32, for instance.
Once you have done your research and zeroed down on the name or branding, you have to follow below listed steps to register your trademark:
1. Apply for the Trade Mark Registration :In the United Kingdom, UPIO is the authorized government body where you have to submit your application for the trade mark registration. You can start your application process on the government site of UPIO. You need to be very careful when you are applying for the trade mark registration because once applied, it cannot be changed.
2. Select who is registering the trade mark :Once you have started your application process on the UPIO website, you will be asked if you are registering the same for yourself or on behalf of a company. In case you are doing the registration of someone else or for a company, you have to select if you are authorized to do so i.e. in case you are a lawyer or a solicitor. In case you are not, you can select the option “the owner of the trade mark or authorized person within their business” and go to the next page.
3. Fill in your details :In case you are registering for the first time, you have to fill in your details against the specified section otherwise you can retrieve your details by using your registered email id. You need to give your complete postal address because that’s the address which UPIO office will be using for any further correspondence with you.
4. Enter the basic format of trademark :Under this section, you will be asked if your trade mark has words, letters or numbers because majority of the trade marks have the same. So, you need to be very sure about the basic format of your trademark and based on that you can select YES/NO. In case you have selected YES, it will ask you to enter the name of your trade mark, which needs to be filled carefully. Because once you have applied your trade mark, it cannot be changed.
5. Enter a more advanced format of your trademark and upload an image :in this section, you will be asked to fill in more detailed version of your trade mark and you need to choose from three given options:
a. Option AIf your trademark has no particular styling or graphics and has words, letters or numbers, you have to choose this option.
b. Option BIt is most used option and you need to choose this option in case your trade mark has words, letters or numbers in a particular style, color or with a picture.
c. Option CThis is least used option and is opted only when your trade mark is an unusual type of trademark such as a musical score etc.
Once you have selected the desired option, you will be asked to upload the image or sound (in case of option C).
6. Choose a single or series trademark :As it is quite clear from the heading, in this step you will be asked if you are registering a single trademark which is done for just one word, phrase/design or you are doing the same for series of trademark. Later one obviously comes at a higher cost, with $50 per variation but it also gives you bulletproof protection.
7. Select your class and term :You can find your class term by searching the database with the desired keyword or you can do the same by selecting a class and going through the term listed under it. In case you are not able to locate your class and its term, you can speak to your lawyer regarding the same.
8. Supply a disclaimer :Under this section you will be asked for a disclaimer against your trade mark. In most of the cases, disclaimer is not required because the broad description given against is good enough. However, if you still want to give the same, you can go ahead with the same.
9. Decide for a normal or priority claim filing :You can opt for this option only if you have applied for this particular trade mark outside UK in the last six months. In any other case, you can click on the next and move to the next page.
10. Select type of trademark :Here you have to select the type of the trademark i.e. if its falls under trademark, collective mark or certification mark; however in most of the cases, it will be trademark. Once you have selected your relevant option, you can move on to the next page.
11. Select your trademark examination type :Under this section, you will be asked to choose your option from the given ones, i.e. standard or right-start. In case you have opted for standard examination, you have to pay £170 and wait for 20 days before you get the result. You have to pay the fees upfront and it is non-refundable. However, in case you choose to go for right-start examination, you have to pay £200 in total and wait for around 20 days. However, the fees need not to be paid in total upfront. You have to pay half of it before and rest after getting the result. So, it saves you £100 in case your application gets rejected for whatever reasons.
On the last page, you will get to review the filled details and here you can edit/modify any detail in case you wish to do so. You need to be very careful here because once you do the payment and click on the submit button, you can make any further modification(s) in your application. Once your application is submitted, you will get the feedback on your application, also called as an examiner report within 20 days of submitting the same. In case there is no objection on your application, same will be published in the trademarks journal for approximately 2 months during which anyone can oppose to your published application. In case there is no objection raised during this time, your trade mark will get registered with UPIO. However, in case there is any opposition raised against your published application, you can do either of the below:
- You can either withdraw your application,
- You can have a word with the person who is making the opposition, or
- You can defend your application.
Irrespective of the step you are going to take, your trademark will not be registered until the matter is settled. Once the matter is settled, your trade mark will get registered with the UPIO. However, you must inform the governing body regarding any changes to your name, address or email id. A registered trade mark also allows you to object to other’s trade marks, in case you find them any close to yours.
Frequently Asked Questions:
Q1: What is a trade mark ?
Ans1: A trade mark is symbol, word, or words which are legally registered or established by use as representing a company or product and is measured in terms of its distinctiveness and uniqueness.
Q2: How a trade mark is registered?
Ans2: A trade mark is registered as per the guidelines of Trade Mark Act 1994 and the governing office for the same is UK Intellectual Property Office (UPIO).
Q3: What is TM, SM and R?
Ans3: TM stands for Trademark symbol, SM stands for unregistered service mark where R, normally written within a circle, stands for registered trademark. Depending on if your trademark is registered or not, you can choose the concerned symbols.
Q4: How many classes are listed for the trademark?
Ans4: There are total 45 classes listed by UPIO, out of which 34 falls under goods category whereas 11 falls under service category.
Q5: Can same symbol be registered as trademark under different category?
Ans5: Yes it can be done provided the same symbols are registered within different class.
Ans6: Please seek an expert consultant in accounting and taxations for answers related to taxes.
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