How to register a trademark in the UK
Trade marks are marks used in trade to identify products.
Your trade mark is the symbol your customers use to choose your product. Your trade mark differentiates your products from everyone else’s. You can protect your trademark by registering it.
The only condition for a registered trade mark is its clear definition; otherwise neither you nor your competitors will be sure of what it covers.
BENEFITS OF REGISTERING A TRADE MARK
Protects your brand value
Creates an asset
Protects against competitor trade marks
Defines your rights
Prevents counterfeiting and fraud
REQUIREMENTS FOR TRADE MARKS
You choose different types of trade marks depending on what you want to protect (word, shape, color, etc.).
Trade mark must distinguish the goods and services of one producer from the goods and services of another producer.
To be eligible for registration, your trade mark must be different from others and must not describe what you are selling.
Consumers should be able to recognize your trade mark. It should differentiate you from other companies in the market.
Your trade mark should not monopolize a mark that simply describes the products and/or services that you offer. Such marks should remain accessible to everyone.
TRADE MARK IN EUROPEAN UNION
An EU trade mark may consist of any signs, in particular words (including personal names) or drawings, letters, numbers, colors, shapes or packaging of goods or sounds.
“Graphical presentation requirement” was removed on 1 October 2017, as a result of the adoption of Regulation (EU) 2015/2424 amending.
It means that as long as your trade mark falls into one of the trade mark categories adopted by the Office and can be presented in accepted formats, you can file it as an application without graphical presentation.
You can register in the European Union:
A word mark consists exclusively of words or letters, numerals, other standard typographic characters or a combination thereof that can be typed.
It is a trade mark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements.
Figurative mark containing word elements *
A figurative mark consisting of a combination of verbal and figurative elements.
A shape mark consists of, or extends to, a three-dimensional shape. It can include containers, packaging, the product itself or its appearance.
Shape mark containing word elements*
A position mark consists of the specific way in which the mark is placed or affixed to the product.
A pattern mark consists exclusively of a set of elements which are repeated regularly.
Colour (single) mark
A colour single mark is just that – a trade mark which consists exclusively of a single colour (without contours).
Colour (combination) mark
A trade mark which consists exclusively of a combination of colours (without contours)
A sound mark consists exclusively of a sound or a combination of sounds.
A trade mark consisting of, or extends to, a movement or a change in the position of the elements of a mark.
It consists, or extends to, the combination of images and sound.
This is a new category of trade mark (as and from 1 October 2017). Hologram marks consist of elements with holographic characteristics
*Note: The trade mark types marked with an asterisk are not separate categories under the EU trade mark Implementing Regulation. They are however differentiated in the e-filing for practical and technical reasons.
A four-tier system for registering trade marks
There is a four-tier system for registering trade marks in the EU. What you choose depends on the needs of your business.
If you want protection just in one EU Member State, e.g., where your business is based at the moment, or where you want to trade, you can file a trade mark application directly at the relevant national IP office. This is the national route.
If you want protection in Belgium, the Netherlands and/or Luxembourg, you can file an application to the Benelux Office of Intellectual Property (BOIP), the only regional-level IP office in the EU, for trade mark protection in those three Member States. This is the regional route.
If you want protection in more Member States of the EU, you can apply for an EU trade mark from EUIPO. This is the European route.
An online application at EUIPO costs €850 and is filed in just one language. EUIPO checks and processes your application, and once registered, your trade mark can be renewed indefinitely every 10 years.
The national, regional and EU systems are complementary ones, and work in parallel with each other.
EU trade marks give protection in all Member States of the Union, for those who want that option.
The fourth route to protection in the EU is the international route. You can use your national, regional or EU trade mark application to expand your protection internationally, to any country that is a signatory of the Madrid Protocol.
EUIPO is the European Union Intellectual Property Office responsible for managing the EU trade mark and the registered Community design. EUIPO also works with the IP offices of the EU Member States and international partners to offer a similar registration experience for trade marks and designs in Europe and across the world.
The European Union Intellectual Property Office (EUIPO), which was known as OHIM until 23 March 2016, can provide you with exclusive rights for trade mark and design protection throughout the European Union (EU) with just a single application.
Moreover, EUIPO is a European Union agency with a global focus.
The EUIPO works in partnership with national and regional EU intellectual property offices, user groups, the European Commission, the European Parliament and other international organisations.
Benefits of registering a European Union trade mark
A single registration filed online in one language is valid in all EU member states.
The EU trade mark gives its owner an exclusive right in all current and future EU Member States at a reasonable cost.
You can promote your trade mark in a market with nearly 500 million consumers.
An EU trade mark is valid for 10 years. It can be renewed indefinitely, 10 years at a time for each renewal.
Kinds of trade mark that can be registered
You can register 3 kinds of trade mark: individual, collective and certification.
Individual trade mark distinguishes the goods and services of one single company or person from the goods and services of another one.
However, this does not mean that a single trade mark should belong to one company or person: individual trade mark can belong to one or more legal entities or individuals. This means that there are several applicants.
The basic registration fee for an individual trademark starts at € 850 (electronic means)
Collective trade marks distinguish the goods and services of a group of companies or members of an association from the goods and services of competitors. Collective marks can be used to build consumer confidence in the products or services offered under the collective mark. Quite often they are used to identify products which share a certain characteristic.
Only associations of manufacturers, producers, suppliers of services or traders, as well as legal persons governed by public law, may apply for collective marks.
The application fee for a collective mark is EUR 1 500 (electronic means).
Certification trade marks were introduced at EUIPO on 1 October 2017. It`s a new type of trade mark at EU level, although it has already existed for many years at national level. This kind of trade mark is used to indicate that goods or services comply with the certification requirements of a certifying institution or organization; it`s a sign of supervised quality.
Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.
The application fee for a certification mark is EUR 1 500 (electronic means).
Choice of trade mark class
The European Union Intellectual Property Office (EUIPO) has adopted the Nice Classification for classifying goods and services. The Nice Classification divides the goods and services into 45 classes.
Your EUR 850 application fee enables you to choose one class. For an additional fee of EUR 50 you can add a second class, and for three or more classes you will need to pay EUR 150 for each class.
When you apply for a trade mark using any of EUIPO online application forms, the Five-step form and the advanced form, you will be able to search and browse through a list of goods and services known as the Harmonised Database. This database contains terms that have already been accepted by EUIPO and by all national intellectual property offices in the European Union and beyond.
Selecting your goods and services from the Harmonised database allows EUIPO to process your application more smoothly. Your application could also be accepted for Fast Track. It`s EUIPO’s accelerated procedure to have your application published faster.
You can also use EUIPO “Goods and services builder” to prepare your list before applying. This is recommended for professional practitioners, as sometimes several applications need to be submitted at once.
Five-step online application form:
- Choice of variant and type of trade mark
- Choice of trade mark class
- Checking for the presence of similar trade mark
- Your data (names, titles, addresses, contacts)
- Confirmation and payment