Do I need to register
my brand as a trade mark in order to get protection?
most countries trade mark registration is the quickest and
cheapest way to ensure legal exclusivity for the use of
your name. In the UK you can get “common law”
rights just by using a name in trade BUT (i) it takes a
long time to acquire the rights (ii) the scope of the rights
is usually unclear (iii) it does not stop someone else using
or registering your name and (iv) it is usually prohibitively
expensive to stop someone else stealing your name. So yes
you should always register your business names and brands
I have registered
my name as a domain name. Do I need to register it as a trade
mark as well?
Most definitely. The domain name will not stop a competitor
using your name as a trade mark. In fact, if someone else
registers your name as a trade mark before you do, they
can sometimes stop you using your domain name and make you
transfer it to them.
I have registered
my name as a company name. Do I need to register it as a trade
mark as well?
Your company registration at Companies House will not stop
a competitor using your name as a trade mark or trying to
register your name as their own trade mark. All that the
registration at Companies House does is stop some one registering
another company with exactly the same name. If they change
the name slightly they can register another company with
an almost identical name. They can also try to use your
name as their trade mark unless you get a trade mark registration.
Where do I need to
register my trade mark?
you are conducting a business in the UK you should file
a trade mark application at the UK Patent Office in the
registration Classes that correspond to your business.
you want to stop someone else using your name in any other
part of the European Union you should consider a Community
Trade Mark (CTM) application at the Community Trade Mark
office. One CTM application triggers separate applications
in each member state of the European Union.
is a good idea given the free movement of goods and within
the EU. It stops potential competitors using your name in
other parts of the EU and it means that you are protected
if you sell or expand into the EU countries. You should
also look to protect your name in your main markets internationally
subject of course to cost considerations. However, since
October 2004, it is possible to cover up to 172 countries
by filing one application under the Madrid Protocol.
What can I register
as a trade mark?
available name can be registered as a trade mark for a product
or for a service if it complies with the legal requirements.
Slogans, strap-lines, buy-lines, logos, designs, even shapes,
colours and smells can be registered as trade marks.
Is any name protectable
as a trade mark?
The Trade Marks legislation lays down very technical and
specific criteria which the various Registries apply when
deciding whether to accept any given name or brand for registration.
Marks which are too descriptive or which are not capable
of distinguishing your business from other similar businesses
may not be accepted. Geographical names are also difficult
to register. Obviously, if your name is already registered
by someone else you will not be able to use or register
it for the same kind of business.
If I have registered
my name for one kind of product or service can someone else
register it for a different kind of product or service?
in principle. This is why, when you file your own application,
you should file in as many different Classes as are necessary
to cover all the different products or services you currently
provide or which you intend to provide. A manufacturer of
various different products should make sure that all such
products are covered by claiming protection in the appropriate
How long does a UK
trade mark registration last?
It lasts 10 years and can be renewed for further period
of 10 years. If you do not pay your renewal fee by the next
renewal date, your mark will expire. However, you are allowed
an extra six months from the renewal date in which to renew
your registration, but you will have to pay a fee for late
renewal. Following this six-month period, there is a further
six-month period, i.e. a total of up to one year after the
renewal date, in which you may apply to restore your mark.
How long will a UK
trade mark application take to process?
6 to 9 months depending on various factors. Sometimes it
can be longer if there are objections from the Registry
or from third parties to be overcome. Importantly, protection
will back-date to the date of your application and anyone
who has been using your name illegally since that date will
have been infringing your rights and may be liable to you
Can I stop someone
using my name as a domain name if I have already registered
the name a trade mark?
may well be able to stop them if they are trading in the
same area of business and particularly if you can show that
they are acting in bad faith. Otherwise you may have to
go through one of the accredited domain name dispute resolution
routes offered by Nominet and by WIPO.
I get a refund if my application is turned down?
No. Our fee and the Registry fee covers the cost of the
processing and examination of your application.
Can I sell my registered trade mark?
A trade mark is legally described as "intellectual
property". It is similar to other property you may
own. It may become very valuable indeed and you can sell
it if you want. We can advise you on the legal requirements.
Am I breaking the
law by using "TM" on my trade mark?
No, as this does not indicate that your trade mark is actually
registered, only that it is being used in a trade mark sense.
You would only be breaking the law (Section 95 of the Trade
Marks Act 1994) if you used the registered symbol ®
or the abbreviation "RTM".
When and how can I
use the ® symbol?
do not have to identify your trade mark as registered. You
can use the ® symbol or the abbreviation "RTM"
(for Registered Trade Mark) to show that your trade mark
is registered. The ® symbol usually goes after the trade
mark, in a smaller type size than the mark itself, and in
a raised (superscript) position, but none of this is compulsory.
If you do not have the ® symbol available, you can use
the abbreviation "RTM".
Once I have a registration,
can I add on other goods or services at a later date if my
When you apply you should advise us of the likely future
scope of your business so that we can make sure your application
adequately covers such extra goods or services. It is not
possible to extend a registration to more goods or services
after you have applied. A further application will be necessary
to cover such extra goods or services.
What do the fees that
I pay at the outset include?
fees you pay at the outset cover our fees for preparing
and filing the application and any application fee payable.
Not included is the cost of dealing with any Registry correspondence
or hearings that may be necessary or dealing with any opposition
or other procedure before the Registry or any other legal
Whatever you trade mark question
or concern please contact us for a free
legal consultation and we will
be pleased to provide you with some free guidance.