Trade Marks

Yes, under certain circumstances. However, it can be difficult and expensive to rely on unregistered rights and, for these reasons, it is preferable to register a trade mark as your exclusive property.

You can file a trade mark application at the UK Intellectual Property Office (IPO) at any time before or after use of the trade mark has started. When filing a trade mark application, you must specify the goods and/or services for which the trade mark will be used. There are 45 classes of goods and services and we can help you decide which ones you need to include in your application

Trade marks can be registered in most countries. Two international systems are available: the EU trade mark and the so-called ‘Madrid Protocol’, which is useful for protecting your trade mark in non-EU countries such as the United States and China. If you wish to protect your trade mark in multiple countries, we can work out the best filing strategy to meet your needs.

The process of registering a trade mark differs from country to country; sometimes quite greatly. In the UK, the IPO typically takes one to five weeks to examine an application to determine if the trade mark is inherently registrable and if the applicant’s goods or services have been correctly classified. An examiner will also search for identical or similar trade marks but will not raise an objection if any earlier conflicting trade marks are identified. Instead, the IPO will notify the owner of the earlier trade mark, allowing them to decide whether to take any action.

Once the IPO approves a trade mark application, it is published for opposition purposes. This means that during a period of two months (extendable by a further month) from the publication date, anyone can oppose registration of the application, although in the majority of cases oppositions are filed by the owner of an earlier mark. If that happens, we can provide advice and guidance throughout the opposition procedure.

However, a high proportion of published UK trade mark applications are not opposed. If no significant issues arise during the registration process, a trade mark is often registered within four to five months after the application is filed, making the UK one of the quickest systems.

The cost of registering a trade mark depends on the number of classes of goods and services it covers, the territories in which protection is sought, and whether one of the international systems can be used.

We would be pleased to provide you with a free estimate of the cost of protecting your trade mark in the UK and overseas.

A trade mark is initially registered for 10 years and can be renewed for further periods of 10 years by the payment of renewal fees.