How To Register A Trademark

How do I go about registering my trademark?

Leave the registration to us. We do the work and you get the trademark registration certificate! All you need to do is contact us. We do the rest.

What is the process for registering a UK trademark or a Community Trade Mark (CTM)?

• You contact us.
• We ask the questions and you give us the requested information. We prefer discussing the matter in depth so that we get an accurate and correct understanding about the trademark and what goods or services it will be used on. This is very important as it will enable us to properly classify the trademark and ensure that an accurate and comprehensive specification is drafted for the trademark application. We will make sure that you get the best possible protection. We therefore prefer to avoid the automated processes as this often results in crucial information being omitted by you which would result in your protection being compromised.
• We do availability and inherent registrability checks.
• If the prospects for securing a trademark registration are good and you wish to proceed with the trademark application then we will issue and invoice.
• We will prepare and file the trademark application as soon as payment is made. This is normally done on the same day.
• Once the trademark application has been filed the UK registry issues a reference number. The application number will be issued within a few days. If a CTM is filed the EU registry will issue an application number immediately.
• We corresponded directly with the appropriate registry and keep you informed about developments as soon as they take place.
• The application is usually examined within 3 weeks of filing.
• If no objections are raised by the registry your trademark application will be accepted.
• If accepted the trademark application is published in the Trademark Journal for opposition purposes. This gives third parties the opportunity to oppose the trademark application.
• If no oppositions are filed within 2 months (for a UK application) or 3 months (for a CTM application) then the trademark will proceed to registration.
• The trademark registration certificate is issued and will be sent to you.

How long does the trademark registration process take?

In the UK and EU the trademark registration process is taking approximately 5 months provided no objections or oppositions are encountered.

What does it mean when the trademark registry examines a trademark application?

The registry examines a trademark application in order to determine whether or not the trademark qualifies for registration and can be accepted. After an application is filed it is examined on absolute and then relative grounds. The former refers to the inherent registrability of a mark per se (i.e. is the mark descriptive or non-distinctive) whereas the latter looks at whether or not any existing registrations/applications conflict with the mark applied for (i.e. are identical or confusingly similar to). They will also check to make sure that the formalities have been complied with and that the goods and/or services listed in the specification are acceptable.

When will the trademark office or registry raise an objection?

The UK and EU registries will only object to a trademark application on absolute grounds (i.e. inherent registrability such as descriptiveness, non-distinctiveness etc). If an objection is raised you will be given an opportunity to file arguments or make representations in an attempt to overcome the objection. They will not object to an application on the basis of earlier marks which may be the same as or similar to the trademark application under examination. However, if similar trademarks are found, they will inform you of this and give you the opportunity to continue with or withdraw the application. They may also notify the proprietors of the earlier marks of the later application thereby giving the proprietors of the earlier marks the opportunity to oppose the application during the trademark opposition period. The onus is therefore on the proprietors of earlier marks to protect their registrations by opposing subsequent applications which may infringe or conflict with their earlier trademark rights.

What is trademark opposition and what happens if my trademark application is opposed?

The onus is on the proprietors of earlier marks to protect their registrations by opposing subsequent applications which may infringe or conflict with their earlier trademark rights. A trademark opposition can only be filed during the opposition period. In the UK the opposition is 2 months from publication of the trademark application in the Trademark Journal. In the EU the trademark opposition period is 3 months from the date of publication.

The most common ground on which an opposition is that the opposed application is identical or similar to an earlier registered trade mark and covers identical or similar goods (or even different goods if the earlier mark has “a reputation”).

Filing or defending a trademark opposition requires specialist knowledge. Trademark oppositions are a particular forte of ours. Having won or settled 96% of the matters we have been involved in our track record speaks for itself. We pride ourselves in giving honest and accurate advice. Your best interests are at the heart of everything we do.

Can I amend a pending trademark application?

You cannot make any amendments to the actual trademark once it has been filed. You can make changes to the name and address of the applicant for the trademark. You can also restrict the specification but you cannot add further goods or services.

What do I get when my trademark is registered?

You get a trademark registration certificate. The UK registry issues paper certificates. The EU registry issues electronic certificates.

How long is a trademark registered for?

In most countries, including the UK and EU, the period is 10 years. A trademark can be renewed every 10 years on payment of the renewal fees. So effectively a trademark can last forever provided it is renewed every 10 years.