How do I register a trademark?

To register something as a trade mark it needs to be unique. This could be words, sounds, logos, colours or a combination of any of these. So, first job is to work out what your unique trade mark is going to be.

A word of warning here… there is a list of things that it can’t be… and this includes offensive (so, no swearing or pornographic images), descriptive (so, ‘pigs in blankets’ is a form of food so couldn’t be used for a food company selling them… although, weirdly, it would be ok if it was a t-shirt company…), misleading (for example, ‘organic’ when it isn’t actually organic stuff being sold), a three-dimensional shape that’s associated with your trade mark (so, a picture of a t-shirt when you’re selling t-shirts), anything that’s too common and non-distinctive (this would be something like a statement that you ‘lead the way’) or something that looks too similar to state symbols like flags or hallmarks.

A trade mark law specialist will be able to discuss this with you and talk through any grey areas, or ways they think you might not succeed with your trade mark registration.

The next step is to see what else is out there. This means checking to see whether anyone has already registered an identical or similar trade mark for the same goods and services.

This can be done by searching both the UK trade marks database and the EU trade marks register on the European Union Intellectual Property Office website and flagging up any that are either current registrations or pending.

Again, trade mark law experts can help with this step. If they find anything that might be a problem, a solution may include getting consent from the other party or negotiating a settlement. 

The way trade marks work is you set out what you want to trade mark and also the categories (or ‘classes’) in which you want to do this. The Intellectual Property Offices use a system that groups similar goods and services together into what’s known as ‘classes’ (there are 45 of them). Goods are in classes 1 to 34 and services are in classes 35-45. There’s a good explanation of what’s covered in each is on the World Intellectual Property website… or you can search for the various relevant classes. Your legal advisors can also help with this and make some recommendations based on their experience and the results of Step 2 (above).

A word of warning – it’s really important to get the right class because your trade mark will only be protected within the areas applicable to that class. And you can’t add extra goods or services after you’ve applied.

• For example, if you’ve got a line of t-shirts you’d want to choose class 25 (clothing, footwear and headgear). But if you want to use this trade mark in a shop that sells other people’s products as well as yours you’d need to choose class 35 (Advertising, business management, business administration, office functions) and select the term ‘retail services in relation to clothing’. 

One more thing – It’s also best to think ahead… in terms of what you might want to do in the future as well. You can only include the things you’re planning to do in the coming five years but it’s worth doing as much crystal-ball gazing as you can at the outset. For example, you’ve filed a trade mark for your t-shirt brand under class 25. All is good. But then, a year later, as the brand is popular you decide that what you really need is to expand into bum bags (oh yeah)… but this wouldn’t be covered by class 25. This would need to be class 18… and if you’d thought about this a year ago you could have included it in the same application, rather than having to start the whole process all over again (and covering another load of costs).

In many ways this is the simple step. As long as you have the details of what you want to register and the classes in which you want to register it… and you’ve checked that there are no obvious existing or trade marks registered/pending, it’s a case of putting the application in.  You can do this via a paper form/post (£200 for one class and £50 for each additional class) or you can do it online (£170 for one class and £50 for each additional class).

And then you wait. The IPO will take a look and give feedback (usually within 20 working days). If they flag up problems then you’d have two months to tackle them and respond. But… if there aren’t any problems then we progress to the next stage.

If there are no issues the IPO will publish your application to see if anyone will object.

This will be published in the trade marks journal for two months. During this time anyone can oppose it if they wish.  During this stage, if you’ve applied for a trade mark that is similar to another one then the IPO will contact the holder to let them know and to give them the opportunity to oppose it.

A word of warning here… this is the point at which your trade mark goes into the public domain before it is fully protected. It means that other businesses could decide to use it or buy a domain name, for example… so now is the point to make sure you’ve covered your backs and bought things like that, just in case

So, we’re waiting for two months… and then, at the end, you wait another two weeks so that any oppositions made close to the deadline can be processed. If there are any oppositions then the IPO will let you know so you can decide what to do. This might mean withdrawing your application, talking to the opposing party or defending your application.

Congratulations! If there’s no opposition or objections are resolved, your trade mark will be registered. 

All the best successes in life come with a certificate and trade marks are no exception. Once it’s registered you’ll receive a certificate confirming registration of your brand as a trade mark – and this is the point at which you can add that sexy little ® to things. 

Unfortunately there are a few bits of ongoing housekeeping to remember… first, your trade mark will last for ten years so you need to remember to renew it in good time at that point. Also, if you change anything – names, addresses, email etc then you need to report these. And you need to make sure you’re aware of occasions when other people use your trade mark without permission or try to register trade marks that you feel are identical or similar to your own. This can be a bit of a struggle to keep on top of that that’s where a ‘watching service’ can help lighten this load.