Frequently Asked Questions
If you can't find the answer to your question, please feel free to contact us via our LiveChat service, available at the top of the page, or if we're offline, fill out our Free Trademark Advice form.
What is a trademark?
A trademark is a distinctive sign that differentiates your products or services from those of your competitor. It can be words, logos or a combination of both.
What can I register as a trademark?
There are three types of trademarks: (i) word-only mark – this means you register the exact word (or words). The font style and/or colour of your trademark will not be protected. This leaves you a degree of flexibility should you later wish to change elements of your branding while retaining the name. (ii) logo/ picture/ device – this could be a pictorial design, such as the Microsoft quadrant flag. In some circumstances it could even include a sound. This type of registration offers a more tailored protection. It means that the mark is protected in its entirety, rather than the protection attaching to a specific name. (iii) word/ logo combination – this type of mark protects both a brand name and a logo. Including a logo may be a good way to make an overly descriptive or insufficiently distinctive mark, registrable.
When is a mark deemed to be “too similar” to a registered mark to be protected?
Trademarks are registered under specific classes of goods or services. Whether or not a trademark is too similar to a registered mark to warrant protection depends on a comparison with marks in the same classes, and in some cases, in comparison with confusingly similar goods and services. Specifically, trademark applications will be checked to see if the intended mark: (i) is the same as an existing mark (i.e. is an exact match); (ii) is visually similar to another mark; (iii) has phonetic similarities with another mark; or (iv)has conceptual similarities. If the degree of similarity is sufficient to give rise to the likelihood of consumer confusion, then it will be deemed to be too similar.
Why should I bother registering my trademark?
Ask yourself a question: can you afford to lose your company’s name, to re-brand your products and to find a new domain name? If not, then why take the risk by using an unregistered trademark? Registration guarantees legal exclusivity to your trademark. This not only prevents others from using your mark, but it also protects you from the danger of being sued for inadvertently using someone else’s mark.
Is there anything that cannot be registered as a trademark?
A trademark cannot be registered if it is too similar to an existing trademark to warrant protection. In addition to this, registration will be refused if the mark is merely descriptive of your goods or services, or if it is not sufficiently distinctive in your line of trade. For example, a butcher would be unable to register the text mark ‘Quality Meats Butcher’ since this merely describes the course of business. However, the addition of a distinctive word such as ‘Pyramid’ (i.e. a word devoid of a particular meaning in that trade) may be acceptable. Similarly, three dimensional shapes may not be registrable if the shape is demonstrative of the goods being sold. Protected emblems, offensive signs, deceptive marks or trademarks promoting illegal activities are also non-registrable.
Where can I register my trademark?
A trademark can be registered in the UK via the Intellectual Property Office (UKIPO), as a pan-EU trademark through the Office for Harmonization in the Internal Market (OHIM), or in countries outside the EU either directly as a national registration or via WIPO. Since the UK is a member of the Madrid Protocol, it is possible to register a trademark under the Madrid Protocol system in countries that have contracted to the treaty. Currently, 83 countries are members, including Japan, China and the US. Registration outside these countries must be done through a suitable attorney in that territory.
Can I register a word mark in a particular font?
Registering a word mark protects only the word itself, not the appearance of the word. To protect a word in a particular style of writing, it must be registered as a picture mark. It should be noted that this means that when the word is written in a different style, it is not protected, and the ® symbol may not be used.
How long does it take to register a trademark in the UK?
If the trademark applied for is not objected to or questioned by the UK IPO, and if it is not opposed by other registered trademark owners, the process will take around 4-6 months. You may not use the ® symbol until your trademark has been registered.
How long does it take to register a trademark in the EU?
So long as the application progresses without complications, it will normally take between 12 – 18 months for registration to be granted.
Does registration in the UK offer worldwide protection?
No. Trademark registration is always limited to the territory for which it was granted.
I have a name and a logo that I want to register. Do I have to apply for two registrations?
It is possible to register a word and a logo together, but only if they are used together. However, if you intend to use the name separately without the logo (eg on letterheads or websites) then filing two separate registrations would afford you better protection.
When can I use the “TM” or “R” designations with my trademark?
“TM” simply means that the sign is being used as a trademark. You do not need to register your trademark before you can use this. “R” indicates that your trademark is registered. It is an offence to use this designation before the registration process is complete.
Who owns a trademark?
The owner of a registered trademark is the person named in the registration details. It may be an individual, a company, or a partnership. It is very important that you take time to consider the implications of trademark ownership prior to registration.
My company is registered with Companies House. Does this protect my company name as a trademark?
No. Simply registering your name with Companies House does not give you legal exclusivity to use it as a trademark.
My domain name is registered with a domain name registrar. Does this mean the name is also protected as a trademark?
No. Simply registering your name as a domain name does not give you legal exclusivity to use it as a trademark.
If I have registered my trademark for one class of goods or services can someone register it for a different class of goods or services?
In theory, yes - your trademark will be protected only in the classes you selected in registration. This is why you should be sure to file as many different classes as are necessary to give full protection to all your goods and services. You should also consider what goods or services you may wish to branch out into in the future, since once a trademark is registered it is not possible to make amendments.
How long does a UK trademark registration last?
It lasts 10 years, but can be renewed for further 10 year periods indefinitely, subject to payment of renewal fees. If you fail to pay a renewal fee at the renewal date, your trademark registration will expire. However, you are entitled to two additional six month periods in which it is possible to restore your mark. Each successive period is subject to an increasing late fee.
If I register a name as a trademark can someone still register it as a company name?
Yes. Companies House do not check the trademarks registry when registering company names. However, if a company did register your trademark as its name, it would still be an infringement of your rights if that company started to use your trademark to promote the same or similar goods or services.
Can I trademark a name that has already been registered with Companies House?
Yes, so long a similar or identical trademark has not already been registered for the same classes of goods or services.
Can I sell or license my trademark?
Yes, a registered trademark can be sold or licensed. A trademark constitutes intellectual property (IP) and can be used in much the same way as other property you may own. We can provide advice on all matters relating to IP sales, acquisition or licensing. Call us on 08450 361133.
Once I have registered my trademark, can I increase the classes of goods or services to suit my future business needs?
No, it is not possible to amend your classes after registration. This is why it is vital you consider the classes you may require in the future when registering your trademark. It is, of course, possible to make a fresh application to cover the additional goods or services, however this will be a more expensive route.
Can I claim a refund of the application fees if my application is rejected?
No. Our fees and the registry fees cover the cost of the processing and the examination of your trademark application.