What if the name is already in use?
It can happen that, in doing your search, you discover another company has registered the name you want, or a very similar version of it. Don’t give up though. You can contact whoever that is and ask if it’s ok to go ahead and use your name. It could be, for instance, that the original user has decided not to go ahead and open the company. Then again, perhaps the business is in a different trademark class (see below).
If the owner of that business agrees you can use your chosen name, then you’ll need a letter from them saying so. This must then be attached to your own trademark application form.
Trademark classes
Trademark classes are grouped under the international Nice classification system and there are 45 of them. The classes cover 34 goods and products and 11 services.
Product classes include clothing, make up, games, toys, and musical instruments etc. Service classes encompass such areas as education, food, drink and hotel services etc.
You will have to indicate which class you want to put your products or service into when registered the trademark. That’s because the same name can be used, provided it is in a different class. It could be that it is in many classes, if so it should be registered for each one that it falls into. Although, make sure you get the right classes – otherwise your trademark application will be rejected. The TMclass classification search tool can help with this. So too can The Intellectual Property Office guide.
Putting in a trademark application
Your application has to be sent to The Intellectual Property Office (UKIPO). An online application is also available. In both instances you will have the pay the fee upfront. In the case of the former it costs £200 to register for a single class and £50 for each additional class. It’s slightly cheaper to apply online, at just £170 to register.
Another way to apply is via The UKIPO’s Right Start service. This verifies whether your application meets registration rules. Using this method, the initial cost for trademark registration is £100, with £25 for each additional class. If you continue with the application after receiving the report, you will have to pay an additional £100 and £25 for each class.
You can also use a trademark attorney to help with the registration process. This costs around £200 + VAT for registering the trademark for multiple classes, on top of the UKIPO fees. A Trademark search by an attorney is usually £100 +VAT.
After you’ve sent in your application it will be reviewed and, if there are any objections, you will be notified within 20 days. After that you will have two months to rectify the issue.
If there are no difficulties and your application is accepted, you will see it published in the official Trade Marks Journal, where it will appear for two months. Anyone who owns a similar mark will be notified and can oppose your trademark application. Even someone who is not notified can still object to it. If there is an objection your trademark with appear in the Journal for another month.
Dealing with objections
There are a number of things you can do if you find your trademark application is objected to. You can, for instance, withdraw your application and go back to the drawing board. You can also try to reason with the objector. If that fails you can defend your application.
If your difficulty is resolved or there are no objections at all then your trademark will be registered within a fortnight of the end of the publication period in the Trademark Journal. You will then receive a certificate confirming your trademark registration.
In total the whole trademark application process can take around four months – and that’s if there are no objections.
Post-registration of your trademark
Once your trademark has been accepted and registered you can use the ® symbol next to your business name. This means it’s possible to take legal action against anyone who tries to use your company name without first asking for your permission.
It’s worth noting that if you don’t use your trademark within five years of registration you could lose it.