UK Application Process
The following steps lead to registration of a trade mark.
I) SEARCH FOR CONFLICTING REGISTRATIONS
A search is particularly important for a new mark as it will reveal any conflicting registered marks, and may indicate that a different mark should be adopted.
Please note that a search is not foolproof. There may be established marks which are not registered, but yet give rise to common law “passing off” rights, which may be infringed.
Actual application is relatively straightforward. The applicant, the mark and the goods or services for which the mark is to be used must be specified. When registered, the mark’s registration will be infringed by a third party if used for the specified goods or services. (It may also be infringed if used on similar goods or if a similar mark is used.)
If the mark is to be used on a wide range of goods and services, more than one class of goods or services may need to be specified. For registration purposes, goods and services are divided into 42 classes.
I expect most applications to cover two or more classes.
The Trade Marks Registry examine applications to ensure that marks are suitable for registration; that is to say that they are distinctive and do not conflict with prior registrations.
Once a mark is acceptable, it is advertised in the Trade Marks Journal. Provided no one opposes it, the mark is then registered.
Marks which are on the borderline of registrability, for instance, due to having an element of descriptiveness, may be registrable on the provision of evidence of at least five years use. Also, a mark may be registrable if it nearly resembles a third party’s mark and has been used “honestly and concurrently”. These situations can cause the following costing estimates to be substantially exceeded.
Typical UK Application Costs
A preliminary search can be carried out with the price dependent on the existence of similar trade marks in existence. The average cost of a typical search is £250.
|Application – for the first class excluding preliminary advice||£850|
|Each Additional Class||£50|
|Total for a single class – excl. VAT incl. official fees||£1,150|