Trade mark Registration Solicitors

No, it is not necessary to have a registered trade mark . However, registering a trade mark can provide legal protection and prevent others from using the same or similar mark for similar goods or services. It can also make it easier to take legal action against infringers.

The costs of filing a UK trade mark application varies depending on the number of classes that you want to register the trade mark in, in addition to which application procedure you wish to. The IPO currently has in place the following application services:

Standard examination service: here, the IPO's fee totals £200 for registration in one class, with a further £50 fee for any additional class that you wish to register within. For standard applications filed online, a £30 discount will apply. Once a trade mark application has been filed via the standard examination service, the IPO will send an examination report, setting out whether the proposed trade mark fulfils the requirements for registration under the TMA, and whether there are any existing similar or existing trade marks that have already been registered (please see our below analysis in this regard); and Right start examination service: here, again, the IPO's fee totals £200 for registration in one class, with a further £50 fee for any additional class that you wish to register within. The benefit of this service is the 50% of the IPO's total fee is payable on submitting the trade mark application; thereafter, as with the standard examination service, the IPO will then send its examination report, allowing you to discuss any issues that may arise. The remaining 50% of the IPO's total fee will only be payable in the event that you are satisfied with the contents of the examination report and wish to proceed with your application. Our intellectual property solicitors act for clients for a competitive fixed fee, under which we will produce a Trade Mark Report, analysing the registerability of your proposed trade mark against any existing trade marks and the absolute and relative grounds for refusal under the TMA. Thereafter, we can assist you with dealing with the trade mark registration on a fixed fee basis. Please contact us to discuss your requirements further with one of our intellectual property solicitors and for a no obligation quotation.

The TMA and Trade Marks Rules 2008 (as amended) set out the procedure in which parties must follow should they wish to oppose (or conversely, defend) a trade mark application. As set out above, an opposition must be raised within two months (unless extended) of the proposed trade mark being published on the trade marks journal.

Should you receive a notice of intended opposition after your trade mark has been published, our intellectual property solicitors can advise as to the merits of the proposed opposition and what options are available to you. This may involve restricting the goods and/or services covered by your trade mark or entering into formal undertakings or a Co-Existence Agreement with the opponent, both of which form the basis of a contractual relationship between both parties, setting out their respective rights and obligation and, importantly, what will happen if a later infringement or opposition occurs. Of course, some trade mark oppositions are merely speculative and have no legal basis under the TMA or otherwise; our intellectual property solicitors are best-placed to advise as to what your preferred course of action ought to be in each scenario.

An opposition must contain details regarding the existing trade mark that the opposition is based upon, a statement confirming that their trade mark has been put to use (for those trade marks that have been registered for 5 years) and a "statement of grounds", setting out why the trade mark application should not be successful. Thereafter (and generally within a further 2-month period), the application will have the opportunity to file a counterstatement, which rebuts the contents of the opposition, further setting out why the trade mark should proceed to registration. The period prior to filing a counterstatement also represents a further opportunity for the parties to seek an amicable solution to the opposition and via the parties' agreement, they can enter into a formal "cooling off" period, lasting up to 9 months (which can be extended by a further 9 months), in order for such to take place.

Once the counterstatement has been filed, the IPO will usually invite the parties to file evidence in support of their respective position. This is evidence of fact rather than legal submissions and will generally relate to use of the existing and/or proposed trade mark; a successful opposition will likely hinge on establishing prior use of the existing trade mark; comparatively, an existing trade mark may be prone to a validity challenge (which may render the opposition unsuccessful), and further information in this regard can be found on our trade mark disputes page.

Upon completion of the evidence rounds, the IPO will inform the parties that the opposition can then proceed to a substantive decision, which is usually based on the papers that have been received. For oppositions that involve contentious matters of fact, it is possible to request an oral hearing in order for such to be determined; this will require representation, for which our trade mark lawyers/solicitors will be able to assist. A final decision will then be handed down by the IPO's case handler within 2-3 months, bringing the total duration of the opposition to anywhere up to several years.

It is possible to file a fast track opposition, which is helpful when seeking to reduce the long delays that take place during the evidence rounds. Should you wish to oppose a third parties trade mark application, then our intellectual property solicitors/lawyers will be able to advise as to the advantages and disadvantages of each option, when considering your position.

The traditional rule in civil litigation is that the losing party will be required to pay the reasonably incurred legal costs of the winning party. However, with the general rule with proceedings before the IPO is that costs are contributory, rather than compensatory (save where unreasonable conduct can be found on behalf of one party), such that the losing party will generally only be ordered to pay a proportion of the winning party's costs. This will include any IPO fees that are incurred (such as the opposition fee).

Throughout the opposition, our intellectual property solicitors will advise as to the applicable legal costs that you may incur, in addition to whether or not those costs can be recovered if you are successful.

A trade mark can last indefinitely as long as it is renewed every 10 years and remains in use.

To register a trade mark you need to apply to the Intellectual Property Office (IPO). Your trade mark must be distinctive and not too similar to existing trade marks. You can apply online or by post, and the application fee starts at £170. The IPO will examine your application and may ask for more information or clarification. If your application is successful, your trade mark will be registered for 10 years and can be renewed indefinitely.

Yes, it is possible to change a registered trademark. However, the changes must not alter the distinctive character of the mark and must be submitted as a new application for registration. The original registration will be cancelled, and the new application will be subject to examination and approval by the UK Intellectual Property Office. It is recommended to seek legal advice before making any changes to a registered trademark.

If someone else uses your trademark without your permission, you may be able to take legal action against them. This could involve sending a cease and desist letter, filing a lawsuit for trademark infringement, or seeking damages for any harm caused by the unauthorized use of your trademark. It is important to protect your trademark to maintain its value and prevent confusion among consumers.

Yes, it is possible to register a trademark internationally through the Madrid System. This system allows for the filing of a single application to protect a trademark in multiple countries. The application must be filed through the Intellectual Property Office (IPO) and the trademark must already be registered or pending registration . The IPO will then forward the application to the World Intellectual Property Organisation (WIPO) for processing.

A trademark is a symbol, word, or phrase that identifies and distinguishes a company's goods or services from those of others, while a copyright protects original works of authorship, such as books, music, and art. trademarks are registered with the Intellectual Property Office, while copyrights are automatically granted to the creator upon creation of the work.

Yes, you can register a trademark for a product or service that is not yet available in the market . However, you must have a bona fide intention to use the trademark in the course of trade for the goods or services specified in the application. If you do not use the trademark within five years of registration, it may be vulnerable to cancellation for non-use.

Trademark registration is important for your business as it provides legal protection for your brand name, logo, and other intellectual property. It gives you exclusive rights to use your trademark and prevents others from using it without your permission. This helps to establish your brand identity and reputation, and can also increase the value of your business.