Registering a trade mark in the UK

This guide was last updated in March 2008.

Scope of the trade mark right

Applications are filed at the UK Trade Marks Registry which is a part of the UK Intellectual Property Office, an executive division of the Department of Trade and Industry.

A UK trade mark registration covers England, Scotland, Wales and Northern Ireland and the Isle of Man. A UK registration can be extended to Jersey and Guernsey by application to the respective trade mark offices in those Islands at additional cost.

A UK trade mark registration is a statutory right governed by the Trade Marks Act of 1994. Trade marks can also be protected in the United Kingdom via common law rights established under what is called "passing off." Passing off rights are established by the use of a brand and the establishment of goodwill. However, it is preferable to register a mark, as opposed to relying on common law passing off rights, as you have to prove that you have established goodwill to succeed in a passing off action. Also, passing off rights can be limited to a local area, whereas a UK Trade Mark registration automatically covers the whole of the UK.

Under the 1994 Act, a proprietor of a registered trade mark in the UK has an exclusive right to use the registered mark in the UK in relation to the goods and services protected. All rights in a UK registration date back to day of filing, not to when the application is actually granted.

The UK is a signatory of the Paris Convention. This allows "convention priority" to be claimed. This means that an individual or company in the UK who has applied for a trade mark in one of the other member states can rely on the first application date ("the priority date") to backdate any later filed applications they make in the UK to that date. Those later applications must be filed within six months of the first application.

Information required to file an application

• Full name and address of applicant. 
• Country and state, if appropriate, of incorporation of the applicant. 
• Trade Mark. 
• A good representation of the logo or design. 
• Indication of Goods and Services sold or to be sold under the Trade Mark (all goods/services placed in 45 classes). 
• Details of application on which Convention Priority is to be claimed.

Procedure and time scale

Allow around eight months from the start of the process to the issue of a Registration Certificate. The following are the main steps in that procedure:

Step 1: You can conduct a search to determine if the mark is free to use and register (although this is optional). A basic text search can be done online for free. However, such text searches are very limited and cannot be relied upon to determine whether the mark is free to use and register. We recommend a full availability search as this will search both similar and identical trade marks. This is a service the Trade Marks & Designs Team at Pinsent Masons can perform.

Step 2: File your application with the UK Intellectual Property Office, either on paper or electronically. Within one week you should receive an official filing receipt. It is important to remember that all rights date back to the day the application was filed and not to when the application is granted.

Step 3: Within 1-2 months of filing you should receive the official Examination Report.This may include the UK Intellectual Property Office's objections if your application is deemed unsuitable for registration. You can respond to these objections and they might be waived. The examination report incorporates an advisory search report relating to prior pending trade mark applications or registrations which the UKIPO feel are in conflict with your application. You can decide to ignore this search and push on with the application or you can counter the citations and argue they are unjustified. You have one chance to counter the citations. If you ignore the search results or are unsuccessful in overcoming the citations, but decide to push on with the application it will progress to advertisement. However, the owners of any UK or Madrid Protocol rights will automatically be informed of the advertisement of your application.

Step 4: Your application will be advertised in the Trade Marks Journal. This should take place within four months of the application being filed. If a formal opposition is filed, opposition procedures can last for two years or more. Many brand owners hire watching services that, like a search engine, will automatically search every published application for potential conflicts. The Trade Marks & Designs team manages a number of trade mark watches spread across the UK, European Union Countries and Worldwide and a detailed cost estimate of this service can be provided to you upon request.

Step 5: If there have been no objections in a period of three months from the date when the advert first appeared, the application is granted and a Registration Certificate is issued. This is typically eight months from the date of filing.

How can Pinsent Masons help?

Pinsent Masons has a dedicated Trade Marks & Designs Team, which consists of qualified Trade Mark Attorneys. We can file and prosecute trade mark applications across the globe and conduct searches on potential brands and advise on risks to use in terms of infringement.