Tips to make your trade mark filing easier

12th Sep 2023

Filing your trade marks is an important step in the early days of any enterprise or venture, and it doesn’t have to be difficult.

small pottery business owner.jpg

A lot of people find the idea of navigating the trade mark registration system intimidating. However, with the right support, there is nothing to worry about.

The UK Intellectual Property Office (UK IPO) is the official UK government body responsible for intellectual property. 

The UK IPO’s trade mark filing service is quick and sophisticated; however, the journey to registration at the UK IPO can become very complex, and expensive, for applicants who have not considered some key points prior to starting the trade mark filing application process.  

There are some usual considerations which, without experience, can lead to a UK trade mark application ultimately being refused protection. 

Engaging a Chartered Trade Mark Attorney or other experienced IP professional can significantly mitigate (or even totally avoid) such risks. 

Can your mark be registered?

A primary consideration is whether your trade mark is itself registrable, e.g., is your trade mark distinctive? 

During the examination of the trade mark application, the UK IPO can object to registration on a variety of grounds, for example the mark simply being a description of the type of product, or not being distinguishable from other existing trade marks. 

Therefore, while it may sound obvious, you should first ascertain whether the trade mark of interest is registrable at the UK IPO. 

Something else to consider is a requirement to use the mark as registered.  If the mark isn’t used, after five years of non-use it can be cancelled by a third party wishing to clear the register. 

So, if the trade mark is a logo, or heavily stylised, it is important to be sure its look will not change too much in the near future. 

Futureproof your trade mark filing specification

This then leads us to specification drafting. To file a trade mark, you must list the goods and/or services for which protection is sought.

You therefore need to be sure the specification of your trade mark application lists the goods/services correctly and places them in their correct classes (of which there are 45). 

It is often also very important to keep the specification of your trade mark application focused on the goods/services you actually want. 

If the specification is focused on what you do or reasonably could branch into in the future, it can help avoid attracting unnecessary opposition or objection.

Understanding how to classify goods and how the classification system works is an important part of avoiding these issues. 

For example, if you sell bathroom suites, goods and services relating to this generally fall in Classes 11, 20, 35, and 37.  

Making and circulating brochures is part of using the mark for bathroom suites, and staff wearing showroom uniforms is again part of that use, so in your application you should claim for printed matter (in Class 16) or those showroom uniforms (clothing in Class 25).  

Neglecting to cover all relevant classes often attracts otherwise avoidable oppositions.

Precautions to take

Once you have decided on your distinctive trade mark (and its specification), it is extremely important to conduct Trade Mark Register checks (or full clearance searches) for any blocks to your use and/or registration.  

If a third party has already been using and/or applied to register the same (or similar) trade mark of interest to you, such earlier rights can be relied upon to successfully oppose your trade mark application once it is accepted and published for opposition purposes, leading to your application being refused. 

Caution must also be taken when filing a trade mark similar to an earlier right that enjoys a reputation, because that reputation affords broader protection to its owner.

This could potentially enable it to oppose a trade mark application that claims dissimilar goods or services.   

Don’t forget clearance searches

If you are using your trade mark, clearance searches will reveal if that trade mark use is (or potentially would if used) infringing the registered rights of the third party. 

When a registered trade mark is infringed in such a manner, its owner can not only oppose the application, but sue for injunctive relief, costs, and potentially damages, all of which can be ruinous. 

If you don’t conduct clearance searches at the start, it may mean you also have to rebrand and destroy packaging, pamphlets, and business cards, which can similarly be financially damaging. 

The UK IPO helpfully offers register search and specification classification tools on its website; however, unless your queries are very specific, these do not always ensure prosecution of your trade mark application will be problem-free. 

Its search function will provide a high-level view but for an in-depth view, a full clearance search can be conducted to mitigate risks before investing time and money in launching a brand.

It is worthwhile spending time with a Chartered Trade Mark Attorney to get this key stage correct, as it will affect your protection (or lack of) right from the start. 

Put simply: it is usually more efficient and cost-effective in the long run to engage a Chartered Trade Mark Attorney to assist with trade mark filings from the beginning.

There is a lot that can go easily wrong in the trade mark filing process, creating highly contentious oppositions (even when entirely unintended innocent mistakes), or even not realising you are filing a trade mark that is, in fact, descriptive or non-distinctive (such as tag lines).   

Engaging a UK Chartered Trade Mark Attorney from the very start can significantly mitigate (or even totally avoid) such risks.