How to get a trade mark

Trade marks are important assets.  It is vital to register - that is, take ownership of - anything that is unique to your business.  

We've put together a five-step guide to take you through the process of registering your trade mark.

Here, we focus on UK and European Union trade marks. Click here for more information on international trade marks

Step 1 - Choosing a trade mark

Firstly, you need to decide what sort of trade mark you want to register, keeping in mind that the mark must not describe your product or service directly: "great cleaner" or "chocolate  biscuit".  It must not mislead people about the nature of your goods or services, and must not conflict with one already registered by someone else.

There are a lot of ways to choose trade marks, from hiring consultants to asking around the office.  The main thing to keep in mind, though, is to make your mark unique, and as distinctive as  possible.  

Step 2 - Meeting the legal requirements 

You need to be sure the proposed trade mark meets the legal definition in the 1994 Trade Marks Act:

"a trade mark is any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings".

From January 2019 the legislation is changing, meaning the mark must be:

“capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor” 

Step 3 - Which class of goods or services

You need to decide in which classes of goods or services you wish to register your trade mark.  There are 45 in all: classes 1-34 covering goods and 35-45 covering services.  

Step 4 - Trade mark searches

Before adopting a trade mark you should conduct searches to establish that no one has earlier and better rights to your trade mark or a similar trade mark for your goods and services of  interest.  You need to search the UK and European Union trade mark registers to determine whether or not somebody else has already registered or applied to register the same or similar trade mark for the goods and services of interest to you.

You should also carry out checks to determine that no one else has used the same or similar trade mark for your goods and services of interest. A used but unregistered trade mark could be used to prevent you from using and registering your own trade mark. 

A Chartered Trade Mark Attorney will be able to tell you whether your trade mark is unique and can organise searches for you.  You can conduct your own search of the UK register at the UK trade mark register at the UK Intellectual Property Office, but such a search will not disclose marks in use but not registered.

Step 5 - Filing

You, or your Chartered Trade Mark Attorney, would then apply to register the mark at the UK or European Union trade mark registry. The trade mark registrars will examine the mark to determine whether or not it is inherently registrable.

Once accepted as registrable, your trade mark is published in the Trade Marks Journal. There follows a three-month period during which oppositions may be filed, typically on the grounds of a prior conflicting right, on the grounds that the mark is descriptive.  If there are no oppositions, your trade mark is formally registered and you will receive a certificate. Your registration lasts for ten years.

If there are oppositions or problems with your application, these need to be addressed. Your Chartered Trade Mark Attorney's help is especially important here, but you can still proceed on your  own. Generally the mechanism is written correspondence, but in the UK Trade Mark Registry there is also an opportunity for oral argument before a hearing officer, a professional within the Registry who acts on behalf of the registrar. Their decision generally concludes matters, but is subject to appeal to the High Court or to the "appointed person".