How to register 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. To that end, we've put together a five-step guide to take you through the process of registering your mark.
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. It not only stand a better chance of registration, but you'll be building up goodwill in a virtually uncopyable name.
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".
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 Community 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 trade mark attorney should 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 Trade Marks Office in Newport, but such a search will not disclose marks in use but not registered.
Step 5 - Filing
You, or your trade mark attorney, would then apply to register the mark at the UK or Community Trade Mark registry. The UK or CTM registrar 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 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".