How to Trade Mark in the UK and Stamp Your Brand in History

Trademarking your brand isn't all paperwork and filings. For businesses keen on claiming true, unchallenged dominion over their name, it's a rite of passage, a quest of honour, an infallible shield against commercial invaders who wish to ride your coattails to fortune. 

This quest for brand protection and domination through registered trade marks isn't new in the UK. It can well be likened to the blacksmith's insignias and merchant guild crests of medieval England, which, just like trade marks, were one mark of distinction, a banner flown high in the battlefields of trade and commerce.

Don't take my word for it. Consider the sad tale of Burger King, whose famous name is exiled from much of the UK on account of a boutique, family-run take-away in Lincolnshire called Burger King (yes, they got there first), or better still, Taylor Swift, who had to put up the fight of her life defending her lyrics from being printed on merchandise by rival merchants without her approval. 

In essence, if you're in the quest of knighting your brand and carving your name into the annals of UK commerce, you will find this guide quite endearing. In this article, we will guide you through trade mark registration in the UK. We'll cover the types of marks you can register and the main processes involved. We'll also explain why Trademarkia is your best shot at protecting your brand in the UK.

What is a trade mark?

The UK Trade Marks Act of 1994 defines a trade mark as any sign that is capable of distinguishing goods or services of one undertaking from those of other undertakings and can be represented in a clear, precise, intelligible, and objective manner. 

A trade mark can be in any of the following forms: designs, letters, numerals, colours, sounds or the shape of goods or their packaging. Unlike many other jurisdictions, personal names are registrable as trade marks in the UK.

A registered trade mark sets your products apart from competitors. It also safeguards your brand against fraud and counterfeiting. It helps customers recognise your products and services. It also gives you the legal right to stop others from using a similar mark. A trade mark is merely a fancy legal way of saying, "This is mine. Hands off!"

What is the process of registration?

The process of registering a trade mark in the UK can be frustrating for beginners and laypersons due to its complexity. The United Kingdom Intellectual Property Office (UKIPO) is the institution responsible for the registration and management of all forms of intellectual property in the UK, including trade marks. In light of this complex and rigorous process, we have broken down the entire registration process into key steps blow:

Step 1: selecting a registrable name

For a mark to be registered by the UKIPO and gain legal protection, it must be new in relation to the goods or services in that market. It also needs to make a clear distinction between your goods or services and others.

Not all marks are registrable. When choosing a mark, be careful not to pick one from the categories below. For this reason, your trade mark cannot:

• be offensive, for example, contain swear words or pornographic images.
• describe the goods or services it will relate to, for example the word "cotton" cannot be a trade mark for a cotton textile company.
• be misleading, for example use the word 'organic' for goods that are not organic.
• be too common and non-distinctive, for example, a statement like "we lead the way."
• be just a generic shape associated with your business, for example if you sell apples you cannot trade mark the shape of an apple.
• make use of national flags you don't have permission to use.
• make use of official emblems or hallmarks, for example coats of arms.

You may not be able to register your trade mark if it's the same as, or similar to, a trade mark of another business that sells the same goods or services.

Where your trade mark application falls under the criteria above, the UKIPO will have every right to deny your application.

Step 2: selecting the right classification for your mark

The UK Trade Marks Act requires that goods and services must be classified in their right class during registration. The UKIPO applies the Nice Classification System when processing trade mark applications to ensure consistency with the international trade mark classification standards. This system is recognised globally. 

It simplifies how goods and services are classified for trade mark registration. There are a total of forty-five classes. The first thirty-four talk about goods, and the last eleven are for services. The class you choose for a trade mark depends on the goods or services you want to protect. 

Finding the right class can be tough for beginners and first-time applicants. At Trademarkia, our attorneys can assist you in choosing the right options. They will ensure your business is protected from every angle. We have also worked on a detailed Nice Classification System Guide that might assist you in your decision making. This guide applies to all jurisdictions that have adopted the Nice Classification System into their internal trade marks regime, including the UK.

Why proper classification is important: the "POD" trade mark dispute 

POD Food Ltd, a UK-based healthy fast-food chain, had registered "POD" as a trade mark under Class 43 (restaurants and catering services). However, they failed to register it under Class 29 (food products) or Class 30 (prepared meals, snacks, and beverages).

A competitor, Nestlé, later applied for a trade mark for "Nescafé Dolce Gusto POD" under Class 30 (coffee pods and capsules). Because POD Food Ltd had not registered under Class 30, they couldn't challenge Nestlé's application in that category.

The European Intellectual Property Office (EUIPO) ruled that POD Food Ltd only had exclusive rights in Class 43 and that they had no legal claim over "POD" in food products. Nestlé was able to secure the trade mark for coffee pods despite POD Food Ltd's objections.

Tips for selecting the right trade mark class:

• Be specific: your trade mark description should clearly show what your products or services are.
• Think ahead: if you plan on expanding your business, it's wise to file for additional classes to accommodate your potential trade. This will help you avoid extra costs later.
• Talk to a pro: a trade mark attorney can help you choose the right classes for your goods or services. This way, you'll get strong protection for your business.

Step 3: conducting a search

In order to ensure that your mark is unique to your products or services and that it's not already being used by another business, it's important to conduct a thorough search of the intended mark. 

In the UK, through searches are normally conducted by perusing through the weekly updated Intellectual Property Office's online trade mark journal. You can conduct your search by keying in either the number, owner, image, keyword, or phrases related to the trade mark you’re searching. Since marks are categorised into classes, it's crucial to identify the applicable Nice Classification classes for your goods or services and search within those classes.

For broader coverage, you should also consider expanding your search to international databases such as the WIPO Global Brand Database so as to get insights into similar marks registered in other jurisdictions. 

Step 4: preparing your trade mark application

Once you're sure that your mark is unique and distinctive, you need to gather all relevant and necessary information and documentation required by the UKIPO to register your mark. These information documents and information include:

• The applicant's full name, address, and contact information. If applying as a company, ensure the registered business name and address match your Companies House records.
• The trade mark. 
• A detailed and specific description of the goods or services that the mark seeks to protect.
• A statement identifying the appropriate classes associated with your goods or services.
• A declaration confirming the trade mark you seek to register will be used for commerce.
• Proof of Use (if required). If claiming an earlier right or reputation, provide evidence of prior use (e.g., sales records, marketing materials, invoices). If you've been using your brand name for years and fear opposition, provide proof of commercial use to strengthen your claim.
• Power of Attorney (if using an agent/lawyer). If you're applying through a trade mark attorney, a signed authorisation letter may be needed.
• Optional but recommended documents:

Priority claim (if applicable) - If you've applied for the trade mark in another country in the past six months, you can claim priority under the Paris Convention.

Consent letters (if necessary) -If the trade mark contains a famous name, signature, or brand, written permission from the relevant person/entity may be required.

Step 5: lodging your application

In the UK, applications can be lodged either by post or virtually. For manual applications, you're required to fill out Form TM3 and deliver it by post to the UKIPO offices. For online applications, you're required to lodge an application through the UKIPO online application portal. At the time of submission, applicants are also required to pay a filing fee, which varies depending on the type of trade mark and the number of classes applied for.

Once your application is lodged, the UKIPO will begin examining your application.

Step 6: examination 

At this stage, the registrar of trade marks examines your application to check whether it satisfies the requirements of Trade Marks Act on distinctiveness and registrability. The examination includes carrying out a search of earlier trade marks. If the requirements for registration aren't met, you'll be informed and given an opportunity to amend the application.

If you fail to amend the application as directed or fail to respond to the request to amend within the period specified in the request, the registrar will refuse to accept the application. However, if the requirements for registration are met, then the application shall be accepted.

Step 7: publication and opposition

If your application is accepted, the UKIPO will publish your trade mark in the UK Trade Marks Journal for two months. This publication is meant to give the public a chance to contest the registration of your mark if it infringes on their existing registered trade marks. 

Any person may give notice of their opposition to the registration to the registrar. The notice should be in writing and must include a statement of the grounds of opposition. Most oppositions are normally based on factors such as similarity or claims that the trade mark applied for might be misleading or generic.

Should you be faced by an opposition notice, you can handle it by negotiating with the party raising the opposition. This would involve you making concessions, such as tweaking your proposed mark. You can also address an opposition by providing evidence proving that the proposed mark is unique. In case things get out of hand, it's crucial that you hire a lawyer.

Why you should handle oppositions seriously: the case of Apple v Pear Technologies - the fruit that took on the giant

Apple once opposed an application by a startup tech company called Pear technologies that wanted to trade mark a stylised pear-shaped logo. Apple, known for its aggressive trade mark enforcement strategy, argued that the pear logo was too similar to its own apple logo. During the opposition proceedings, the European Union Intellectual Property Office ruled in favor of Apple. However, Pear technologies put up a fight and appealed the decision to the General Court of the European Union, which ruled in its favor. Apple lost the case.

Pear technology managed to take on the trade mark giant Apple because of how seriously it treated the opposition proceedings. With proper representation, even small businesses can defend their trade marks from bullying by larger corporations. 

Trademarkia has a highly skilled pool of attorneys with profound experience in handling oppositions. Our attorneys ensure that you raise proper responses to application queries and that your trade mark is well insulated from oppositions. Above that, through robust searches and classifications, we ensure that your trade mark is so unique that it can't attract any malicious opposition.

Step 7: registration

If no opposition is raised during the publication period, or if the oppositions raised are resolved, the trade mark will be registered in the register of trade marks. You'll then be issued with a certificate of registration signifying exclusive ownership rights of the trade mark.

What happens after registration?

Trade marks in the UK enjoy protection for a period of ten years from the date of registration. When this period lapses, you must renew your trade mark in order to sustain the legal protection it provides. It's advisable to renew your trade mark before the lapse of the ten years. The UKIPO allows trade mark owners to renew their trade marks up to 6 months before expiry. It's important to set automated reminders to avoid missing renewal deadlines. 

The final stand in your trade mark crusade

To assert its claim over the UK kingdom of commerce, a brand must arm itself with the right insignia-a trade mark. Historical records of the greatest wars reveal that merely carrying a sword doesn't guarantee victory. Strategy, foresight and vigilance are crucial. Look at the tale of Burger King, exiled from its own name in parts of the UK, or Lacoste, whose paper work lapse nearly cost it its iconic crocodile logo. Look at Apple, the Goliath that met its David in Pear Technologies. 

The trade mark process can be a battlefield. You need experienced soldiers, knighted in their own right, to fight by your side. With the right legal guidance, you don't have to fight alone. In fact, you don't have to fight at all. A trusted, experienced and highly skilled trade mark service like Trademarkia can guarantee a scarless claim of your rightful place in the UK market. 

Additional resources

• Common Mistakes to Avoid when Registering a Trademark
• Understanding Trademark Distinctiveness and its Importance
• Likelihood of Confusion Factors: What Are They & How Do They Work?

Glossary of legal terms

• Trade mark - a legally registered symbol, word, or phrase that distinguishes a business's goods or services from competitors.
• UKIPO (UK Intellectual Property Office) - the official UK government body responsible for registering and managing trade marks, patents, and copyrights.
• Nice classification - an international system for categorising trade marks into 45 classes based on goods and services.
• Opposition - a formal challenge against a trade mark application by another party claiming prior rights or potential confusion.
• Distinctiveness - a key requirement for trade mark registration. A mark must be unique enough to identify and differentiate a brand.
• Trade mark infringement - unauthorised use of a registered trade mark, leading to legal action by the trade mark owner.
• Renewal - the process of extending trade mark protection, typically required every 10 years to maintain exclusive rights.
• Descriptive marks - trade marks that directly describe a product or service; often difficult to register unless they acquire distinctiveness over time.
• Generic terms - common words that cannot be trade marked as they refer to general categories (e.g., "Milk" for dairy products).
• Priority claim - a mechanism allowing applicants to use an earlier trade mark filing date from another country under the Paris Convention.