The best way to protect your business name is by registering it as a trademark. Trademark is a valuable asset that not only gives you the exclusive ownership of your business name but also helps distinguish your brand from the competitors.
Let’s have a look at how registering a trademark works in the UK and what steps you need to take to obtain a trademark certification.
A trademark is a type of intellectual property that allows your products or services to stand out from those of other companies. Registering your business name as trademark ensures that it is legally attributed to your company alone. It provides protection and prevents others from imitating your brand identity. Besides business and product names, you can trademark words, logos, labels, symbols, designs, sounds, signatures, or any combination of these.
Without registering a trademark, nothing can prevent someone else from using your business name for their own line of products. If you leave your business name unregistered, your competitors can take advantage of the reputation that you have already built for your company.
Regardless of the size of your company, registering your business name as a trademark has multiple benefits:
Your business name is an integral part of your brand. A catchy and memorable name will perfectly communicate the essence of your business. However, not all names can be trademarked. Trademark names must follow the criteria set by the World Intellectual Property Organization:
You should keep your business name simple and easy to pronounce and spell. At the same time, it should still be generic enough so that it doesn’t limit the direction of your company. Business names that are made up are usually a good alternative.
If your trademark has several similar versions, you can apply for a series of trademarks. This option will give you broader protection and allow you to use your trademark in many different ways. You can apply for up to six marks in a series.
A series of trademarks allows only minor differences between marks. They must all look, sound, and mean the same. You could, for example, use the exact same word in different fonts, words in upper and lower cases, and names with slightly different spellings.
Once you have successfully registered your trademark, you can start using the ® symbol next to your business name to show that it is protected. The ® symbol should not be confused with the ™ and © symbols that don’t serve the same purpose.
You should register a trademark as soon as possible to avoid potential trademark infringements and having to change the name at a later date. Many business owners start exploring the trademark process even before creating a company. If you file a trademark application before starting your business, you will be sure that its name is legally protected when you begin selling.
The first step in trademarking your business name in the UK is conducting a comprehensive trademark search. The purpose of a trademark search is to make sure that nobody else has registered a trademark with the same or similar name. You can only trademark and use a business name that has not been previously trademarked in the same industry.
A trademark search can be done using the UK Intellectual Property Office’s (UKIPO) database. You can search for existing and expired trademarks either by trademark number, owner, keyword, phrase, or image.
In addition, the UK Intellectual Property Office’s trademarks journal shows all trademark applications accepted that week. The online journal is published every Friday.
Although you can do the UKIPO database search on your own for free, it’s strongly recommended that you seek help from a trademark attorney who will be able to conduct a more detailed search of all registered trademarks. This is particularly important knowing that most trademark disputes don’t arise from exact name matches, but from marks with confusingly similar names.
The Chartered Institute of Trade Mark Attorneys (CITMA) publishes a comprehensive list of chartered trademark attorneys in the UK.
Even if you find that a trademark with the same or a very similar name is already registered, you still have a possibility to register your trademark. In that case, you will need to contact the owner of the existing trademark and ask for permission to use it. If the owner agrees, you must obtain an official letter of consent and attach it to your application.
When registering your trademark, you will be asked to specify a class where you want to record your product or service. Because trademarks are registered to a specific class, different businesses can have the same trademark name if they belong to different classes.
Trademark classes are specified by the international Nice classification system. There are 45 trademark classes in total, 34 covering goods and products and 11 covering services. Product classes encompass everything from cosmetic ingredients and clothing to games, toys, and musical instruments. Service classes include education, food, drink and hotel services, for example.
You can register for multiple trademark classes if your product or service fits into several different categories.
When you trademark a name, it’s essential to select the right trademark class for your business, otherwise, your application will be denied. Here is what you need to do:
The Intellectual Property Office guide provides more information on how to choose a trademark class or classes that best suit your business.
Once you have decided what name you wish to trademark, completed a trademark search, and chosen the classes to register the name in, you can start the application process.
To register a trademark in the United Kingdom, you have to apply with the Intellectual Property Office (UKIPO) either by filling out an online application form or sending your application by post. You will be asked to specify what your trademark is and what classes you want it to apply to. Before submitting the application, you will have to pay the processing fee.
The UKIPO guide to new applications is a useful resource for anyone who is filing a trademark application for the first time.
An examiner from UKIPO will review your application and contact you within 20 days if there are any objections. They may find that your chosen trademark is too generic or too descriptive, or the name may be deemed offensive, for example. You will be given two months to resolve the issue.
Once your application has been accepted, it will be published in the official Trade Marks Journal for two months. Anyone who already owns a similar mark will be notified of your registration and can oppose it. Individuals who are not notified also have the right to object to your trademark registration.
You will be informed about the opposition by the UKIPO and the period of publication will be extended for one more month.
If someone objects to your trademark application, you have the following choices:
A trademark application can’t be concluded until all objections are resolved.
If there are no objections, or the objection is resolved, your trademark will be registered within two weeks of the end of the publication period. The UKIPO will then issue a certificate confirming your trademark registration.
You can expect the entire trademark registration process to take around four months if there are no objections.
The cost of registering your trademark will depend on whether you apply online, by post, through the UKIPO’s Right Start service, or with the help of a trademark attorney.
Applying to register a trademark online through the UKIPO website is the cheapest option. It costs £170 to register for a single class. Each additional class is priced at £50.
Applying by post costs £200 to register for a single class. You will pay £50 for each additional class.*
The UKIPO offers a Right Start service that verifies whether your application meets registration rules. If you use this application method, the initial cost for trademark registration is £100 and you will pay a further £25 for each additional class. If you continue with the application after receiving the report, you will have to pay an additional £100 and £25 for each class.
Hiring a trademark attorney to help you with the registration process will incur legal fee costs. While fees vary, you can generally expect to pay £200 + VAT for registering the trademark for multiple classes in addition to the UKIPO fees. Some attorneys will refund your legal fees if your registration is unsuccessful. If the attorney is helping you with the trademark search, you will have to pay around £100 +VAT for this service.
Once you have registered your trademark, you can:
After the registration, you are expected to use your trademark consistently and effectively. Trademarks that are not used in the five years following the registration can be challenged and removed from the register.
The trademark must remain the same as it was when you registered it. If you decide to change any aspects of your trademark such as font, color, or design, you will have to file a new application. Likewise, if you wish to expand your products or services into a different trademark class, you must apply for the trademark to be valid in that class.
A registered trademark is valid for ten years. At the end of this period, you can choose to renew your trademark. You must apply for renewal within six months of the trademark’s expiry date, otherwise, you will have to start a new application process.
Registering your trademark with the UKIPO provides protection in England, Scotland, Wales, and Northern Ireland. This means that businesses in other countries can still legally use your trademark. Therefore, if you operate internationally, you should make sure to register your business name in all the relevant countries.
You can also apply for a European trademark through the European Union Intellectual Property Office (EUIPO) or an international trademark through the World Intellectual Property Organization (WIPO) which will save you both money and paperwork.
In order to register for an international trademark, you must first have your trademark registered in the United Kingdom. You will need to obtain a certified copy of your UK trademark registration, known as a Certificate of the Registrar. You can either file your International application at the same time as you make your UK application or at a later date. It’s worth keeping in mind that the system that allows a series of marks is specific to the UK and in all other countries you can only apply for a single mark.
The UKIPO website offers detailed information on how to register your trademark abroad.
________
*The UKIPO is currently not accepting applications by post or fax, but these options may be available again at a later date.
