How to register a trade mark – key points to consider


23rd April 2021

Knowing how to register a trade mark and what to do to protect your business assets is crucial for everyone. This includes small to medium-sized business owners and entrepreneurs, not just supermarket giants.

What you need to consider to register a trade mark:

  • What you want to trade mark
  • What you want to protect your trade mark for
  • Where you want to register your trade mark
  • Are there any earlier rights holders who could challenge your trade mark application

What do you want to protect?

First you need to decide what you want to protect, trade marks can be a variety of things that could be distinctive of your business. This could be words, a logo, a cake in a box, a sound, a video or even a smell. Lots of things are registrable.

The key here is that the trade mark needs to be distinctive and show consumers where the goods or services in question came from. You can’t protect a purely descriptive word or other mark that’s not distinctive. For example, you couldn’t trade mark ‘green grocer’ for a shop selling fruit and vegetables because that would be unfair on everyone else.

What do you want to protect it for?

Trade marks don’t give blanket protection and as an applicant you need to list the goods/services that you want to cover. These goods/services fall into one (or more) of 45 different categories of goods/services (known as classes). The Intellectual Property Office (IPO) publishes a list of the class numbers and examples of the goods/services that fit in these classes but it is not an exclusive list.

Once filed the application can only be amended negatively i.e. by deleting goods/services, it can’t be added to. This is an area where we often see clients slip-up, missing goods/services from the list or not thinking far enough ahead with goods/services for which the business may expand to in the near future. The flip-side of this particular issue (that we also see) is that when filing the application you need to give a declaration that you intend to use the mark for everything listed, you therefore need to be careful to avoid the temptation of throwing in irrelevant goods/services as it may cause problems down the line, with other parties potentially able to argue that the mark is not valid.

Where do you want to register your trade mark?

This is split up territorially and the simple answer is to register your trade mark in each country that you would be looking to market to. The UK IPO registers trade marks in the UK for example. There are shortcuts though, e.g. an EU registered trade mark for all the member states and a similar set up through the OAPI and ARIPO systems in Africa. There is also the WIPO International Registration but that’s a bit of a misnomer as it’s essentially a bundle of national registrations administered centrally through WIPO rather than a genuinely worldwide right.

Clearance checks

Perhaps the most important part of the process, and something often overlooked by clients, is clearance checks. These are vitally important as you need to check to see if anybody has any earlier rights that may be used to challenge your application, or (more importantly) to prevent you from using the trade mark. It is always best to use specialist lawyers to check this as whilst you can have a look on the IPO website (ipo.gov.uk) it only has fairly limited search functionality and doesn’t provide you with any advice as to whether, or not, any marks you identify are likely to be problematic.

Key points for registering your trade mark

There are essential things to note when it comes to registering your trade mark. Getting the list of goods and services right on the application is critical. Take a step back, think about what you want to protect it for, and write a list. Having an experienced trade mark lawyer with the relevant expertise to ask the right questions to get the list correct could be crucial for your business. You cannot update the trade mark if you look to expand your business, you would have to file for another trade mark. The only thing you can do is narrow your trade mark.

Once submitted, your trade mark application will go to an examiner who will check what you have is it descriptive or distinctive? Is it capable of being a trade mark? Is the list of goods/services acceptable? Are there any earlier rights holders that will be notified? If rejected, you may be able to amend the application to get around the objection or, alternatively, can submit arguments explaining why you disagree with the rejection, ultimately this can involve an appeal to a more experienced examiner to argue that the examiner got it wrong.

If the application is accepted then there is a two month period during which applications can be opposed, so it can be a nervous time for those applying, although proper clearance checks should ease anxiety. If there is an opposition, then you will have the opportunity to defend the application, filing arguments, evidence and potentially even arguing your case at a hearing.

How can Blake Morgan help?

We have the expertise to register your trade marks, tackle any issues that may arise and ensure that you are aware of everything throughout the process. We can contest any opposition and make your application goes as smoothly as possible. Contact our trade mark lawyers to ensure you have the right protection for your business.

If you have been affected by anything in this article

Speak to one of our intellectual property specialists

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