Step-by-step guide to applying for a UK trade mark online

This step-by-step guide to applying for a UK trade mark online tells you how to apply online to register a UK trade mark. If your application is straightforward, you can usually make the application yourself (without needing a lawyer). Use this guide to assist you with completing each field of the UK online trade mark application, including who is applying for the trade mark, owner details, description and class of the trade mark, priority date, type of trade mark, and more. This step-by-step guide to applying for a UK trade mark online can save you time, by helping you to complete the form correctly (which reduces the risk of follow up questions from the UK Intellectual Property Office (UK IPO)). If you would prefer to apply for your UK trade mark by post using a paper form, see Step-by-step guide to filling in the UK trade mark application form . You can also buy this guide as part of the Protecting IP and confidential information toolkit .
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Step-by-step guide to filling in the UK trade mark application form

This step-by-step guide to filling in the UK trade mark application form guides you through the process of completing the paper application form for applying for a UK trade mark (Form TM3). This can be emailed to the IPO as a PDF, or posted. You will need to complete various details, such as owner details, description and class of trade mark, type of trade mark, priority date, and more. Usually you can apply for the trade mark yourself if your application is straightforward (without the need for a lawyer). Completing the UK trade mark application form correctly will reduce the risk of follow up questions from the UK Intellectual Property Office (UK IPO) which saves you time. Note that alternatively you can apply online for a UK trade mark, which is cheaper. See Step-by-step guide to applying for a UK trade mark online . You can also buy this guide as part of the Protecting IP and confidential information toolkit .
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Names and logos: Trade marks
Identifying a trade mark in business situations
Q1:What is a trade mark?

A is generally a name or logo (or combination of both) which you use to distinguish your and/or services from those sold by another business, and to identify yourself as the source of those and/or services.

For example, Pepsi and Coca Cola produce similar drinks, but they have trade-marked their unique names and to create a clear brand identity and help customers distinguish their products.

Most people think of names or when they think of , however can actually cover a very wide variety of things.

For example, you may be able to register a over:

  1. words (eg the 'Volvo');

  2. words and pictures combined (eg the Fujitsu );

  3. (eg the Mac OS logo);

  4. slogans (eg the Audi strap line 'Vorsprung Durch Technik');

  5. 3D shapes (eg the Toblerone box shape);

  6. colours; and

  7. sounds (eg the Metro-Goldwyn-Mayer lion roar which is played when their logo appears at the start of their films).

See Q&A 2 for information on recognising a .

Q2:How do I know if something is a trade mark?

For a word or logo, it is common for a owner to use the word 'registered' or the symbol '®' alongside their (although you should note that the symbol 'TM', while often used in the , does not necessarily indicate that something is registered as a ).

Where there is no symbol indicating registration, or where the is something such as a sound or the shape of packaging, there are various online searches you can do to find out if something is a . For further information on how to search for , see Q&A 16 and following.

Even if you cannot find the on these registers, and there is no symbol indicating registration, you should avoid copying anything which your competitors use that may be a , eg branding or packaging. This is because they may still be able to stop you copying them even if their idea is not a . They could sue you for your as theirs.

Q3:Should I register my company name or logo as a trade mark?

Yes. Registering a name or logo as a gives you the following three key benefits:

  1. if someone else applies to register any branding that is too similar to your , for the same or similar or services, you can object. If your objection is justified, the offending will not be registered. Note that this protection does not extend to similar branding for a different type of business. For example, if you register 'Clean-Right' as a for cleaning services, nobody could register 'Clean Rites' as a for anything to do with cleaning services – but they could potentially register it as a for funeral services because that has nothing to do with cleaning. See Q&A 80 and following for how to object to someone else's application.

    You have the exclusive right to use the for 10 years, and you can renew a for a further 10 years as many times as you like;

  2. if another business infringes your rights, you can take legal action to stop them. This stops competitors benefiting from the reputation of your brand by using the same or similar branding on similar or services or on different or services if it tarnishes, degrades or takes unfair advantage of your brand reputation. For example, using the branding 'Royal Shakespeare' for drinks and bar services takes unfair advantage of the established brand of the Royal Shakespeare , even though the two businesses are quite different;

  3. your business's reputation and can have a real commercial value, and registering a is an easy way to ensure your hard work is protected. It is much easier to enforce a than to enforce branding that you have simply built a reputation on over time, so a will make your business more attractive to potential buyers, investors or franchisees in future. You can also profit from your by allowing certain people to use it, on the condition that they pay you or give you a percentage of the profits they make from using it. See Licensing your intellectual property for more information.

However, note that you cannot prevent your competitors using your branding to show an accurate, fair, and objective comparison between your product and theirs or from using their own names or addresses, even if those are in your

See Q&A 4 for guidance on what a can cover, the cost of submitting a application and the procedure for doing so.

Before seeking to register something as a you should consider two things. First, is there a word, logo, shape, colour, or sound which is so important to your business that you wish to pay a fee to prevent other people using it? Second, does what you want to meet the criteria for registration (see Q&A 4)? If the answer is 'yes' to both of those questions, then you should start the process of registering a as soon as possible.

See Step-by-step guide to applying for a UK trade mark online, Step-by-step guide to filling in the UK trade mark application form and Step-by-step guide to applying for an EU trade mark online for how to register a or . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Q4:What can I register as a trade mark?

There are three broad criteria for a to be registrable in the or , the last of which is simply a number of things that you are specifically forbidden from including within your (eg national flags).

  1. Your mark must be capable of clear representation in your application. See Q&A 5 for more information;

  2. Your mark must be distinctive. See Q&A 6 for more information;

  3. Your mark cannot fall within the list of prohibited or objectionable types. See Q&A 7 for more information.

In the or , you can register various types of including names, , shapes, sounds, motions, and more. The rules for what can be registered as a in the or are very similar. An must comply with the rules in every country in which you want to register it. The law of individual countries outside the is beyond the scope of this service.

Note that can actually cover a very wide variety of things beyond your business name and logo including 3D shapes (eg the Toblerone box shape), colours (eg Cadbury Dairy Milk purple), a colour applied to a shape (eg the Louboutin red heel) or even particularly distinctive slogans (eg the Audi strap line 'Vorsprung Durch Technik'). It is also now possible to register motion or sounds (eg a recording of a 's logo which has moving parts). You can apply for a in the or by representing it graphically (for example on paper or as a JPEG) or by submitting an audiovisual file (such as an MP3 or MP4).

A is used to distinguish your or services from those sold by another business and to identify you as the source of those or services. It is sensible to register your business's name and any logo as if you can to prevent your competitors intentionally or inadvertently copying your brand and to make it easier to stop them if they do (see Q&A 3). Not everything can be registered as a . If you are unsure whether your brand fulfils the requirements, there is little harm in applying to register it in the anyway to see whether the office raises any issue. It will cost you the application fee if you fail (see Q&A 40 for how much this will be). See Step-by-step guide to applying for a UK trade mark online and Step-by-step guide to filling in the UK trade mark application form for how to register a . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Alternatively, you can seek legal assistance with making your application, but it will cost you extra time and money. For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Q5:What does the requirement that the trade mark is capable of clear representation in the application mean?

This requirement will not be a problem for the majority of applications.

In the or , you can either draw or otherwise represent your on paper (known as graphical representation) or use other generally available technology, eg using an audio or audiovisual file, if appropriate, for the purposes of presenting it for application. Your must be represented clearly and precisely, so that the relevant authorities and members of the public can understand what you are trying to protect. If you are filing a other than a name or word in standard text, the government has advised that your representation can be filed in the following formats; unless otherwise stated, the file you submit must be no more than 20MB and if you are applying for a series of marks, the size of the series of files together must total no more than 20MB:

  1. 3D shape mark: OBJ, STL, or X3D format file not exceeding 20 MB in size, or up to six JPG or JFIF format files not exceeding 4 MB in size combined);

  2. , patterns, or colours: must be in a single JPG or JFIF format file not exceeding 4 MB in size;

  3. Sounds: MP3 (2MB maximum) or (for musical notations) a single JPG or JFIF format file not exceeding 4 MB in size;

  4. Motions or holograms: must be in a single MP4 format file not exceeding 20 MB in size, or in a single JPG or JFIF format file not exceeding 4 MB in size; and

  5. Multimedia: must be in a single MP4 format file not exceeding 20 MB in size.

If you are applying for an other than a name or word, you can file your representation in the following formats:

  1. Shapes: JPEG OBJ STL X3D

  2. , positions, patterns or colours: JPEG

  3. Sounds: JPEG, MP3 (max 2MB)

  4. Motions or holograms: JPEG, MP4 (max 20MB)

  5. Multimedia: MP4 (max 20MB).

See Q&A 6 and Q&A 7 for information on further criteria for registering your .

Q6:What does the requirement that the trade mark application must be distinctive mean?

This means that the must clearly show customers that the marked or services come from your business, and must distinguish your or services from those sold by your competitors.

The test for whether a is sufficiently distinctive to set you apart from your competitors can be complex. Your should pass this test if it comprises:

  1. a stylised logo with or without any words (which can be a moving image, hologram or multimedia)

  2. invented words (such as Sparqa)

  3. words which have no link to the products or services you sell (such as Apple for computers or Red Bull for drinks)

  4. an unusual combination of two descriptive words.

    For example, ‘Dry Baby’ for a nappy brand is simply a description and not a registrable . However, ‘Baby-Dry’ is an unusual combination and is therefore a registrable .

    Generic words or phrases are not distinctive enough to be a , eg 'Luxury Beds'. Similarly, it is unlikely that your will be distinctive if you name it after a place (eg ‘Cornwall Windsurfing') unless your brand has such a strong market presence that people always think of your business when they say those generic words. The broader the recognition of your brand, the more likely it is that you can it even if it is a generic phrase.

    Note that, generic words are acceptable if they form part of a distinctive logo, eg 'Period Property Preservation' is too generic to be a itself, but as part of a distinctive logo, it can be.

  5. an unusual or distinctive shape (eg of a product or its packaging)

    It is difficult to just a shape in the absence of any logo or other branding printed on it, but it is possible for truly unusual or unique shapes to be (eg the front grille of a Jeep is distinctive or the combination of the shape of the Louboutin heel and the distinctive red colour).

  6. an unusual or distinctive sound (eg the 'I'm Lovin' it' jingle by McDonald's).

See Q&A 5 and Q&A 7 for information on further criteria for registering your .

Q7:What is the list of prohibited or objectionable trade mark types?

The list is set out below.

Your application is likely to be challenged or rejected outright if your proposed :

  1. is the basic or necessary shape of your particular type of good (eg the standard shape of a slab of chocolate or some other necessary characteristic (eg a repetitive high pitched sound as part of a fire alarm);

  2. is deceptive (eg the mark 'Woolpoint Suits' for clothing not made of wool);

  3. is immoral (eg which glorify terrorism, blaspheme, or use the name of violent gangs) – note that this does not prohibit crude ;

  4. mentions specialist wines or location-specific foodstuffs when your product(s) do not come from there (eg using the word ‘champagne’ in your when you sell wine from a different area);

  5. uses national symbols or flags, without the consent of that country;

  6. includes anything which suggests it has royal authorisation or patronage, without the consent of the royal family, or includes anything which looks like a coat of arms; or

  7. includes any references to the Olympics, Olympians, Olympiads or the word ‘Anzac’.

See Q&A 5 and Q&A 6 for information on further criteria for registering your .

Preparing to register a trade mark
Q8:What should I do before I apply to register a trade mark?

In most straightforward and cases, you can make your application yourself – you do not need a lawyer or , although you can use one if you wish. For information on when it is appropriate to instruct a lawyer or and how you can do this, see Q&A 44. If you intend to make your application yourself, you have some initial decisions to make before you start filling in the form. Before you start your application, you should:

  1. decide where you want to register your See Q&A 9 for further information;

  2. decide what mark or marks you want to register. See Q&A 13 for further information;

  3. decide what products and services you want your to cover. See Q&A 14 for more information;

  4. check your proposed or marks are not too similar to any existing or recently expired on the relevant register. See Q&A 15 for further information.

The provides a free service to help you check if your can be registered. This tool is aimed at helping you understand whether your could be accepted by:

  1. helping you check if any existing similar to yours could cause conflict;

  2. helping you to identify the classes of and services you want to protect your for; and

  3. identify whether your may be inappropriate (for example, containing offensive words or protected symbols).

However, the do not examine or register you submit through this tool and an approval through the tool does not that the will register the . You will still need to go through the usual application process after using the online checker tool.

Q9:Where should I register my trade mark?

You can register your in the , across the and/or internationally. All registrations last for 10 years and can be renewed indefinitely in further 10-year periods. Which is most suitable for your brand will largely depend on where you do business.

See Q&A 10 for whether to apply for a in the .

See Q&A 11 for whether to apply for an .

See Q&A 12 for whether to apply for an .

Q10:Should I apply for a trade mark in the UK?

A will protect your brand solely in the . See Q&A 45, Step-by-step guide to filling in the UK trade mark application form and Step-by-step guide to applying for a UK trade mark online for how to register a . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Applications usually take in the region of four to eight months. Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

If your business will be -focused, and the existence of a competing abroad would not affect you, then a will be enough protection.

See Q&A 11 for whether to apply for an .

See Q&A 12 for whether to apply for an .

Q11:Should I apply for an EU trade mark?

You can register an to protect your brand throughout all 27 countries in the at once. See Q&A 47 and Step-by-step guide to applying for an EU trade mark online for how to apply for an . Applications usually take in the region of four to eight months.

If you expect to expand your business beyond the then you should consider applying for either an or an . It will usually be cheaper and administratively easier to register your as an or than to register separate in each country. Note, however, that if your is struck down (eg because it infringes an existing ) in one country, it will cease to be effective in all of them. If you anticipate problems registering in some countries and not others, it can be tactically sensible to apply to countries individually.

See Q&A 49 for further guidance on the effect of Brexit on .

See Q&A 10 for whether to apply for a in the .

See Q&A 12 for whether to apply for an .

Q12:Should I apply for an international trade mark?

You can register an to protect your brand in any or all of the numerous members who have signed up to the . If you are based in the and wish to apply for an , you must first make an application, or already hold a registration, for a or an .

See Q&A 50 for how to apply for an . You can apply for protection in any combination of the participating countries or territories. Your proposed must satisfy the criteria for a under the law of every country in which you wish to register it. For example, if you wish to register a logo as a in Japan, New Zealand, and the USA, your logo must satisfy the different legal requirements of each country to be registered there.

Note that the waiting period for an application is much longer than for the or equivalent – 12 to 18 months depending on the countries or territories in which you wish to register. Also note that due to the end of the Brexit transition period on 31 December 2020, international designating the are no longer valid in the (see Q&A 49). However, to ensure that protection in the is continued, the has automatically created comparable rights. You can check the details of your comparable by searching here.

See Q&A 10 for whether to apply for a in the .

See Q&A 11 for whether to apply for an .

Q13:How do I decide what mark or marks to register?

You need to think carefully about exactly what you want to register as your or marks. You can register words, , colours, sounds, the shape of or their packaging or any combination of these. See Q&A 4 for full details of what can be a . You can register up to six marks on one application, so long as they are very similar to each other. You can make as many applications as you wish, although each one will incur a separate fee.

What mark or combination of marks you choose to register will depend on your chosen branding, but you should think about:

  1. Simple word

    You can register your in capital letters, lower case letters, or a mixture. They must be very similar to register together in a single application (known as a ), eg 'Sparqa', 'sparqa' and 'SPARQA' could all be registered together.

    You can also register common misspellings of your eg Judgment Day Events and Judgement Day Events could be registered together in a single application.

  2. Simple word which include some minor stylisation

    You can register simple words and slightly stylised version of those words together on a single application. The stylised versions cannot be distinctively different from the simple word version of the if you wish to register them together on the same application. For example, you can usually register the same word in different font combinations in one application.

  3. Image , or word which involve colour

    You can register your in black-and-white, colour and/or greyscale. You should register the colour combinations that your business will likely use. Note that a registered black and white will not automatically protect your brand from imitation in all colours. A greyscale is more likely to do so, eg if the colour version uses the same contrast of shading, but it also does not necessarily offer absolute protection.

    Note that, if you apply to register a coloured mark, you should choose colours by reference to an internationally recognised colour identification system such as Pantone.

  4. Non-traditional such as holograms or multimedia

    You can also register your in the form of an audiovisual file, such as a hologram or multimedia file, provided your is clear and distinctive and fulfils the other requirements for a valid . For example, Bio-Active was permitted to register its logo as a hologram , whereas an application made by Bang & Olufsen to a video of a pair of moving hands was rejected by the as the proposed was not distinctive enough. Your non-traditional must be submitted in the appropriate format, and comply with the relevant size limits; see Q&A 4 for further guidance on what can be registered as a .

Q14:How do I decide what products and services I want my trade mark to cover?

Your competitors are only barred from using similar branding to your in respect of similar products or services, so being clear about what products and services your brand will cover is important For example, the word 'Galaxy' is separately by Mars for confectionery and Ford for motor vehicles.

You can register one for more than one type of product or service if you wish. You should try to anticipate how your business will grow over the next 10 years when deciding what you will use your for, but it is important to be realistic – if you do not use your for all of the things your register it for, it can be open to challenge by someone wishing to use it for one of your unused categories.

If a court finds that you have deliberately sought broad protection for categories of or services that you are not intending to use the for, and you did not foresee that you would use the for those categories, part or all of your may be invalidated.

Q15:How do I check my proposed trade mark or marks are not too similar to any existing or recent expired trade marks?

Avoid wasting your time trying to register something that is too similar to an existing ; such an application will be refused outright, or you will likely receive an objection from the holder of the similar , seeking to protect their own brand. See Q&A 16 and following for how to conduct a search for , and international , and see Q&A 36 for how to tell whether your proposed may be at risk of objection.

The provides a free service to help you check if your can be registered. This tool is aimed at helping you understand whether your could be accepted by:

  1. helping you check if any existing similar to yours could cause conflict;

  2. helping you to identify the classes of and services you want to protect your for; and

  3. identify whether your may be inappropriate (for example, containing offensive words or protected symbols).

However, the do not examine or register you submit through this tool and an approval through the tool does not that the will register the . You will still need to go through the usual application process after using the online checker tool.

Searching for registered trade marks that apply in the UK
Q16:How do I search for trade marks and trade mark applications that apply in the UK?

The easiest way to do this is to use the 's trade mark search engine. This facility will bring up that are applicable in the , which include:

  1. National ;

  2. ; and

  3. International designating the or the .

See Q&A 4 for further information about what these various types of mean and how the registration process works.

The 's search engine gives you the option to search by:

  1. trade mark number;

  2. owner of the trade mark; or

  3. keyword, phrase, or image.

The facility is designed to be easy to use, with helpful guides throughout. Follow the steps on screen and, where necessary, consult the guides. The search engine will bring up the filtered results, providing you with registered and also recently expired , as well as those that are still in the application stage. See Q&A 17 for information about things you can do to make sure your searches capture the results you are looking for and Q&A 22 for information about understanding the results of your search.

Note that you cannot do the following searches using the 's search engine:

  1. You cannot search for or international by owner. If you want to search for an by owner, see Q&A 18 for how to do this. If you want to search for an by owner, see Q&A 20 for how to do this.

  2. You cannot upload an image of your and search for similar . This function is available in the 's search engine, eSearch plus. See Q&A 19 for further guidance.

  3. Unless you have the application number, you cannot search for applications designating the or . See Q&A 21 for information about how to search for applications.

Q17:How do I make sure I find all relevant results when using the UK IPO trade mark search function?

There are various things you can do in order to make sure that your searches capture what you are looking for. Detailed guidance can be found in the 's Help Guide.

Some key points are as follows:

  1. Search the register in a variety of ways to ensure your search is comprehensive. For example, if you want to know what products a competitor has , you should search using the competitor's name (as owner) as well as, for example, keywords related to the relevant products.

  2. When searching for words, you can search by 'Similar', 'Exact', 'Contains string', 'Contains word' or 'Starts with'. These will return the following:

    1. exact – matches that sound like exactly what you have typed in (eg searching 'mark' will return the matches like 'mark', 'mark.' and 'marc');

    2. similar – matches with only minor differences, such as slight spelling differences, words that sound similar or phrases that have the word in them (eg searching 'mark' will return matches like 'Mark II', 'Marc Jacobs' and 'Member's Mark');

    3. contains string – matching strings of text or numbers within a word (eg searching 'mark' will return matches like 'Aromark' and 'Marks & Spencer');

    4. contains word – matches with the exact word contained within the (eg searching 'mark' will return matches like 'Take Your Mark' and 'Mark by Marker').

  3. You can use the 'All words' option to search for which contain all of the words you are searching for. This will be a narrower search than using the 'Any words' option, which will return all results with one or more of your search terms in them.

  4. You should not use most punctuation/characters (eg hyphens or full stops) within your search as it can break up the search terms. For example, 'Smith's' should be entered as 'Smiths'.

  5. Be aware that searching by owner of the can lead to misleading results. For example, 'Nike Inc.' is not the owner of the majority of Nike's best-known in the ; those are owned by 'NIKE Innovate C.V.'. Therefore, you must make sure you know exactly who owns the for which you are searching if you are relying on the owner search function.

  6. If too many search results are returned, you may need to break your search down further. You can do this by narrowing down the options using the points above, or selecting a classification (see Q&A 30), a filing date (see Q&A 31) or a particular status (see Q&A 24 and following) in the search engine.

Once you have completed your search using the 's search engine, consider an additional search using the 's search engine, eSearch plus by uploading an image of your . eSearch plus will use image recognition technology to find similar . See Q&A 19 for further guidance.

Q18:How do I search for EU trade marks and trade mark applications by owner of the trade mark?

You cannot use the 's search engine function to search for and applications by owner. If you want to find an or application by owner, you will need to use the 's search engine, eSearch plus.

Simply type the name of the owner into the search engine and, when the results appear, click on the panel entitled 'Owners'. Clicking on the name of the owner will then bring up all of the registered to them.

You should also be aware that searching by owner of the can lead to misleading results. For example, 'Nike Inc.' is not the owner of the majority of Nike's best-known in the ; those are owned by 'NIKE Innovate C.V.'. Therefore, you must make sure you know exactly who owns the for which you are searching.

Q19:Can I upload an image of my trade mark and search for similar registered trade marks?

Yes, if you use the 's search engine, eSearch plus. This is a good way to improve your chances of finding a relevant . Note you cannot conduct a search by uploading images to the 's search engine.

To maximise your chances of a successful search:

a) Upload high quality images with neutral backgrounds. Try to eliminate any shadows, noise or other pictures in your image.

b) Make sure your entire image is captured within the selection frame.

c) Use different types of representation of your such as pictures, drawings, etc and conduct separate searches. If you only upload a photo, the system will return mainly photos in the top search results.

Q20:How do I search for registered international trade marks by owner of the trade mark?

You cannot use the 's search engine function to search for international designating the or if you are searching by owner. If you want to find an by owner, you will need to use 's Global Brand Database search engine.

Simply click on the 'Names' heading and type the name of the business or person in the 'Holder' box. Then click 'search'. The results will appear in a table at the bottom of the screen.

You should also be aware that searching by owner of the can lead to misleading results. For example, 'Nike Inc.' is not the owner of the majority of Nike's best-known in the ; those are owned by 'NIKE Innovate C.V.'. Therefore, you must make sure you know exactly who owns the for which you are searching.

Q21:How do I search for international trade mark applications?

You cannot use the 's search engine function to search for applications, unless you have the number. If you want to find an application, you will need to use the WIPO Gazette of International Marks.

To search for international by keyword or by the name of the person or business making the application, you should click on the 'Search by Registration Number or Mark or Holder'. If using a keyword, type your entry into the 'Mark' box and if by the owner, type it into the 'Holder' box.

You should search the register repeatedly using a variety of similar phrases to ensure your search is comprehensive. For example, if you wish to search for 'apple', you should search 'apple', '@pple', and 'apples'. Between each search, you should click the 'Reset' button.

You should also be aware that searching by owner of the can lead to misleading results. For example, 'Nike Inc.' is not the owner of the majority of Nike's best-known in the ; those are owned by 'NIKE Innovate C.V.'. Therefore, you must make sure you know exactly who owns the for which you are searching.

Understanding trade mark search results
Q22:How do I understand the results of a trade mark search?

There are various elements to the results of a search. These include:

  1. number (see Q&A 23 for guidance on what numbers mean);

  2. status of the (see Q&A 24 and following for guidance on what the most common statuses mean);

  3. classification of the (see Q&A 30 for guidance on the different classes);

  4. filing date, date of entry in register and renewal date of the (see Q&A 31 and following for guidance on dates); and

  5. priority or seniority of the (see Q&A 34 and Q&A 35 for guidance on what priority and seniority details mean).

The UK IPO's glossary of terms is a helpful tool for interpreting the results of your search.

Q23:What does the trade mark number mean?

are given unique identifying registration numbers ( numbers). The letters at the start of the number indicate the type of it is. The types of applicable in the are indicated by the following letters at the start of the number:

  1. '' – a mark registered by the ;

  2. '' – a mark registered at the ;

  3. 'WE' – an that has effect across the ; and

  4. 'WO' – an that has effect in the .

Note that registered before 1 January 2021 no longer provide protection in the . To ensure that protection in the continues, the has created comparable rights for all such registered . These comparable are recorded on the register and treated as if they had been applied for and registered under law. They retain the filing dates (see Q&A 31) and any priority/seniority dates (see Q&A 34 and Q&A 35) registered to the , and have been given a new registration number (being the last eight digits of the prefixed with 'UK009').. You can find the details of your comparable by searching here.

Q24:What does the trade mark status 'registered' mean?

The status 'registered' means that the is currently registered and legally protected.

See Q&A 4 for information about the process for registering and Q&A 54 for information about renewing .

Q25:What does the trade mark status 'expired' mean?

The status 'expired' means that the has expired and not been renewed. Note that this does not necessarily mean the is no longer protected, as the owner of the expired may be allowed to restore their expired within one year of expiry. If this happens and a person has registered a that was too similar to the renewed mark, they may not be permitted to continue using the even if it was successfully registered.

See Q&A 4 for information about the process for registering and Q&A 54 for information about renewing .

Q26:What does the trade mark status 'dead' mean?

The status 'dead' means that the has expired (not been renewed) and the period for restoring the to the register has expired. The is no longer valid or legally protected.

See Q&A 4 for information about the process for registering and Q&A 54 for information about renewing .

Q27:What does the trade mark status 'examination' mean?

The status 'dead' means that the has expired (not been renewed) and the period for restoring the to the register has expired. The is no longer valid or legally protected.

See Q&A 4 for information about the process for registering and Q&A 54 for information about renewing .

Q28:What does the trade mark status 'application published' mean?

The status 'application published' means the application has been accepted and published in the 's Journal. Others are able to oppose the application on valid grounds (usually that the is too similar to an existing ).

See Q&A 4 for information about the process for registering and Q&A 54 for information about renewing .

Q29:What does the trade mark status 'opposed' mean?

The status 'opposed' means someone has filed an opposition to the application for the registration of the .

See Q&A 4 for information about the process for registering and Q&A 54 for information about renewing .

Q30:What does the class or classification of a trade mark mean?

are always registered in certain classes of or services, depending on what type of good or service the is being used for. You are permitted to register a that is similar to an existing , provided it is registered in a different class.

The classes of a are shown in your search result under the tab 'List of ' or 'List of services'. There are 45 classes in total, and the classification system is often referred to as the 'Nice Classification'. are listed in classes 1 to 34, and services are listed in classes 35 to 45.

Remember that the type of or service you provide may change over time, so it is prudent to also check any registered under classes of or services that you intend (or are likely) to provide in future, to see if these are too similar to your proposed .

For more information about registering , see Q&A 4.

Q31:What does the filing date in a trade mark registration mean?

The filing date is the date on which the application was filed at the relevant office.

For more information about registering , see Q&A 4.

Q32:What does the date of entry in register in a trade mark registration mean?

The date of entry in register is the date on which the registration process completed.

For more information about registering , see see Q&A 4.

Q33:What does the renewal date in a trade mark registration mean?

The renewal date is the date on which the is due to be renewed.

For more information about registering , see see Q&A 4.

Q34:What do the priority details in a trade mark registration mean?

Priority details relate to the date on which a is first protected.

A person who has already applied to register a in one of the countries or territories on this list has what is known as priority if they then apply to register a elsewhere within six months of the first application; the second will be protected from the date on which the first application was made. The person gets this protection even if the original application ultimately fails.

For example, imagine you apply to register your logo as a French under French law on 1 January 2018. If you apply for a before 1 July 2018, and your application is successful, your will have protection from 1 January 2018. In other words, the protection is back-dated to your earlier application.

If the has priority, the following details will show on the result:

  1. priority date – the date of the earlier international priority claim;

  2. priority country – the country where the earlier application was filed;

  3. from which priority is claimed – the earlier 's number or reference; and

  4. claim – the extent of the priority claim (whole or partial). If the priority claim is whole, this means that the earlier date is valid for all and/or services in the application. If the priority claim is partial, the earlier date is claimed for some of the and/or services included in the application. See Q&A 30 for further information about classification.

Q35:What do the seniority details in a trade mark registration mean?

Claiming seniority is a process that holders can go through when they are making an application, in order to consolidate identical earlier .

Where an applicant for an holds an identical national or registration with effect in one or more (in respect of the same or services), they can claim seniority in their application. If seniority has been claimed and they their earlier national , or allows it to lapse, they will continue to have the same rights as if the earlier had continued to be registered; they therefore do not need to renew the earlier registration because they are protected under their . The applicant can claim seniority at the time of their application or within two months of the application.

If an has seniority, the following details will show on the result:

  1. registration number – the registration number of the earlier national or ;

  2. country – the country of registration of the earlier national or ;

  3. filing date – the date the earlier national or application was filed; and

  4. status – whether or not the seniority claim has been accepted as valid.

Q36:What happens if my proposed trade mark is similar to someone else's trade mark?

If you attempt to register a that is too similar to a competitor's, they are likely to object. The process of registration then becomes much more complex, and you may not be successful. You should also check whether similar to yours have expired within the past year, as the owner of the expired may be allowed to restore their expired within one year of expiry. If their earlier was too similar to yours and is restored to the register, you may not be permitted to continue using your even if it was successfully registered.

The best way to check if your mark has already been registered, or is in the process of being registered, is to check the relevant registers and records of current applications for any identical or similar-looking marks.

For how to search the registers, see Q&A 16. For how to tell whether your proposed may be at risk of objection, see Q&A 37.

Q37:How can I tell whether a competitor might object to my trade mark application?

Your proposed will be at risk of objection in the or if:

  1. Your is too similar to a that is already registered or recently expired

    Both:

    1. the two marks are very similar (ie any differences are so minor, the average customer would not notice, or would find them confusingly similar); and

    2. you are trying to register your mark in identical or similar classes of or services to the existing one.

    So, if you find a similar mark to your branding operating in a completely different area, it should not be a problem for your application. For example, 'Galaxy' is registered by different for cars and confectionery.

    Note that can be considered similar to services. For example, car servicing could be too similar to selling car parts for a similar looking , and would be very likely to attract a valid objection from the holder of the earlier mark. Selling computer programs and selling computer programming services could equally be too similar, or selling food products and selling restaurant services.

  2. Your takes unfair advantage, or harms the reputation of a that is already registered or recently expired

    Your application will likely attract a valid objection if:

    1. it is too similar to an existing mark; and

    2. your mark takes unfair advantage or harms the reputation of the registered mark.

    For example, if your use of a similar or identical mark brings the into disrepute (eg by using it on cheap imitation or services) then you will have harmed the 's reputation. The more distinctive or well-known the earlier , the more likely you are to harm its reputation by using or approximating it in some way.

    Note that the for the existing mark do not have to be in the same class as your application for the above to apply.

    Even if you do not harm the reputation of the existing mark, you may be taking unfair advantage by using a similar mark with the intention to profit from the association with the existing mark or a famous brand. For example, a that applied for the 'TRUMP TV' but had no connection with Donald Trump was found to have filed for the in bad faith, and had its application refused.

The trade mark registration process
Q38:When should I register my trade mark?

It is sensible to register your once you have settled on branding for your business. After you have registered your , you have exclusive rights to use them and can block competitors from registering branding that is too similar to yours.

There is legal action you can take to protect your branding without registering any (see Options for dealing with infringements to intellectual property). However, any unregistered branding is only really protected if someone is misleading your customers by using something similar.

The only important time limit to bear in mind applies if you have already applied to register your in the or abroad as a national in one of the countries or territories on these lists. If you have done so, and you apply to register a , , or elsewhere within six months, your second will be protected from the date on which you applied for your first abroad. You get this protection even if your original application ultimately fails. For example, imagine you apply to register your logo as a French under French law on 1 January 2018. If you apply for a before 1 July 2018, and your application is successful, your will have protection from 1 January 2018. In other words, the protection is back-dated to your earlier application. If you miss the six-month deadline, your application can still be accepted but your protection will only start from the date you made your -based application.

If you are considering applying for an , you should bear in mind that since Brexit, you may need to take additional steps to ensure your is protected in the . For further guidance see Q&A 49.

Q39:How long will it take me to register a trade mark?

For straightforward applications where nobody objects to your registration, it usually takes between three and eight months to obtain registration of a or an . For international , the normal timescale is longer – between about 12 and 18 months.

However, if any objection is raised over the registration of your (eg over whether it is too similar to an existing ) the process can take much longer. If there is a dispute, it will likely take at least six months longer to register your (assuming it is resolved in your favour), and potentially even longer than that.

If you are concerned about the length of time your registration is taking, you can contact the at information@.gov. .

See Q&A 45 for how to register a in the , Q&A 47 for how to register a in the , and Q&A 50 for the registration process for an .

Q40:How much will it cost me to register my trade mark?

The cost of registering a varies depending on which method of application you use and how many you wish to register, covering how many different classes of business.

For applications, see Q&A 41.

For applications, see Q&A 42.

For applications, see Q&A 43.

Q41:How much will it cost me to register my trade mark in the UK?

For applications, the basic costs are:

Description

Cost in £

Paper application (using Form TM3) for a single , registering your in one category of and/or services (known as a class) only

200

Online application (using Form e-TM3) for a single , registering your in one category of and/or services (known as a class) only

170

Paper application (using Form TM3) for a of two , registering your in one category of and/or services (known as a class) only

200

Online application (using Form e-TM3) for a of two , registering your in one category of and/or services (known as a class) only

170

Class fee. This is a charge for the addition of a class (ie category of and/or services) for each class above the one class already included in the base fee for the application. The cost is the same for both standard and electronic applications

50

Series fee. This is a charge per for each additional mark (after the first two) contained in a application, ie an application for a number of very similar together. The cost is the same for both standard and electronic applications

50

Right Start Examination Service (apply online). An examiner emails you a report on your application so you can discuss any problems. You pay half of the fees upfront and the balance only if you decide to go ahead with your application after receiving the report.

200 + 50 for each additional class

For example, if you apply online to register a in three classes, your fee will be £270 (£170 application fee + £50 additional class fee + £50 additional class fee). Similarly, if you apply via paper form to register a series of three , your fee will be £250 (£200 application fee + £50 additional series fee).

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Note that there are usually additional costs if you need to amend your application during the registration procedure or if you apply for an extension of time. There are also costs involved in renewing your every 10 years (see Q&A 54).

See Q&A 45 for how to register a in the

Q42:How much will it cost me to register my trade mark in the EU?

For applications (note you can only register one mark per application), the basic costs are:

Description

Cost in €

Cost of an online application to register one in one class of or services only

850

Second class fee. This is an extra charge for the addition of a second class of and services

50

Third and above class fee. This is an extra charge for each additional class of and services above two

150

For example, if you apply online to register an in three classes, your fee will be €1,050 (€850 application fee + €50 additional class fee + €150 additional class fee).

Note that there may be additional costs if you need to amend your application during the registration procedure or if you apply for an extension of time. There are also costs involved in renewing your every 10 years (see Q&A 54).

See Q&A 47 for how to register a in the .

Q43:How much will it cost me to register an international trade mark?

For international , the fee system is complex and the application fees high if you wish to apply for protection across a large number of countries or territories. The easiest way to calculate your international fees is to use the WIPO fees calculator. In addition to your international fees, you must also pay the local handling fee to the (£40) or to the (€300) when you apply through them. If you wish to register a colour across all member countries or territories, it will likely cost you in the region of 22,000 CHF.

Note that there may be additional costs if you need to amend your application during the registration procedure or if you apply for an extension of time. There are also costs involved in renewing your every 10 years (see Q&A 54).

See Q&A 50 for the registration process for an .

Q44:Do I need to use a lawyer to help me register my trade mark?

For and applications, you can make an application for any kind of on your own. In most straightforward cases it will not be a problem for you to do so, although you can pay a professional if you wish. The runs a 'Right Start Examination Service' for which you pay half the full fee upfront. Your examiner then emails you an initial report on your application which you can discuss with them if any problems are flagged, before deciding whether you want to proceed and pay the full balance of the fee.

For applications, it is strongly recommended that you consult a lawyer or . This is because to be registered, an must satisfy the criteria for a under the law of every country in which you wish to register it. For example, if you wish to register a logo as a in Japan, New Zealand, and the USA, then your logo must satisfy law in all three countries. Advice about the law in other countries is outside the scope of this service.

If you wish to outsource your application for any reason you can pay a to assist you. attorneys do not need to be lawyers, although it is advisable to choose a qualified lawyer who specialises in or a member of the to be sure you receive expert service.

To search for a , you can use the search engine. For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service.

Once you have a list of potential representatives to consult, you should consider the following factors when picking a particular professional:

  1. how much they charge for their fees. Some will charge a fixed fee for your whole dispute so you always know roughly what you will pay; others will charge you per hour which they work, so costs are harder to predict and could spiral;

  2. their experience in dealing with similar matters to yours (this is something you should ask them about); and

  3. any recommendations or reviews of their service which you have heard from colleagues or friends, or have read online.

Registering a trade mark in the UK, the EU and internationally
Q45:How do I register a trade mark in the UK?

Before you start filling in your application, prepare properly by checking to make sure your is properly registrable (see Q&A 4).

The provides a free service to help you check if your can be registered. This tool is aimed at helping you understand whether your could be accepted by:

  1. helping you check if any existing similar to yours could cause conflict;

  2. helping you to identify the classes of and services you want to protect your for; and

  3. identify whether your may be inappropriate (for example, containing offensive words or protected symbols).

However, the do not examine or register you submit through this tool and an approval through the tool does not that the will register the . You will still need to go through the usual application process, as set out below, after using the online checker tool.

The process for registering a in the is as follows:

  1. Submit an online application or print out, complete, and post Form TM3 to the . For step-by-step guidance on completing your application, see Step-by-step guide to filling in the UK trade mark application form or Step-by-step guide to applying for a UK trade mark online. You can also purchase these guides as part of the Protecting IP and confidential information toolkit. Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

  2. Once you have submitted your application form, the will check it to ensure that you have not made any errors. For example, they will check that what you have submitted is capable of being a . If your application has no issues, it will simply progress to the next stage. Otherwise, the next step depends on what the problem is with your application:

    1. Errors in your application

      The will inform you and you will have 14 days to resubmit your application with the mistakes corrected. If you do not resubmit within 14 days, your application will not be accepted and you will have to start again.

    2. Your is similar to an existing one

      If the finds that a similar to yours is already registered, then they will notify you but your application will still progress to the next stage.

  3. Next, the publishes your in the UK Trade Marks Journal.

  4. From the date on which your application is published in the , other people and businesses have two months to object to your being registered. This is known as the opposition period. Most commonly, competitors can object if they believe your :

    1. is not capable of being a , eg because it is too generic (see Q&A 4); or

    2. is so similar to their own that it infringes their rights.

  5. If anyone objects to your application, a process will apply to decide if your application can proceed. See Q&A 46 for further information.

  6. Once either any objections have been dismissed (see Q&A 46), or the two-month opposition period ends without any objections being raised, then your will be registered and backdated to the date on which you made your original application. Your will be published in the , which you can access by using the trade mark search engine. You will also be sent a certificate of registration from the .

You should note that at any time before registration, you can use Form TM12 to request that your application is split into parts. You may wish to do this to separate an uncontroversial part of your (ie a part to which nobody has objected) from a controversial part. This would allow the uncontroversial part(s) to be registered quickly, while you deal with any objections to the controversial part(s), or choose not to pursue them further.

You can also use Form TM12R to request that your is split into parts. Again, this may be useful if part of your registration is subject to a dispute which concerns certain and services.

Q46:What happens if anyone objects to my UK trade mark application?

If anyone objects to your application, the following process will usually apply to decide if your application can proceed.

  1. You will be sent a copy of the objection (it will be on Form TM7).

  2. You then have two months to respond to the objection. You should respond by sending Form TM8 to the . They will forward a copy to your objector. If you do not respond in time, your application will fail. You can also use this time to negotiate with the objector if you think that you can come to some agreement, for example entering into a licence agreement with them for the use of some element of their brand.

    You can agree with the objector to have a longer time period (known as a cooling off period) of 11 months with your objector. If you agree, one of you must send a copy of Form TM9C to the (if you send it, you should copy in your objector).

    If your objector does not agree, you can ask the for more time. You will only be granted an extension if the delay is the fault of the , eg if they sent you an incomplete copy of the objection. There is a fee of £100 for your application. Use Form TM9 if you are asking before the relevant deadline has passed. Use Form TM9R and Form FS2 if you are only asking after the relevant deadline has passed. In either case, send a copy of the form to your objector, too. It is far better to ask for an extension of any deadline before it runs out in case your request is refused.

    If you want to end the cooling off period early, simply send your completed response Form TM8 to the . The will send a copy of your form to your objector.

    If you want to extend the cooling off period further, you can agree to an extension of another 9 months with your objector (ie to a total of 18 months from the date you were notified of the objection). If you agree, one of you must send a copy of Form TM9E to the .

  3. The will then consider the information you provide in your Form TM8 and the objection(s) to your application to make a preliminary decision. This decision will either be that the objection is valid, so your cannot be registered, or the objection is incorrect, so your application will proceed. The Registrar will not give you reasons for this preliminary decision.

  4. Within one month of the preliminary decision, the unsuccessful side (which will be you if the Registrar agreed with the objection) can apply to the Registrar for a more detailed re-decision. If you wish to do this, you should use Form TM53 and send a copy to the and to the person objecting to your .

    In contrast, if the Registrar decided that the objection is not valid, and your objector does not apply for a re-decision, then your application will be accepted when the month runs out.

  5. If either you or the person objecting to your application apply for re-decision, the will give you further instructions on what evidence you should send him, how, and by when.

  6. Once the has all the information they need, they will make their formal decision. They will send you their decision, with full reasons, in writing.

Q47:How do I register an EU trade mark?

Before you start filling in your application, prepare properly by checking to make sure your is properly registrable (see Q&A 4).

The process for registering an is as follows:

  1. Fill in the online Filing Form. Note this form is appropriate for and applicants who are outside the . For step-by-step guidance on completing your Filing Form, see Step-by-step guide to applying for an EU trade mark online. You can also purchase this guide as part of the Protecting IP and confidential information toolkit.

  2. Once you have submitted your application form, the will check it to ensure that you have not made any errors. If you have, they will inform you of the error and you will have two months to remedy it. If you do not do so, your application will be refused.

    If you have requested it in your application form (and paid the additional fee), the will send you their initial report on whether there are any similar in any who will be notified of your application and may choose to object.

  3. Once the has accepted your initial or amended application, it will publish your application in the EUTM Bulletin.

  4. From the date on which your application is published in the EUTM Bulletin, other people and businesses have three months to object to your being registered. This is known as the opposition period. They can object either because they believe that your potential :

    1. is not capable of being a , eg because it is too generic (see Q&A 4); or

    2. is so similar to their own that it infringes their rights.

  5. If anyone objects to your application, there is a process that is followed. See Q&A 48 for further information.

  6. Once any objections have been dismissed (see Q&A 48), or the three-month opposition period ends without any objections being raised, your will be registered. The will issue you with an online certificate of registration, which will be registered from the date of your original application.

Note: you cannot register a under law – instead, if you wish to register multiple variations (eg different colour combinations) of the same mark you must register each variation as individual in separate applications.

Also note that if you live outside the you must have a representative within the for any other proceedings in front of the (except for the initial filing of your application).

See Q&A 49 for further guidance on Brexit and .

Q48:What happens if someone objects to my EU trade mark application?

If anyone objects to your application, the following process will happen.

  1. There will be a two-month cooling off period before the starts the decision-making process for whether the objection is valid. It is sensible to use this time to try and reach an agreement with your objector if possible.

  2. Once the two-month cooling off period has ended, the will ask you to provide any evidence to support why you think your application does not infringe anyone else's . The person objecting to your will be asked to provide evidence of why they think the opposite. Both of you will have two months to submit your evidence.

  3. Once the has received evidence from both people, it will give you both two months to comment on the other person's evidence.

  4. Once the comments have been received, the will decide whether the objection is valid or not. The will give you reasons for its decision.

Q49:What effect did Brexit have on my EU trade mark?

Since 1 January 2021 (the end of the Brexit transition period) your is no longer valid in the . This means you cannot rely on your to prevent others from copying you in the . However, to ensure that protection in the continues, the has created comparable for every holder of a registered prior to 1 January 2021. The comparable are recorded on the register and treated as if they had been applied for and registered under law. These rights will retain the filing dates and any priority/seniority dates registered to the , and have been given a new registration number (being the last eight digits of the prefixed with 'UK008'). Note there is an ability to opt out of receiving a comparable in certain circumstances. You can search for details of your comparable here.

For applicants who had a pending application for an at the end of the transition period, applicants were allowed to refile under the same terms for a in the nine months after 1 January 2021, retaining the application date for priority purposes.

continue to be valid in other countries after Brexit. So, for example, you are still able to prevent French businesses from copying your .

If you are unsure about how these changes affect you, you can access to a specialist lawyer in a few simple steps by using our Ask a Lawyer service.

Q50:How do I register a trade mark internationally?

It is strongly recommended that you consult a lawyer or if you wish to register an . An must satisfy the criteria for a under the law of every country in which you wish to register it. For example, if you wish to register a logo as a in Japan, New Zealand, and the USA, then your logo must satisfy law in all three countries. Advice about the law in other countries is beyond the scope of this service. Therefore, it is sensible to consult an expert before you make an application to know if your application will be successful.

Note that if you are based in the and wish to apply for an , you must first make an application, or already hold a registration, for a or an . You then make your application to online through either the or the as appropriate. You cannot send your application directly to . Also note that due to the end of the Brexit transition period on 31 December 2020, international designating the are no longer valid in the (see Q&A 49). However, to ensure that protection in the continues, the has automatically created equivalent from 1 January 2021. You can check the details of your comparable here.

For more information on selecting a suitable lawyer or see Q&A 44.

Changing and renewing a trade mark (UK, EU or international)
Q51:What should I do if my application to register a trade mark is refused?

If your application to register a is refused, the office which has refused your application (whether that is the , the , or ) will give you reasons for its decision. Depending on the reasons for refusal, it may be appropriate for you to amend the which you seek to register and submit a fresh application. For example, if your was refused because it was too similar to an existing registered mark, you could change it to make it more unique to your business. The application process is the same as for your first application (see Q&A 45 ( ), Q&A 47 ( ), and Q&A 50 (international )).

If you have made an unsuccessful application for an , you can convert your application into a -only application if you wish. If you do this within three months, then your new application will be treated as if it were made on the date of your original (failed) international application. You will still need to the follow the process and pay the law fees (see Q&A 45 and following).

You should note that until your has been properly registered, you must not falsely claim that something of yours is protected by a . This is a criminal offence, punishable by a fine up to £1,000. Even using the word 'registered' after your logo is enough to commit this offence, so avoid making any such claims.

Q52:Can I amend my registered trade mark?

You can update your name or address both in the context of your contact details and if it forms part of your actual , provided the change to your mark does not substantially change it. It will be very rare that such a change will not substantially affect your . For any other changes you must make a new application.

If you wish to update your name, address or email for a , you should use Form TM21A. Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

If you wish to update your information for an , you should login to the online User Area and update your details in the Owners’ area.

If you wish to update your information for an , you should use Form MM9 and send it to the . There is a fee of 150 CHF for this application.

Q53:When do I need to renew my registered trade mark?

Once registered, a of any type (, , or international) will last for 10 years from the date of your application. In the last six months of that 10-year period, you can renew your to last for a further 10 years from the date of expiry. For example, if your original was from 1 January 2010 until 1 January 2020, and you renew your , it will last until 1 January 2030. You can keep renewing as many times as you like.

If you do not request a renewal of your in time, it will expire and will be removed from the relevant registers 6 months after expiry, and you will lose the protection that registration gave you – in other words, other people may be able to use the mark without your consent. You could still have brand protection outside the relevant if your branding has become known to the public and thus gained value, but it is much harder to enforce these rights than a .

You can get your reinstated and renewed up to six months after it expires in the and internationally, provided you pay an additional fee. In the , your may be reinstated and renewed up to six months after it is removed from the register (ie up to 12 months after expiry) provided the is satisfied that failure to renew was unintentional'. For example, you would be unlikely to be granted a late renewal if you had deliberately failed to renew and only applied late because you saw a competitor start to use similar branding.

For guidance on how to renew your see Q&A 54.

Q54:How do I renew my trade mark?

The registrar will usually write to you about renewal between 6 months and 1 month before your 10-year registration period expires. As with your initial application, you can use a to apply for a renewal on your behalf if you wish, although the process is usually straightforward unless you are applying very late.

You must then fill in the renewal form online or by post and pay the renewal fee within those last six months. The forms and fees are described in the following table.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

International

Renewal fees

£200 for a single-class , £50 extra for every additional class and £50 extra if your application is late

€850 for a single-class , €50 extra for the a second class, €150 extra for each additional registered class and an additional 25% of the renewal fee (up to a maximum of €1,500) if you are applying late

The fees system for international is complex. The safest way to calculate your fees is to use the WIPO fees calculator

Renewal website (recommended)

UK Government 'Renew a patent, trade mark or registered design'

EU IPO online requests

Madrid e-renewal

Hard copy renewal form

TM11

TM13 if you are applying to renew so late that your has already been removed from the register

Not possible; renewal online only

MM11 (note that strongly recommends you renew online)

To whom you must send the renewal form and fee (when submitting by post)

Office, Registry, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ

Not possible; renew online only

World Organization, 34, chemin des Colombettes, CH-1211 Geneva 20, Switzerland

If you do not request a renewal of your in time, it will be removed from the relevant registers and you will lose the protection that registration gave you – in other words, other people may be able to use the mark without your consent. You could still have brand protection outside the relevant if your branding has become known to the public and thus gained value, but it is much harder to enforce these rights than a .

Note that renewals do not allow you to make changes to your (see Q&A 52 for information on amending your ).

Employees and trade marks
Q55:Who owns the trade marks for works created by employees?

must be registered before they are protected, and you do not need to have invented or created the thing you register as a , as you would have to for or designs. This means that are unlikely to ‘create’ , as the is created by registering something. However, it is possible that the who created the thing that you register as a (eg a logo) will own the to that work. This could cause problems if they decided, for example, they did not want the picture or logo to be used, or wanted to use it for themselves. See Q&A 56 and following for further information on protecting your , and Employees and copyright for more information on .

Your brand can be a valuable asset and it is important to protect it by preventing other businesses from copying your name, , or distinguishing mark, so it is important to register your branding as a . You can register various types of including names, , shapes, sounds, motions, and more. See Q&A 4 for further information and see Step-by-step guide to applying for a UK trade mark online, Step-by-step guide to filling in the UK trade mark application form and Step-by-step guide to applying for an EU trade mark online for how to apply for or . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Q56:What can I do to ensure my business owns the trade marks for works created by employees?

In order to make sure the the for work created by (eg a logo) is owned by the business, you should consider including appropriate in employment contracts (see Q&A 57).

You should also take appropriate steps to register the (see Q&A 58).

Q57:How do I include appropriate clauses in employment contracts to ensure my business owns the trade marks for works created by employees?

You should include the appropriate in your employment contract in order to ensure that , including the in works created by , is owned by your business. These should include a definition of the precise nature and terms of the 's employment (as you will automatically own anything made by your as long as they are acting in the course of employment) and a specifically stating that any that is created by the in the course of their employment becomes the 's property. For a template employment contract that contains these , plus further terms to protect your , see Employment contract.

See Q&A 56 for other steps to take to make sure for works created by are owned by the business.

Q58:How can I register a trade mark to ensure my business owns the intellectual property created by employees?

work differently to or designs. Although they must be registered before they are protected, you do not need to have invented or created the thing you register as a , as you would have to for or designs. Anyone can register any as long as it does not infringe on which are already in use and it is not illegal for some other reason. This means that are unlikely to 'create' , as the is created by registering something.

However, as can be whole slogans, pictures, or graphic designs or , it is possible that the person who created the thing that you register as a will own the to that thing. For example, if a business were to ask a member of who it knows is a good artist to design a picture to use as a logo for the , and it then registers that logo as a , it is possible that the member would still retain certain rights in the picture, which could cause problems if they decided they did not want the picture to be used, or wanted to use it for themselves.

This problem is most likely to arise for graphic or artistic , as it is unusual for words or short phrases to be protected by though it is not impossible. If there is a dispute over something like this, you should seek legal advice. For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service.

If you want an to create something which you will use as a , and this task is far outside the course of their normal duties, or you have paid them extra on top of their normal pay, you should use a separate written contract, signed by the , which says that you will own the , and that they will all .

See Q&A 45 and following for more information on registering a and see Step-by-step guide to applying for a UK trade mark online, Step-by-step guide to filling in the UK trade mark application form and Step-by-step guide to applying for an EU trade mark online for how to apply for or . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

See Q&A 56 for other steps to take to make sure for works created by are owned by the business.

Q59:What can I do to make sure works protected by trade mark belonging to my business are not stolen or misused by my employees?

, including , could be vulnerable to theft and misuse by , particularly departing , who may wish to take protected with them to competitors.

In addition to the steps set out in Q&A 56, which ensure that any rights in any created by is owned by your business, there are a number of other steps you can take to minimise the risk of being stolen or misused by :

  1. make aware of what is protected by and who owns it. This can be done by setting out the position clearly in the employment contract (see Q&A 57), and by carrying out exit interviews in which you also make the position clear. In addition, departing should be required to return any hard copies of documents that contain protected before leaving, as well as any electronic devices they have been using during and for the purposes of their employment (laptop, mobile phone etc). Proper procedures when leave should be followed generally (for more information on departure procedures see Process for dismissing an employee and What to do if a staff member resigns);

  2. ensure that you have confidentiality and any other restrictions (such as or ) in employment contracts. Although this will not usually protect and specifically, it can prevent confidential knowledge being used by who to compete with you after leaving; for more information on these , see Confidentiality and restrictive covenants in employment contracts. For a template contract that contains non-compete, and confidentiality that you can tailor to your specific requirements, see Employment contract;

  3. have a in your employment contracts specifying that must promptly bring to your attention any they create in the course of their employment. This will allow you to take any necessary steps to register any (see Q&A 58), as well as letting you know what you own. For a template contract that contains such a , see Employment contract.

Q60:How long can my business keep works created by employees that have been registered as trade marks?

When your create work that can be registered as a , the will normally belong to you as their (see Q&A 55). If this is the case, you will own the (the ) for as long as it exists.

A lasts for ten years from the date on which the is successfully registered, with the possibility of renewal every subsequent ten years for as long as you continue to actively use the mark. For more information, see Q&A 53.

If the in question is owned by the , but licensed to you, then you can keep it for as long as the licence allows. See Getting a licence to use someone else's intellectual property for more information.

Q61:Do I have to give credit to or pay employees for trade marks they create for me?

There are no special rights to be identified as the creator of a , and you can choose whether to credit an as being the creator.

Freelancers and consultants and trade marks
Q62: Who owns the trade marks for works created by consultants and freelancers?

must be registered before they are protected, and you do not need to have invented or created the thing you register as a , as you would have to for or designs. This means that or are unlikely to 'create' , as the is created by registering something.

Anyone can register any as long as it does not infringe on which are already in use and it is not illegal for some other reason. However, it is possible that the or who created the thing that you register as a (eg a logo) will own the to that thing. This could cause problems if they decided, for example, they did not want the picture or logo to be used, or wanted to use it for themselves. See Q&A 63 for further information on protecting your , and Employees and copyright for more information on .

Your brand can be a valuable asset and it is important to protect it by preventing other businesses from copying your name, , or distinguishing mark, so it is important to register your branding as a . You can register various types of including names, , shapes, sounds, motions, and more. See Q&A 4 for further information and see Step-by-step guide to applying for a UK trade mark online, Step-by-step guide to filling in the UK trade mark application form and Step-by-step guide to applying for an EU trade mark online for how to apply for or . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Q63:What can I do to ensure my business owns trade marks for works created by consultants and freelancers?

In order to make sure the for any works created by and ends up as the property of the business, you should consider including appropriate in contracts (see Q&A 64).

You should also take appropriate steps to register the (see Q&A 65).

Q64:How do I include appropriate clauses in contracts to ensure my business owns the trade marks for works created by consultants or freelancers?

You should include the appropriate in your written contract with the or in order to ensure that any they create, including the in works created by them, is owned by your business. You should agree in your contract with the or that you will own the relevant rights. It is important that the agreement is in writing and signed by the or .

For a template consultancy agreement that contains terms detailing who will own any created by any or , or preventing them from misusing your confidential information, see Consultancy agreement, which can be adapted whether the or runs their business through a or not.

See also Contracts for freelancers for more information on contracts with or .

See Q&A 63 for other steps to take to make sure the in any work created by or is owned by the business.

Q65:How can I register a trade mark to ensure my business owns the intellectual property created by consultants or freelancers?

work differently to or designs. Although they must be registered before they are protected, you do not need to have invented or created the thing you register as a , as you would have to for or designs. Anyone can register any as long as it does not infringe on which are already in use and it is not illegal for some other reason. This means that or are unlikely to 'create' , as the is created by registering something.

However, as can be whole slogans, pictures, or graphic designs or , it is possible that the person who created the thing that you register as a will own the to that thing. For example, if a business were to ask a freelance designer to design a picture to use as a logo for the , and it then registers that logo as a , it is possible that the designer would still retain certain rights in the picture, which could cause problems if they decided they did not want the picture to be used, or wanted to use it for themselves.

This problem is most likely to arise for graphic or artistic , as it is unusual for words or short phrases to be protected by though it is not impossible. You should therefore ensure that you get the written agreement of the or to transfer the in the logo or to you, as well as registering it to your business. See Freelancers and consultants and copyright for more information.

See Q&A 45 for more information on registering a and see see Step-by-step guide to applying for a UK trade mark online, Step-by-step guide to filling in the UK trade mark application form and Step-by-step guide to applying for an EU trade mark online for how to apply for or . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

See Q&A 63 for other steps to take to make sure any in work created by or is owned by the business.

Q66:What can I do to make sure works protected by trade mark belonging to my business are not stolen or misused by consultants or freelancers?

As well as ensuring that you own or have a right to use any that arise out of the work you have engaged and to produce (see Q&A 63), you should also take steps to ensure that they do not misuse any of your , by doing the following:

  1. identify new and existing , keeping records of how and when it was created; and

  2. make it clear in your commercial agreements with or what is yours, what they are or are not allowed to do with it, and which aspects of the work should be kept confidential.

For a template consultancy agreement that contains terms detailing who will own any created by any or , or preventing them from misusing your confidential information, see Consultancy agreement, which can be adapted whether the or runs their business through a or not.

The above steps are particularly relevant where engaging or to do work that will directly involve them in the use of your . For example, if an entrepreneur who was starting an ice cream shop had done extensive market research in order to form their business plan, it might make sense for them to this with a PR whom they have brought in-house for a while for a variety of purposes (eg to design a logo) so that the can understand the target demographic. In this case, the entrepreneur might wish to include their business's name as author of the market research document just to be clear that the market research belongs to their business.

The entrepreneur could also agree with the consultancy that it is not to copy the document or use its contents for commercial purposes other than dealing with the logo of the ice cream business. This would help to ensure that everyone involved knows what is authorised and what is not.

Trade marks commissioned from another business
Q67:Who owns the trade marks for works I have bought, outsourced or commissioned?

must be registered before they are protected, and you do not need to have invented or created the thing you register as a , as you would have to for or designs. This means that businesses that you commission to do work are unlikely to 'create' , as the is created by registering something. However, it is possible that the business who created the work that you register as a (eg a logo) will own the to that work. This could cause problems if they decided, for example, they did not want the picture or logo to be used, or wanted to use it for themselves. See Q&A 68 for further information on protecting your , and Identifying copyright in business situations for more information on .

Your brand can be a valuable asset and it is important to protect it by preventing other businesses from copying your name, , or distinguishing mark, so it is important to register your branding as a . You can register various types of including names, , shapes, sounds, motions, and more. See Q&A 4 for further information.

Q68:What can I do to ensure my business owns trade marks for works I have bought, outsourced or commissioned?

In order to make sure for works created by and , ends up owned by the business, you should consider including appropriate in contracts (see Q&A 69).

You should also take appropriate steps to register the (see Q&A 70).

Q69:How do I include appropriate clauses in contracts to ensure my business owns trade marks for works created by commissioned businesses?

You should include the appropriate in your written contract with the business you are commissioning in order to ensure that created by them is owned by your business. You should agree in your contract that you will own the relevant rights. It is important that the agreement is in writing and signed on behalf of the business you are to.

See Q&A 68 for other steps to take to make sure the in any works created by a commissioned business are owned by your business.

Q70:How can I register a trade mark to ensure my business owns the intellectual property created by commissioned businesses?

work differently to or designs. Although they must be registered before they are protected, you do not need to have invented or created the thing you register as a , as you would have to for or designs. Anyone can register any as long as it does not infringe on which are already in use and it is not illegal for some other reason. This means that businesses you commission are unlikely to 'create' , as the is created by registering something.

However, as can be whole slogans, pictures, or graphic designs/, it is possible that the business who created the work that you register as a will own the to that thing. For example, if your business were to ask another business to design a picture to use as a logo for the , and you then register that logo as a , it is possible that the designing business would still retain certain rights in the picture, which could cause problems if it decided they did not want the picture to be used, or wanted to use it itself.

This problem is most likely to arise for graphic or artistic , as it is unusual for words or short phrases to be protected by though it is not impossible. You should therefore ensure that you get the written agreement of the business you outsourced to to transfer the in the logo or to you, as well as registering the to your business. See Identifying copyright in business situations for more information on .

See Q&A 45 for more information on registering a and see Step-by-step guide to applying for a UK trade mark online, Step-by-step guide to filling in the UK trade mark application form and Step-by-step guide to applying for an EU trade mark online for how to apply for or . You can also purchase these guides as part of the Protecting IP and confidential information toolkit.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

See Q&A 68 for other steps to take to make sure the in any works created by a commissioned business are owned by your business.

Q71:What can I do to make sure works protected by trade mark belonging to my business are not stolen or misused by commissioned businesses?

As well as ensuring that you own or have a right to use any that arises out of the work you have commissioned (see Q&A 68), you should also take steps to ensure that commissioned businesses do not misuse any of your , by doing the following:

  1. identify new and existing , keeping records of how and when it was created; and

  2. make it clear in your commercial agreements with the business you are to what is yours, what they are or are not allowed to do with it, and which aspects of the work should be kept confidential.

These steps are particularly relevant where commissioning a business to do work that will directly involve them in the use of your . For example, if an entrepreneur who was starting an ice cream shop had done extensive market research in order to form their business plan, it might make sense for them to this with a PR consultancy business whom they have commissioned for a variety of purposes (eg to design a logo) so that the consultancy can understand the target demographic. In this case, the entrepreneur might wish to include their business's name as author of the market research document just to be clear that the market research belongs to their business. The entrepreneur could also agree with the consultancy that it is not to copy the document or use its contents for commercial purposes other than dealing with the logo of the ice cream business. This would help to ensure that everyone involved knows what is authorised and what is not.

Monitoring for trade mark infringement
Q72:How do I know if my trade mark has been infringed?

Someone infringes on your when they:

  1. use an identical to one you have registered, and they use it on identical (ie the belong to the same category of or services that your is registered for);

  2. use a that is similar to one you have registered, and they use it on that are identical or similar to those that your is registered for, and as a result, the public will be confused about who actually made the or provides the services. To determine whether and services are similar, you should look at what they are used for, who uses them, the physical nature of the or services, and whether they are likely to be found together and compete against each other (for example, would they be on the same supermarket shelves?); or

  3. use a which is identical or similar to yours, and their use is detrimental to your 's distinctiveness, detrimental to its reputation, or takes unfair advance of its reputation. The law on this kind of infringement is complex, and you should therefore speak to a lawyer if you think that someone is taking advantage of your mark's distinctiveness or reputation. For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service.

Examples of infringements include (see Q&A 73 and following), or when another business sets itself up with a name or branding similar to yours (see Q&A 77 and following).

There are a few situations where someone else can use your without your permission, eg they are using a description of their in their marketing which sounds like your , but it is just giving an indication of the type or quality of they offer. See Monitoring for trade mark infringement for further information.

Q73:What is counterfeiting?

are unauthorised imitations of which the pretends are genuine. Generally, any product or packaging that bears a without the owner's permission is and infringes upon the owner's . Common include clothes, bags, jewellery and electrical items. For example, if someone manufactured a handbag and used the Mulberry logo in order to try and make it look like a genuine Mulberry product, that bag would be a if they did not have permission to use Mulberry's logo, as it is a .

products can have a significant effect on your business, as there is a competing version of your product in circulation that is not under your control. If someone is imitating your product, this is likely to undermine your brand, especially if the quality of the products is not as good as your own, which in turn may damage your business's reputation. Your business may also lose money if customers buy a product rather than your own. For information on monitoring for , see Q&A 74.

Q74:How do I monitor for counterfeiting?

Identifying can be very difficult, as try hard not to be easily detected. However, there are certain tools you can use to monitor for products. General searches of major search engines and social media can be particularly useful in identifying . In particular, you should consider searching online marketplaces like eBay, Amazon, Alibaba and Etsy for listings of your products which you did not authorise. You can also find information on both physical and online market places that have been reported to engage in and on the EU Commission's Counterfeit and Piracy Watch List. This lists the most problematic markets situated outside the .

However, manual searches can be very inefficient, so you should consider using automated tools to provide you with alerts when relevant content is published online. For example, Google Alerts is a free tool which provides email notifications when a phrase of your choice is published on the internet. You can customise the type of results (eg excluding blog entries, or only searching for news sources) and how the results are presented to you (eg in a periodic digest of all results or in live updates whenever new content is found). There are also a number of other similar tools which have various functions and which may suit your business better than Google Alerts, for example Mention and IFTTT.

See Q&A 75 for information on hiring someone to monitor for you and Q&A 76 for what to do if you discover someone has your product.

Q75:Can I hire someone to monitor counterfeiting for me?

If you are particularly concerned about preventing of your products (eg because your product has recently experienced a surge in popularity and is easily ), you may want to consider hiring another business to provide you with more powerful tools to monitor for infringements, or even to monitor for infringements of your on your behalf. This is a costly option, and the expense of hiring an or other specialist can outweigh the protection they provide for . However, you should be aware that the option is available as it may still be worthwhile in your circumstances, especially if you find you are having to dedicate a large number of resources to monitoring for infringements.

See Q&A 76 on what to do if you discover someone has your product.

Q76:What should I do if I discover someone has counterfeited my product?

If you identify what you suspect to be a version of your product, there are a number of steps you can take, from informal communication with the person who may be infringing your , to . You could also contact the () which is dedicated to tackling , particularly where it happens online. You can refer a matter to PIPCU through their website if you suspect that you have been a victim of .

If you believe someone is selling or through an online marketplace which your , you can often use the marketplace's reporting tools to report and remove infringing products. For example, on Amazon you can register for the Amazon Brand Registry tool, which provides you with a greater ability to search for and report infringing products. On eBay you can report infringements of your , and contact eBay more quickly and efficiently, using eBay's Verified Rights Owners (VeRO) programme.

For more information on solutions to potential infringements, see Options for dealing with infringements to intellectual property.

Q77:How do I monitor for businesses being set up with a name or branding similar to mine?

If a business is set up with a name or branding which is similar to yours, it can create confusion for your potential customers or clients. This can lead to lost sales and damage to your business's reputation. If another business uses a name or branding which is similar to yours and may infringe upon a you own, and you do nothing about that potential infringement, you may lose your altogether. It is therefore important to monitor for businesses which are set up which could be confused for yours so that you can properly respond.

To search for which have been registered with similar names to yours, use the Companies House Register Search. This tool lets you search for a name and see details of any registered with that name or a similar one. For a guide on using the see Choosing a name. A business may, however, be trading under a similar name to yours without being registered under that name. You will therefore need to take further steps to monitor for businesses being set up with similar names to yours.

General searches of major search engines and social media can be a useful tool to discover businesses trading under names which are the same as or similar to yours, but which are not registered under that name. You should also check for which have been registered which are similar to your business's name. Manual searches can be very inefficient, so you should consider using automated tools to provide you with alerts when relevant content is published online. For example, Google Alerts is a free tool which provides email notifications when a phrase of your choice is published on the internet. You can customise the type of results (eg excluding blog entries, or only searching for news sources) and how the results are presented to you (eg in a periodic digest of all results or in live updates whenever new content is found). There are also a number of other similar tools which have various functions and which may suit your business better than Google Alerts, for example Mention and IFTTT.

You should also check to see if anyone else has which are similar to your name or branding. See Q&A 16 and following for more information on searches that you can carry out.

See Q&A 78 for guidance on hiring someone to monitor for businesses being set up with a name or branding similar to yours, and Q&A 79 on what to do if you discover that a business has been set up with a name or branding similar to yours.

Q78:Can I hire someone else to monitor for businesses being set up with a name or branding similar to mine?

If you are particularly concerned about preventing others from setting up a business with a name or branding similar to yours, you may want to consider hiring another business to provide you with more powerful tools to monitor for infringements, or even to monitor for infringements of your on your behalf. This is a costly option, and the expense of hiring an or other specialist can outweigh the protection they provide for . However, you should be aware that the option is available as it may still be worthwhile in your circumstances, especially if you find you are having to dedicate a large number of resources to monitoring for infringements.

See Q&A 79 on what to do if you discover that a business has been set up with a name or branding similar to yours.

Q79:What should I do if I discover that a business has been set up with a name or branding similar to mine?

If you identify a business you feel has a name or branding too similar to yours there are a number of steps you can take, from informal communication with the person who may be infringing your to . You could also contact the (), which is dedicated to tackling , particularly where it happens online. You can refer a matter to PIPCU through their website if you suspect that you have been a victim of . For more information on solutions to potential infringements, see Options for dealing with infringements to intellectual property.

Q80:When can I object to another person's UK trade mark application?

You can object to a application within two months of its publication in the . There are two main grounds (reasons) for objecting to someone's application. These are:

  1. Absolute grounds: If you object on absolute grounds, you are objecting because you believe the simply describes or services (and/or it is too generic and not distinctive enough) and therefore the should be free for anyone in the industry to use. Anyone can object to a application on absolute grounds.

  2. Relative grounds: Only the owner of an earlier can object on relative grounds. Objecting on relative grounds means that you believe your earlier or other right is too similar to the proposed .

To object to a application, you must file a Form TM7 within two months of publication of the application. The fee payable with Form TM7 ranges from £100 to £200 depending on the types of grounds you are objecting on. You can extend the objection period to three months from the date of publication by filing Form TM7a (notice of threatened opposition) within the initial two month period. Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Q81:What happens after I have sent my objection to a trade mark application to the UK IPO?

The will send a copy of your objection on Form TM7 to the applicant who will have two months to file a Form TM8 in response. You can also use this time to negotiate with the applicant if you think that you can come to some agreement, for example entering into a licence agreement allowing them to use some element of your brand. The period for filing Form TM8 can only be extended if the parties agree to enter a cooling off period. See Q&A 83 below for guidance on cooling off periods.

If the person applying for the submits Form TM8 as a response to your objection, the will forward a copy to you and will consider whether your objection is valid (see Q&A 82 for further guidance).

If the applicant does not submit a response on Form TM8 within two months of receiving your objection, the treats the application as being abandoned and the will not be registered. Note that if only some of the classes of and/or services that the relates to have been opposed, the application will fail in respect of those specified classes only, and the will be registered for the rest of the or services.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Q82:How does the UK IPO decide whether my objection is valid?

The will consider the information you provide in your Form TM7 and the applicant's response to your objection to make a preliminary decision. In some circumstances the may ask for further evidence such as . The 's decision will either be that your objection is valid, so the cannot be registered, or your objection is incorrect, so the application will proceed. The Registrar will not give you reasons for this preliminary decision.

Within one month of the preliminary decision, if you have been unsuccessful you can apply to the Registrar for a more detailed re-decision. If you wish to do this, you should use Form TM53 and send a copy to the and to the applicant.

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

If either you or the applicant apply for re-decision, the will give you further instructions on what evidence you should send them, how, and by when.

Once the has all the information they need, they will make their formal decision. They will send you their decision, with full reasons, in writing.

Q83:What is a cooling off period for a UK trade mark objection and why would I want one?

If you and the applicant want to negotiate an agreement for the use of the (or come to a settlement) and avoid the cost of preparing evidence or submissions, you and the applicant can agree to file a Form TM9C which will extend the time period the applicant has to submit a defence to your objection to be nine months from the date the applicant received your objection. If you and the applicant agree to this extension, one of you must send a copy of Form TM9C to the and copy the other in. No fee is payable for submitting this form.

The applicant is allowed to end the cooling off period early by sending their response on Form TM8 to the . If that occurs you will receive a copy of the response.

If you and the applicant want to extend the cooling off period even further, you can agree to an extension of another 9 months (ie to a total of 18 months from the date the applicant was notified of the objection). If you agree to this, one of you must send a copy of Form TM9E to the .

Note that due to the COVID-19 pandemic, you should use online services and communicate with the by email where possible. There may also be a delay in your design application as it is currently taking the longer than usual to process new applications. If you are unsure or concerned about how this affects you, contact the at information@.gov.. You can find further guidance on how to submit forms by email here.

Q84:When can I object to an EU trade mark application?

If you believe an application should not be accepted, you may file an objection ('opposition') 3 months of the publication of the application in the Bulletin. The main reasons (grounds) for objecting are earlier right (where you believe the application will conflict with your earlier right) and absolute grounds (where you believe the is not distinctive enough, is simply descriptive of an industry and therefore should be free for people in that industry to use, and/or is not clearly represented.

If you require an extension due to COVID-19, you should contact the or use our Ask a Lawyer service for access to a specialist lawyer in a few simple steps.

Q85:How much does it cost to object to an EU trade mark application?

The cost for objecting on the grounds of earlier right is €320, and requires you to complete an online form and submit evidence and arguments. There is no fee for objecting on absolute grounds; you can simply write a letter to the explaining your objection.

Q86:What happens after I submit an opposition to an EU trade mark application on earlier right grounds?

If you have objected on absolute grounds to an application, the following process applies:

  1. The will check that your form is completed correctly.

  2. If your application is completed correctly, the will send a notice to you and the applicant setting out the relevant time frames. In particular, the provides a two month cooling off period before it starts its decision making process for whether the objection is valid. It is sensible to use this time to try and reach an agreement with the applicant if possible. The cooling off period can be extended for up to 22 months if you and the applicant agree. You can opt out of the extension at any time.

  3. Once the cooling off period has ended, the will ask you and the applicant to provide evidence to support why you think the application infringes your , and vice versa. You will have two months to submit your evidence, and the applicant will then have two months to provide their defence.

  4. Once the has received evidence from you and the applicant, it will give you a final opportunity to comment on the applicant's evidence.

  5. Once all comments have been received, the will decide whether the objection is valid or not. The may refuse to register the , only register the in respect of some of the or services applied for, or register the as applied for. The will give you reasons for its decision.

Q87:What happens after I submit an opposition to an EU trade mark application on absolute grounds?

You will receive a confirmation receipt from the , and the will communicate your concerns to the person who applied for the and take these into account when making their decision to register the , but you will not receive any further response from the . You can check whether the application was accepted by using the search function on 's eSearch (see Q&A 18).