A trade mark is usually a name or logo (or combination of both) which you use to distinguish your goods and/or services from those sold by another business, and to identify yourself as the source of those goods and/or services. As well as names, words and logos, trade marks can cover other types of branding such as slogans (eg the Audi strap line ‘Vorsprung Durch Technik’), 3D shapes (such as the Toblerone box shape), and sounds (like the Metro-Goldwyn-Mayer lion roar).
Registering your branding as a trade mark has the following key benefits:
- the exclusive right to use the trade mark for ten years and the ability to renew it as many times as you like;
- the ability to object to others trying to register similar branding to yours;
- the right to sue other businesses for infringing your branding; and
- protection of your business’s reputation and goodwill.
This guide for SMEs sets out the process and costs for registering and/or renewing a trade mark within the UK. For additional support, our Protecting IP and confidential information toolkit contains a pack of documents to help you protect your IP, including step-by-step guides to registering a trade mark.
Trade mark registration UK
How do I register a trade mark in the UK?
The process for applying to register a trade mark in the UK is set out below.
1. Check it is registrable
Before you start filling in your application, prepare properly by checking to make sure your trade mark is properly registrable. Your proposed trade mark must be able to be clearly represented in your application, must be distinctive, and cannot fall within the list of objectionable or prohibited trade mark types. You can find more guidance on how to ensure your trade mark is registrable in our Q&A on Identifying a trade mark in business situations.
The UK IPO also provides a free service to help you check if your UK trade mark can be registered. This tool is aimed at helping you understand whether your UK trade mark could be accepted by:
- helping you check if any existing trade marks similar to yours could cause conflict;
- helping you to identify the classes of goods and services you want to protect your trade mark for; and
- identify whether your trade mark may be inappropriate(for example, containing offensive words or protected symbols).
However, the UK IPO does not examine or register trade marks you submit through this tool and an approval through the tool does not guarantee that the UK IPO will register the trade mark. You will still need to go through the usual trade mark application process, as set out below, after using the online checker tool.
2. Complete your application
The process for registering a trade mark in the UK is as follows:
a) Submit your application
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 our Protecting IP and confidential information toolkit.
Note that due to the COVID-19 pandemic, the UK IPO is not currently processing paper forms by post or fax, so there will be a delay with your application if you use a paper form. You should use online services and communicate with the UK IPO by email where possible. If you are unsure how this affects you, contact the UK IPO at firstname.lastname@example.org.
b) The IPO will check your application for errors
Once you have submitted your application form, the UK IPO 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 trade mark. 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:
- Errors in your application: The UK IPO Registrar 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.
- Your trade mark is similar to an existing one: If the UK IPO Registrar finds that a similar trade mark to yours is already registered, then they will notify you but your application will still progress to the next stage.
c) Next, the IPO publishes your trade mark in the UK Trade Marks Journal
From the date on which your application is published in the UK Trade Marks Journal, other people and businesses have two months to object to your trade mark being registered. This is known as the opposition period. Most commonly, competitors can object if they believe your trade mark:
- is not capable of being a trade mark, eg because it is too generic; or
- is so similar to their own registered trade mark that it infringes their rights.
If anyone objects to your trade mark application, a process will apply to decide if your trade mark application can proceed.
d) Your trade mark is published in the UK Trade Marks Register
Once either any objections have been dismissed, or the two-month opposition period ends without any objections being raised, then your trade mark will be registered and backdated to the date on which you made your original application. Your trade mark will be published in the UK Trade Marks Register, which you can access by using the UK IPO trade mark search engine. You will also be sent a certificate of registration from the UK IPO.
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 trade mark (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 trade mark registration is split into parts.
How much does a trade mark application cost?
For UK trade mark applications, the basic costs are:
- £200 for a paper application (Form TM3) for a single UK trade mark, registering your trade mark in one category of goods and/or services (class);
- £170 for an online application (using Form e-TM3) for a single UK trade mark, registering your trade mark in one category of goods and/or services (class);
- £200 for a paper application (Form TM3) for a series trade mark of two UK trade marks, registering your trade mark in one category of goods and/or services (class);
- £170 for an online application (using Form e-TM3) for a series trade mark of two UK trade marks, registering your trade mark in one category of goods and/or services (class) only;
- £50 to add an extra class (category of goods and/or services) for each class above the one class already included in the base fee for a paper or online application; and
- £50 to add an additional mark (after the first two) in a series mark application (paper or online).
For example, if you apply online to register a trade mark 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 trade marks, your fee will be £250 (£200 application fee + £50 additional series fee).
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. However, the UK IPO is waiving the fee for extensions of time from 30 July 2020 until 31 March 2021 due to the coronavirus pandemic. There are also costs involved in renewing your trade mark every 10 years.
Do I need to use a lawyer to help me register my UK trade mark?
For UK trade mark applications, you can make an application for any kind of trade mark 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. For access to a specialist lawyer in a few simple steps, you can use our Ask a Lawyer service.The UK IPO 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 trade mark 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.
If you wish to outsource your trade mark application for any reason you can pay a trade mark attorney to assist you. Trade mark attorneys do not need to be lawyers, although it is advisable to choose a qualified lawyer who specialises in IP or a member of the Chartered Institute of Trade Mark Attorneys to be sure you receive expert service. To search for a trade mark attorney, you can use the Chartered Institute of Trade Mark Attorneys search engine.
Once you have a list of potential representatives to consult, you should consider the following factors when picking a particular trade mark professional:
- 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;
- their experience in dealing with similar matters to yours (this is something you should ask them about); and
- any recommendations or reviews of their service which you have heard from colleagues or friends, or have read online.
Trade mark renewals and fees
How do I renew my trade mark and how much does it cost?
The registrar will usually write to you about renewal of your trade mark between 6 months and 1 month before your 10-year registration period expires. As with your initial trade mark application, you can use a trade mark attorney 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 and pay the renewal fee within those last six months. The forms and fees are as follows:
- £200 to renew a single-class UK trade mark;
- £50 extra for each additional class; and
- £50 extra if your application is late (except between 30 July 2020 and 31 March 2021, when the UK IPO are temporarily reducing the late renewal fee to £1).
You can go here to renew your trade mark or use Form TM11 to renew your trade mark. If you are applying to renew so late that your trade mark has already been removed from the register, use Form TM13. If you are using the paper form, send it to Intellectual Property Office, Trade Marks Registry, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ.
Note that renewals do not allow you to make changes to your trade mark. If you do not request a renewal of your trade mark 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 trade mark register if your branding has become known to the public and thus gained goodwill value, but it is much harder to enforce these rights than a registered trade mark.
For further guidance on trade marks, see our Q&A on Names and logos: trade marks.
Marion joined Sparqa Legal as a Senior Legal Editor in 2018. She previously worked as a corporate/commercial lawyer for five years at one of New Zealand’s leading law firms, Kensington Swan (now Dentons Kensington Swan), and as an in-house legal consultant for a UK tech company. Marion regularly writes for Sparqa’s blog, contributing across its commercial, IP and health and safety law content.