What is the procedure for obtaining a UK Trade Mark Registration?

In order to obtain a UK trade mark registration, it is necessary to make an application to the UK Trade Mark Registry, which is part of the UK Intellectual Property Office. There are no nationality restrictions concerning who may apply for or own a UK registration.

An application should include information about the applicant, a representation of the mark and a list of the goods/services for which registration is sought. An official fee must also be paid. Goods and services are classified into forty-five classes and the cost of an application will depend upon the number of classes into which the applicant’s goods/services fall.

The Trade Marks Registry will consider whether an application meets formal filing requirements and, if so, will then carry out a substantive examination to assess whether the application meets the criteria for registration. In particular, the Registry will consider whether there are any “absolute grounds” or “relative grounds” for refusal.

1. Absolute grounds

The Trade Mark Registry will assess whether the sign for which protection is sought is a trade mark and, if so, whether it is the type of trade mark that should be registered.

A trade mark registration gives the proprietor exclusive rights and there is a general principle that one trader should not be able to monopolise any mark that other traders should be free to use. Accordingly, the Registry will object to the registration of marks which (1) describe the characteristics of the goods or services for which protection is sought (e.g. the word ORANGE for fruit), (2) are devoid of distinctive character (e.g. common geographical names or surnames, or laudatory terms such as FIRST CLASS), or (3) are customary in common language or in trade.

Other marks which may be refused under absolute grounds include those which are contrary to public policy or accepted principles of morality, or those which are of such a nature as to deceive the public (e.g. SILKY for cotton garments).

2. Relative grounds

The Registry will raise an objection if it believes there are any earlier UK or Community Trade Mark (CTM) applications/registrations, or International (Madrid Protocol) registrations designating the UK or European Community, which conflict with the application being examined.

It is fairly common for objections to be raised on examination, although it is often possible to overcome these objections by, for example, filing written arguments, attending oral hearings or submitting evidence such as evidence that a mark has become distinctive of the goods/services for which registration is sought by virtue of the use made of it.

Once an application has been accepted, details of the application will be published in the UK Trade Marks Journal and third parties will have three months from the date of publication to oppose the application if they wish to do so. An application may be opposed on absolute or relative grounds. The majority of applications are not opposed.

If no opposition(s) are filed (or the application is not successfully opposed in its entirety), then the application will proceed to grant and a certificate of registration will be issued. A UK trade mark application can be granted in as little as six to eight months if no objections are raised by the Registry on examination and no oppositions are filed.

A UK registration lasts initially for ten years from the filing date. Provided that renewal fees are paid every ten years, the duration of the registration may be extended indefinitely.