Trade marks are signs that distinguish your products and services from those of other traders. A trade mark may be a distinctive word, phrase, logo, picture, shape, sound, smell or colour, or even a combination of all these elements.
This guide explains what is a trade mark. It tells you how to search for trade marks to ensure that no one else is using the same or similar mark as the one you wish to protect. It also tells you how to register a trade mark in the UK or further afield.
There is no legal requirement to register a trade mark. However, registration can give you legal rights to use your mark, licence or sell it, or to take action against anyone who uses your mark without permission. This guide outlines the necessary steps you should take when protecting registered trade marks.
What is a trade mark?
A trade mark is a way of identifying and distinguishing a product or service of one business from those of others.
What can you register as a trade mark in the UK?
In the UK, trade marks can be:
- words, including personal names, phrases or slogans
- designs, such as logos, symbols or signs
- sounds or jingles
- gestures or movement
- brand names, domain names and company names
- the shape of goods or their packaging
- a combination of any of the above
Note that registering a company name doesn't automatically give you trade mark protection. You should register your company name as a trade mark to secure exclusive rights to its use.
Acceptable trade marks
It is not possible to register all kinds of marks. To be accepted, a trade mark must be:
- distinctive for the goods and services for which you wish to register it
- sufficiently different from other registered trade marks in the same or similar class
Before 14 January 2019, marks also had to be capable of graphical representation, eg being written down.
Following the implementation of the Trade Mark Regulations 2018, which came into effect on 14 January 2019, applicants no longer have to represent their mark visually. Marks, however, must still be:
- capable of distinguishing goods or services of one business from another
- represented in a way that determines clearly what is being protected
Unacceptable trade marks
You cannot register as trade marks those marks that:
- are offensive or against the law
- describe the goods or services it will relate to, eg 'quality paint'
- are misleading or deceptive
- are a 3-dimensional shape associated with the mark
- are customary in your line of trade, too common or non-distinctive
- look too similar to state symbols like flags or hallmarks
Trade marks are a valuable piece of intellectual property and can play an important role in your marketing and branding activities. Read about the benefits of trade mark registration.
Selecting a strong trade mark
Choosing a mark that will function as a trade mark is extremely important for any business. While there are no fixed rules on what makes a successful trade mark, here are some things which you will need to consider to make sure you choose a good mark.
What makes a strong trade mark?
- Make sure that your mark meets the requirements for registration. It has to be unique and sufficiently distinctive for the category of goods and services you wish to use it for, in order to meet the registration criteria. See what is a trade mark.
- Think about how your mark will be perceived not only in your domestic market, but in overseas markets also. This is essential if you export or plan to export your goods and services abroad. Find out how to register a trade mark outside the UK.
- Consider which class or classes you wish to protect your goods and services in. The UK trade mark classification system is divided between classes 1 to 34 (goods) and classes 35 to 45 (services). You can register a trade mark under multiple classes. See how to classify trade marks.
- Avoid generic, descriptive and suggestive marks and choose memorable and distinctive words. For example, arbitrary marks (such as Apple for a computer) and coined words (such as Google) are more likely to be considered distinct. The stronger and more distinctive the mark is, the easier it can be to register and protect it.
- Carry out a detailed trade mark search. This will help you determine if the mark you intend to use is available in the UK or in other markets. If you come across a mark that has expired or does not appear to be in use, you will want to proceed with caution - it is possible to restore marks in certain circumstances. See how to search for trade marks.
- If you find a same or similar mark already in use, you may want to consider licensing or acquisition. In some cases, you may be able to file for revocation, cancellation or invalidation of an earlier mark. Read about objecting to and challenging trade marks.
- Also consider if you need to set up a website or social media presence for your new mark. Trade mark registration doesn't automatically give you the right to a matching business name or domain name. These are separate assets and you may need to buy or manage them separately. Read about domain name and trade mark conflicts.
- Seek advice early. Invest Northern Ireland's (NI) business advisers can help suggest ways of protecting your trade mark. They can also assist you with trade mark search, registration and developing a trade mark strategy. Get IP support from Invest NI.
If in doubt, you may wish to seek advice from a chartered trade mark attorney.
How to search for trade marks
If you're thinking of trade marking your goods or services, you should carry out a trade mark clearance search. This will allow you to see if any mark has already been registered or applied for that is:
- similar or identical to yours
- being used in the same class (or classes) for competing products or services
A UK search will disclose both registered trade marks and pending trade marks registrations where the application process is underway.
How do you do a trade mark search?
Searching for trade marks involves checking online registers and trade mark databases to ensure that no earlier mark exist and that you won't infringe on already registered rights.
You can carry out the search yourself, if you wish, using the UK Intellectual Property Office's (IPO) free online services and databases. Use the IPO's tools to search for a trade mark.
If you don't want to carry out the searches yourself, you can:
- get help from Invest Northern Ireland's intellectual property advisers
- find a trade mark attorney to conduct a search for you
When carrying out a search, don't focus solely on registered trade marks. Someone may be using a similar unregistered mark and may be able to claim a right to it under Common Law. This is known as passing off.
When to do a trade mark search?
You should search for previously registered trade marks as soon as you decide what mark you wish to use as your trade mark. At the very least, you should carry out a clearance search before you:
- create a new product or business name or logo
- move your existing goods or services into new sectors or geographic markets
- apply to register a mark as your new trade mark
Notification of earlier rights in search reports
When you file a trade mark application with the IPO, they will notify you about earlier marks which potentially conflict with yours.
Following the implementation of the Trade Mark Regulations 2018 which came into effect on 14 January 2019, the IPO will no longer inform you about such trade marks which have expired. Find out about the changes to trade mark law in the UK.
Expired marks can be renewed or restored up to 12 months after their renewal date. Should you attempt to register a mark identical or similar to theirs, the owners of earlier mark may seek to stop you from using the mark. Omitting to carry out a detailed clearance search may therefore put you at significant financial and legal risk. Read about using other people's trade marks.
What to do if a trade mark is taken?
If your search discovers a mark that conflicts with yours, you should check its status.
If the trade mark is in force and being used, you could seek permission from the existing owner to agree to your registration. If they agree, they should provide you with a letter of consent to submit to the IPO alongside your application. If they don't agree, they may choose to oppose your application.
If the mark is in force but hasn't been used in the last five years, you may be able to request the mark's removal. The owner of the earlier mark may choose to oppose this. Opposition is one of the ways it is possible to object to and challenge trade marks.
Seek professional advice if someone is opposing your trade mark registration.
How to register a trade mark
In the UK, trade marks are registered through the Intellectual Property Office (IPO).
You can apply to register your trade mark online or fill in paper forms. If you apply online, you may be able to avail of discounts if you pay the fee at the time of filing.
Representation of a trade mark
Following the implementation of the Trade Mark Regulations 2018, you no longer have to represent your mark graphically when you apply.
From 14 January 2019, you can file your mark online in an electronic format such as MP3, MP4 and JPEG. Read about the representation of marks in GOV.UK's new trade mark law guidance.
Apply to register a trade mark
You should follow several important steps when applying for trade mark registration:
- Step 1: Choose your mark carefully and get it right first time. You can't change the details after you submit your application. Find tips on selecting a strong trade mark.
- Step 2: Carry out a trade mark search to check that your mark is free to use and register. A clearance search will help you avoid infringing earlier rights if your intended mark is already in use. See how to search for trade marks.
- Step 3: Define your goods and services. In your application for trade mark registration, you must specify under which class or classes you want your goods or services to be registered. Make sure that you list all the goods and services you want your trade mark to cover, as you can't add any later. See how to classify trade marks.
- Step 4: Consider the jurisdiction you wish to register your trade mark in. UK registration will give you rights to protection in the UK only. You can apply to register a trade mark in the UK or, if you plan to export, consider registering a trade mark outside the UK
After you file your application, the registration process typically involves the IPO examining your application, the publication of your application in the online trade marks journal and the registration of your mark on the trade mark database.
How long does it take to register a trade mark in the UK?
In a straightforward case, if the examiner doesn't raise any objections and nobody opposes your application, the registration usually takes around four months from the application date.
To help you understand the process of applying for a trade mark, the IPO has published a trade mark timeline chart. This gives you an indication of your responsibilities and tells you what happens once you submit your application to the IPO.
Different processes exist for registering EU and international trade marks.
How much does it cost to register a trade mark in the UK?
It costs from £170 to register a trade mark online and £200 to register by post - this is for registering a trade mark in the UK in one class of goods and services only.
Each additional class costs £50, so the more classes covered, the higher the cost of filing is. You must file a fee sheet with your application and payment. Find trade mark forms and fees.
You can use the Right Start service if you want to check that your application meets the rules for registration. You initially pay £100, plus £50 for each additional class. You'll then get a report telling you if your application meets the rules. If you want to continue, you must pay the full fee within 14 days of getting your report.
How long does a trade mark last in the UK?
A UK trade mark registration lasts for ten years, after which time you can renew it indefinitely provided that you pay your renewal fees on time.
If you need advice or help with applying to register a trade mark, speak to Invest Northern Ireland intellectual property advisers or contact a chartered trade mark attorney.
Register a trade mark in the UK
You can register your trade mark with the Intellectual Property Office (IPO) online or by post.
Before you apply for registration, you should:
- check that your chosen mark qualifies as trade mark - see what is a trade mark
- choose the right mark to protect - see tips on selecting a strong trade mark
- find out if the mark is free to use - see how to search for trade marks
- understand the trade mark registration process - see how to register a trade mark
Apply for a UK trade mark
To complete your application for trade mark registration, you will need to provide the IPO with:
- your name and address details
- details of what you want to register (eg a word, illustration or slogan)
- the classes you want to register your trade mark in - see how to classify trade marks
You will also need an email address and a credit or debit card to pay for the fees.
Following the implementation of the Trade Mark Regulations 2018, you no longer have to represent your mark graphically when you apply. From 14 January 2019, you can file your mark online in an electronic format such as MP3, MP4 and JPEG. Find more information in GOV.UK's new trade mark law guidance.
Trade mark application fees vary according to the examination option you choose when you apply - this can be either the standard or the Right Start application service.
Fees are non-refundable and don't guarantee registration of your trade mark.
Register a trade mark outside the UK
Registered trade marks are territorial. If you apply for a trade mark in the UK, you'll only have protection in the UK.
If you're considering taking your services or exporting your goods overseas - now or in the future - you might want to consider registering your trade mark in other countries. You can do this in three different ways - on a national, regional or international level.
National trade mark application
You can apply directly to Industrial or Intellectual Property Offices of individual countries to secure trade marks in their jurisdiction. A few things to keep in mind if you pursue this route:
- you may need to translate each application into the national language
- you will need to pay the national application fees
- you may need to work with a IP agent or attorney to make sure that the application meets national requirements
Regional EU trade mark application
If you do business, or plan to do business, in more than one European country, you should look into applying for a EU trade mark (EUTM).
The EUTM creates a unified trade mark registration system in Europe, through which a single registration provides protection in all current and future member states of the EU.
If you choose to apply for a EU trade mark, keep in mind that:
- an online EU trade mark application costs €850
- you can file an application in just one language to cover all the EU countries
- you can renew your EU trade mark indefinitely every ten years
EU trade marks will continue to extend to the UK during the Brexit transition period until the end of 2020. From 1 January 2021, EUTMs will no longer protect trade marks in the UK. On 1 January 2021, the UK IPO will create comparable UK trade mark rights for all right holders with an existing EU trade mark. EUTMs will continue to cover the remaining EU member states. Find guidance on the EU trade mark protection and comparable UK trade marks from 1 January 2021.
International trade mark protection
An international trade mark application is possible under the Madrid system, which is managed by the World Intellectual Property Organization (WIPO) in Geneva.
What is the Madrid protocol?
The Madrid system provides a cost-effective and efficient way for trade mark owners to protect their marks simultaneously in up to 119 countries that have ratified the protocol.
The system allows you to file one trade mark application:
- with a single office (in national or regional trade mark office)
- in one language
- with one set of fees and in one currency
- without requiring a local agent to act on your behalf in the designated countries
The Madrid protocol also allows you to modify, renew or expand your global trade mark portfolio through one centralised system.
Using the Madrid system
If you apply under the Madrid protocol, your trade mark application will be examined according to the rules of the designated country. If accepted, your trade mark will gain the same protection in that country as if it was registered directly with the country's trade mark authority.
Your trade mark will last for ten years, after which you can renew indefinitely (provided that you pay the fees). The cost of an international trade mark registration will depend on where you want to protect your mark and how many classes of goods and services your registration will cover. Find out about the fees and payments under the Madrid system.
Protected international trade marks registrations filed under the Madrid Protocol that designate the UK or the EU (or both) currently have effect in the UK. At the end of the Brexit transition period, from 1 January 2021, all existing international trade mark registrations designating the EU will no longer provide protection in the UK. These rights will be immediately and automatically replaced by comparable UK rights. Read about the changes to international trade mark protection from 1 January 2021.
Registering trade marks overseas can be complicated and it's a good idea to get help from a qualified trade mark attorney or patent attorney. Find a chartered trade mark attorney.
Benefits of trade mark registration
There are many advantages to registering a trade mark. A trade mark can be your most valuable marketing tool and can help you to:
- position your products or services in the marketplace
- protect your business identity
- safeguard your reputation
Typically, the more successful your business becomes, the more valuable your trade mark is likely to be. Read about the importance of assets in business.
Do you need to register a trade mark?
You do not have to register a trade mark to use it. You can use an unregistered mark to promote your goods and service. However, if you do not register your trade mark, other businesses may be able to use it, or register it and prevent you from using it later.
Why register for a trade mark?
Registering your trade mark can help you get exclusive rights to use, licence, franchise or sell your mark. It can also help you to:
- prevent others from using the same or similar mark
- prove your legal rights for use of the mark and allow you to use the ® symbol
- avoid reliance on common law rights (ie passing off) which can be difficult to defend
A registered UK trade mark may also help you to:
- obtain trade mark registration in other countries
- prevent the importation of counterfeit foreign goods
If you choose to use an unregistered trade mark, make sure that you're not using someone else's mark and infringing their rights. If you use someone else's unregistered mark, they may take passing off action against you.
You can search for existing trade marks to check that you are not infringing on anyone's rights. Find out how to search for trade marks.
How to make money from trade marks
Trade marks, like other types of intellectual property (IP), are business assets. As such, they may have significant monetary value if you choose to sell or license them.
How to license your trade mark?
A licence gives someone the permission to use a trade mark belonging to someone else. It is a common way of monetising trade marks in the UK. A licence can be:
- exclusive - where the licensee has exclusive rights to exploit the trade mark
- non-exclusive - where more than one licensee can exploit the same mark
The terms of a trade mark licensing agreement can include:
- the amount paid for using the mark
- the duration of the licence
- the business sectors or products to which applies, etc
The trade mark owner and the licensee should negotiate the terms and agree them, preferably in a written contract.
Upon agreement, you must tell the Intellectual Property Office (IPO) about the licence, using the application to record a licensee, and keep them informed if the licence agreement ends, or any of the details change.
How to transfer a trade mark?
Since trade marks are property, you can sell or transfer them to another party as you would any other business assets. In legal terms, this is known as transfer of ownership or trade mark assignment.
There are a few situations where you might want to transfer a trade mark. For example, you may want to sell your trade mark:
- if you sell or close your business
- if you split off a product line
- if you are not able to use or utilise it
You may want to buy a trade mark:
- if you buy a new business or a part of a business
- if you merge your business with another
You can transfer ownership of a trade mark fully or partially. Make sure that you negotiate the terms of the transfer carefully and create a legally binding assignment agreement.
If you take ownership of a trade mark through sale or company merger, you must report the transfer to the IPO .
Before considering any kind of sale or licensing arrangement, you should seek out qualified advice from professionals experienced in trade mark law. An accountant may be able to carry out a business asset valuation to help determine how much your trade mark may be worth.
Use trade mark as collateral
Another way of using your trade mark is as security for a loan. The lender retains a legal right in your trade mark until you repay the loan, but allows you to use the mark in the meantime.
If you use your trade mark as loan collateral, you must tell the IPO. They will record the security interest against your registered mark. When you repay the loan, they will remove the details from the register. See application to record a security interest.
Trade mark revocation and invalidation
Keep in mind that you must use your trade marks in order to maintain their validity and their ability to make you money. If you do not use your trade marks, they could potentially be revoked and you may not be able to sell or transfer them. Read about revocation (non-use) proceedings.
Protecting registered trade marks
Registering a trade mark doesn't guarantee you that your mark will never be infringed. However, it does give you exclusive rights to use the mark and to prevent its unauthorised use on goods and services that are identical or similar to yours.
Use trade mark symbols to claim your rights
When you register a trade mark in the UK, you can use the ® symbol to indicate that you own the mark. For unregistered trade marks, you may use the abbreviation TM.
The use of these symbols has no legal significance, other than showing to the public that you claim the trade mark rights. This may help deter others from using the mark without your consent.
How to deal with conflicting trade marks?
If someone tries to register a trade mark that is identical or similar to yours, you can oppose, object or consent to the registration. The right course of action will depend on your specific circumstances. See objecting to and challenging trade marks.
What constitutes trade mark infringement in the UK?
Unauthorised use of a registered trade mark (or a confusingly similar sign) on competing or related goods or services may constitute trade mark infringement.
For infringement to occur, the use of the mark has to be:
- without consent of the registered mark owner
- in the course of trade, ie with a view to profit financially
- in the territory where the trade mark right is registered
Infringing acts may include (among others):
- affixing the trade mark to goods or their packaging
- offering goods for sale or supplying services under the trade mark
- importing or exporting goods under the trade mark
- using the trade mark on promotional material or in advertising
Under the Trade Mark Regulations 2018, which came into effect on 14 January 2019, a wider range of activities is considered infringing, allowing you to also take action against those that:
- prepare to counterfeit your goods (eg use your mark on packaging, labels, etc prior to making counterfeits)
- use a company name that conflicts with your trade mark
Marks of confusing similarity
A mark doesn't need to be identical to one already in use to infringe upon the owner's rights. A confusingly similar mark may infringe registered rights if it:
- has caused or is likely to cause confusion, or mislead customers into believing that the goods and services originated from the registered trade mark owner
- damages or takes unfair advantage of the significant reputation of the registered mark (even if it's used on dissimilar goods and services)
Dealing with trade mark infringement
In order to take action against infringement, you must typically be able to prove that you own the trade mark right and that the infringing conduct is illegal. There are many options for dealing with trade mark violation, including:
- sending the alleged infringer a 'cease and desist' letter
- reaching licensing or coexistence agreements
- mediation, arbitration or settlement out of court
- applying for injunctions
- suing for damages or lost reputation and profits
If you are concerned that someone is infringing your trade mark rights, you should seek prompt legal advice from a trade mark attorney or an experienced IP professional. Find a chartered trade mark attorney near you.
Passing off: definition, remedies and defences
In the UK, businesses can use common law rights to protect their names, signs, slogans or trade marks against passing off.
What is passing off?
Passing off happens when someone deliberately or unintentionally passes off their goods or services as those belonging to another party. This action of misrepresentation often damages the goodwill of a person or business, causing financial or reputational damage.
In addition to the straight passing off, there can also be:
- extended passing off - where a misrepresentation as to the particular quality of a product or service causes harm to another's goodwill
- reverse passing off - where a trader markets another business' goods or services as being his own
Raising an action of passing off can help you to prevent other people from using the goodwill associated with your business for their own benefit.
Elements of passing off
To establish a claim for passing off, you must meet three key requirements:
- goodwill - you must prove that you own a 'reputation' in the mark that the public associates with your specific product or service
- misrepresentation- you must show that the trader has caused confusion and deceived or misled the customers into believing that their goods and services are actually yours
- damage - you must prove that the misrepresentation damaged or is likely to damage your goodwill, or cause actual or foreseeable financial or reputational loss
Rights relating to passing off are established gradually with use. Goodwill in a mark can be particularly difficult to define. Reputation and goodwill of a business is generally considered as something that provides an identity to a business and its goods or services, and distinguishes them from those of their competitors.
Remedies for passing off
If you are successful in a passing off claim, there are several remedies available. You can:
- apply for an injunction to prevent the business from using your trade mark or goodwill
- apply to have the infringing goods destroyed
- sue for damages or seek account for lost profit
- request an inquiry to establish loss
Passing off defences
You may encounter different defences if you pursue a claim for passing off. For example, the defendant may argue that:
- the mark in question is not distinctive
- the mark is generic
- they have used carefully and honestly their own name
- you don't have goodwill in the mark
- you have given consent or encouraged the use of the mark
- you can't demonstrate damage or loss
The law on passing off is complicated. Claims can be hard to prove and taking action can be expensive, as the evidential burden of proof is solely on the trade mark owner.
If you suspect passing off or infringement, seek qualified advice from professionals experienced in trade mark law. Find a chartered trade mark attorney near you.
While passing off most commonly applies to unregistered trade marks, it may also relate to registered trade marks. See protecting your registered trade mark.