Intellectual Property

6. Trade Marks

Trade marks are used to distinguish your product or service from other, similar goods or services.

6.1 Unless you register your trade mark, it can be difficult to prevent other businesses from using the same mark or a similar one. A competitor who has registered a similar mark could even stop you using yours.

It is now possible to register a trade mark that is the same as, or similar to, an existing trademark providing the owner of the original trade mark does not object.

• Before using or registering a trade mark, you should carry out a search to check for similar trade marks.

6.2 There are some registration restrictions.

• In general, a mark cannot use words other traders should reasonably be allowed to use (eg purely descriptive terms).
• A mark must not be deceptive or be easily confused with another registered mark.

6.3 Applications for UK registration are filed at the Intellectual Property Office's (IPO's) Trade Marks Registry.

• The initial application contains details of the mark and the goods or services it will be used for, and must be accompanied by the appropriate fee (from £200).
• If you e-file your trade mark application, the total fee is reduced by £30.This doesn't apply to 'Right Start' applications (see below). Contact the IPO Central Enquiry Unit for information and application forms (0845 9 500 505).
• An examiner will search to see whether any conflicting marks have already been registered and send you the results. Once you have received the examiner's report you have two months to decide whether to continue, amend or withdraw the application.
• If filing online, you can also make a 'Right Start' trade mark application which allows you to pay only half the relevant fee upfront.You will only have to pay the balance if you decide to proceed with the application after seeing the examiner's report.
• The application is then published and is held open to third-party objections for two months. After this period, once any objections have been resolved, the mark can be registered.
• Most businesses use trade mark attorneys for their applications. Contact the Institute of Trade Mark Attorneys (020 8686 2052). Typical costs are £700 to £1,000 for the full process, depending on the complexity of the application and how many types of goods or services the mark will cover.

6.4 Registered trade marks can be renewed indefinitely.

• After the first ten years, you have to pay a renewal fee (currently at least £200), for each subsequent ten-year period.
• Trade mark registration can be overturned by competitors if a mark is not used for five consecutive years.