How to register a trade mark

Check if your brand qualifies as a trade mark

Your trade mark must be unique, and must either be:

• words, eg EXXON for petroleum products
• logos, eg stars for hotel services
• sounds, eg a ring tone associated with a telecommunications logo
• colours, eg the colour red for a luxury shoe brand
• a combination of these

Your trade mark cannot be offensive, eg contain swear words or pornographic images, nor can it describe the goods or services it will relate to, eg ‘Cookies’ (for the name of a biscuit brand). It is also important that your trade mark is not misleading, eg use the word ‘organic’ for goods that are not organic.

Check if your trade mark is already registered

You should search the trade marks database before you send your application to check whether anyone has already registered an identical or similar trade mark for the same or similar goods or services.

Trade mark classes represent the goods and services the trade mark will be used on. It is important that you choose categories that best represent the goods and services that you provide, or intend to provide, under your required trade mark. If your mark is used on different products, you may need to file trade marks in multiple classes.

If your trade mark is not distinctive for the class of goods and services you provide, it cannot be registered.

To ensure your mark can be registered, you’ll need to compare it against trade marks already registered.

If:

• your mark is identical to a mark already registered (and for identical goods/services)
• your mark is identical to a mark already registered (and for similar goods/services and likely to cause confusion in the mind of the public)
• your mark is similar to a mark already registered (and for identical/similar goods/services that are likely to cause confusion in the mind of the public), and
• your mark is identical/similar to a mark already registered but the goods/services are different (eg where the mark is ‘famous’), the mark cannot be registered

Apply

Apply to register your trade mark online with the Intellectual Property Office (‘IPO’). You’ll need:

• details of what you want to register, eg a word, illustration or slogan
• the trade mark classes you want to register for, eg class 1: chemicals, or class 43: food and drink services

You can also apply by post.

When registering your trade mark, you will need to pay the applicable fees. For more information, read How much does a trade mark cost.

Feedback

Once you’ve applied, you’ll get feedback on your application (the ‘examination report’) within 20 days - you have 2 months to resolve any problems (eg you might have to get the consent of the previous rights holder if that person has already registered or applied to register the same or a similar mark).

Publication

If the examiner has no objections, your application will then be published in the trade marks journal for 2 months, during which time, anyone can oppose it.

Registration

Your trade mark will be registered once any objections are resolved and you’ll get a certificate confirming this.

In the event that your application is opposed, you can either:

• withdraw your application
• talk to the person making the opposition
• defend your application

Be aware that you won’t be able to register your trade mark until the matter is settled and you may have to pay legal costs if you want to challenge the opposing party.

• make sure you report any changes to your name, address or email address
• you can object to other people’s trade marks, eg if you think they are identical or similar to yours
• you can sell, market, licence and mortgage your trade mark
• your trade mark will last 10 years - you can renew it after that time

The ‘™’ symbol is used where you haven’t registered your trade mark yet or are in the process of registering your trade mark. Whilst it makes people aware that the trade mark is being used, it doesn’t provide you with automatic rights, as registration would.

To further protect your trade mark, you should make it clear that it has been registered. This can be done by placing an '®' (registered) mark somewhere prominent around your trade mark or on products using the trade mark. This can only be done once the trade mark has been registered with the IPO or EUIPO.

Although it is not required, you can further protect your mark by providing more detailed information (eg design number and design owner) somewhere less prominent, like in the product description.

You can also register a trade mark in the European Union (EU) through the EU Intellectual Property Office (EUIPO). EU trade marks (EUTMs) registered before the end of the UK’s transition period for leaving the EU (ie registered before 1 January 2021) were converted automatically into ‘comparable’ trade marks in the UK. For more information, read Registering a trade mark in the EU.

‘Comparable’ trade marks

Under the Withdrawal Agreement, the IPO created  ‘comparable’ UK trade marks for every registered EU trade mark.

Each of these ‘comparable’ trade marks:

• was recorded on the UK trade mark register

• kept its original EU trade mark filing date

• kept its original priority or UK seniority dates

• has the same legal status as if had been directly registered as a UK trade mark

• is a fully independent UK trade mark (ie it can be assigned, challenged, licensed or renewed separately from the original EU trade mark)

Owners of EU trade marks did not need to file a new application or pay any application fees for the ‘comparable’ trade mark. 

Those with applications for an EU trademark that were ongoing at the end of the transition period (ie those not yet registered as an EU trade mark on 31 December 2020) were granted a nine-month extension (up to and including 30 September 2021) to apply for a UK trade mark.

For more information, read the Government’s guidance.

UK Address for service

Applicants for new UK trade marks will require a UK, Gibraltar or the Channel Islands address before their application will be considered by the IPO.

Owners of  ‘comparable’ trade marks are not required to provide such a UK address for a period of three years from 1 January 2021. From 1 January 2024, the IPO will require a UK, Gibraltar or Channel Islands address for service where new contentious proceedings are brought. For more information, visit the Government website.