Understanding Trademark Registration in the UK

In the United Kingdom, the main authority for registering trademarks is the UK Intellectual Property Office (UKIPO). A trademark registered in the United Kingdom has valuable legal protections in England, Wales, Scotland, and Northern Ireland.

The UKIPO uses the Nice Classification system, which groups goods and services into 45 ‘ classes’, each of which contains a list of pre-approved items. Although each class has its own heading, these headings should not be used as individual items and applicants should list each good and service for which they wish to register the trademark within each class. 

The United Kingdom follows the principle of First-to-File when it comes to trademark registration. As the name suggests, the ownership of the trademark is determined by who filed it first. This means that while you may have some rights to your trademark already by using it in the UK, those common law rights are very limited and may be challenging to prove in court. 

Trademarks registered in the European Union after the January 1st 2021 are no longer valid in the United Kingdom. Trademarks that were registered in the European Union prior to BREXIT are protected in the UK. In this case the trademarks are granted a comparable trademark by the UK trademark office. The comparable trademarks are independent to the EU trademarks. Any change to this trademark will have to be processed directly through UKIPO.

For filing/registering a trademark in the United Kingdom it is not mandatory to be a citizen or resident of that country. Foreign applicants are allowed to file and seek registration for their trademark, as long as they have a commerce in the UK market. However, foreign applicants are required to have a postal address within the UK for the purpose of communicating with the UKIPO, or they should have a representative with an address in the United Kingdom.

For foreign applicants residing outside the United Kingdom it is recommended to perform the trademark prosecution in the UK through an agent, a registered UK trademark attorney. Having a local representative can significantly reduce the time and cost of the application procedure.

1. Create distinct name

For a trademark to be eligible for registration, it has to meet specific criteria, one of them being distinctiveness. As the purpose of a trademark is to signal a recognizable source of goods or services to the customer, only a distinctive-enough trademark can achieve this purpose without consumer confusion. The more generic or descriptive a name, logo, or any other brand elements are, the less likely they will be registered by the trademark office. You can learn more about registration requirements and the distinctiveness of trademarks by visiting our Trademark Academy.

2. Conduct prior search

Another important step in the process of registering a trademark is making sure that it is not too similar to already registered brands. Similarity of trademarks is only one of two limbs when assessing whether to register the application in case it is opposed. The other is the similarity of goods/services. In other words, there must be a likelihood of confusion with earlier trademarks for the application to be refused on such grounds. Likelihood of confusion is given if there is both similarity between marks and similarity between goods/services.

Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the trademark office or received opposition from their competitors who registered before them. Trademark law strongly prioritizes companies that file trademark applications first, even if the registration process was not yet completed. As a result, the Intellectual Property Office, in general, recommends searching their trademark filing database prior to starting with the registration.

3. Submit an application

In your application, you must send details of your trademark and the goods or services you want to use your trademark on to the UKIPO. This also includes the trademark classes and terms you wish to register. 

After you send the application, the UKIPO will: 

A trademark registration is valid for 10 years from the date of application. The registration is renewable for successive periods of 10 years. You can read more about the trademark application process in the UK in our separate article How to apply for a trademark on your own? (UK).

The Application Fee for a trademark registration in the UK is £170 ($225) for online applications and £200 ($265) for paper applications. 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 will cost £50; a fee for an international application is £40 ($53.14) plus additional WIPO fees [1]. 

It should be noted that these costs do not include legal (attorney) fees for filing a UK application, tracking its progress, and responding to basic examination requests/questions, which are typically around $1,000.

During the 2 months after the trademark application has been published in the Trademarks Journal, owners of previously registered trademarks and entrepreneurs generally have the right to raise opposition against new trademark applications. On average, oppositions are raised in approximately 5% of the new applications.

Time: In the UK, an opposition which goes no further than the preliminary indication can take around 7 months. A full court procedure, in which evidence is filed, with the opposition being decided after a hearing, can take up to two or three years. There is then also the possibility of appeal, which will further extend proceedings. 

Cost: The official fees for filing the Notice of Opposition range between 100 and £200 ($100-250). The losing party will bear all following legal costs of the opposition procedure, which can go up to  £1,500 - £3,500 ($1700-4000).

You can read more about the trademark opposition process in the UK in our separate article What happens if someone opposes your trademark? (UK). 

Seeking expert support from an experienced trademark lawyer will certainly give you the help you require to give your business the necessary protection if you’re considering making a move into the UK market. Team Trama is here to support you along the way. Endorsed by 3,500+ brands across the world, trademark one-stop-shop Trama offers an elegant solution to protect the heart & soul of your business!

Need more clarification before you are ready to proceed? No problem at all! Please schedule a free consultation with us and our representative will gladly walk you through the process, addressing any concerns you might have!

[1] https://www.gov.uk/government/publications/trade-mark-forms-and-fees/trade-mark-forms-and-fees