• Intellectual property
  • April 04, 2022

How To Apply For A Trademark

There are around 5.82 million businesses in the UK. Each one of these enterprises needs to stand out from their competition and create and retain brand recognition and loyalty. Investing in robust trademarks will increase the attractiveness of your business to investors and protect against competitors who attempt to trade on the back of your hard-won customer goodwill.

You may have heard that you do not need a registered trade mark to protect your brand - the common law action of passing off will safeguard it. This is untrue. Passing off claims is notoriously expensive and time-consuming. Furthermore, protection of a new, unregistered brand name or mark is usually impossible since it has not attracted sufficient goodwill to support an action for passing off.

Registering a trade mark shows investors and competitors that your company is well-organised and serious about protecting its intellectual property. In this article, we provide a brief overview of what is involved in registering a UK trade mark.  


The trademark registration process


What can be trademarked?

Trademarks can consist of words, slogans, designs, letters, numerals (e.g 501 Levi jeans), the shape and/or packaging of goods, internet domain names, smells, sounds, colours, and moving digital images.

To apply for registration, your proposed trade mark cannot be:

  • offensive
  • descriptive - the mark cannot simply describe the product or service it relates to
  • misleading
  • non-distinctive or common
  • a three-dimensional shape of the product it is related to
  • look too similar to state symbols like flags or hallmarks, based on World Intellectual Property Organization (WPO) guidelines
Most importantly, your mark must be original to avoid objections to your application.  

Checking originality - how to run a trademark clearance search

Objections to trademark applications can delay the registration process and result in expenses related to defending your mark’s uniqueness.  Therefore, it is imperative to run a trademark clearance search to ensure no one else has registered a mark similar to yours.

There are two ways to undertake a trademark clearance search:

  1. Manually - identifying a list of potential trademarks and their owners which require further investigation. Multiple sources such as Google, company directories, social media platforms and app stores are then used to find any person or company that may have a similar mark to the one you wish to register and therefore file an objection.   Once all the applicable information is collected, it needs to be analysed, and a final report compiled. Not only is a manual trademark clearance search expensive and slow, but it is also highly prone to missing potentially similar marks.
  2. Using AI-based searches. Using AI and machine-learning products can reduce the time required to conduct a trademark clearance search from weeks to seconds.  Furthermore, the results you uncover will be more comprehensive and accurate. This is vital because you need to consider marks that sound or look similar to the trademark you want to register. Concentrating only on exact matches will not capture all potential opponents.
A Trademark Solicitor can assist you with designing a trademark search and interpreting its results. Furthermore, they will help you select and define the Nice Classes you need to register your mark under.

Selecting the right Nice Class  

The WIPO defines the Nice Classification on its website as: 

"The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks." 

There are 45 classes in total, and you may likely want to register your mark under more than one.  Each territory you apply under to register your mark may assign a different Nice classification when interpreting the description of your product or service. A Solicitor can help ensure you register under the required classes to protect your brand.

Making your application

Once you have run a trademark clearance search you will be ready to apply to the Intellectual Property Office (IPO) to register your trademark.  You or your Solicitor will do this online. On completion of the application and payment of the non-refundable fee, you will receive a confirmation email.

An IPO officer will examine your application and publish it in the online Trade Marks Journal. If there are no objections your mark should be registered in around four months.


Wrapping up

As you can see from above, filing a trademark application requires expert knowledge. An Intellectual Property Solicitor will not only possess access to AI clearance search tools but will also know how to interpret the search results accurately. Furthermore, they can ensure that your mark is filed under the correct Nice Class and is not declined due to being merely descriptive or offensive. Investing in expert legal advice will mitigate the risk of your branding budget being used to defend objections to your trademark application and ensure the process runs smoothly.


You can get legal assistance from LawBite

Applying for a trademark can be difficult to navigate. LawBite Intellectual Property lawyers are experts in trademark law and will give you the advice you need through the registration process. 

If you have any questions about trademark application, international registration, trademark protection, trademark infringement or trademark filing do not hesitate to contact us.

To book your free 15-minute phone consultation, visit our Intellectual Property page or call us on 020 38088314.


Additional useful information


In closing

Nothing in this article constitutes legal advice on which you should rely. The article is provided for general information purposes only. Professional legal advice should always be sought before taking any action relating to or relying on the content of this article. Our Platform Terms of Use apply to this article.

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