Trade marks information for consumers and small businesses

Trade marks are national or regional rights that protect your brand: they identify your product or service and distinguish it from others. When granted, a trade mark gives you the right to take action to stop other people using the same or a confusingly similar mark for the same or similar goods or services. Once your trade mark becomes well known, it may also give you rights to stop other people trying to benefit from that reputation.

Each country or region has its own registration system and sets its own application fees and other requirements for registering a trade mark, but there are international treaties that can be used to help protect your brand. The timetable and cost of obtaining trade mark protection therefore varies according to:

• How many different types of goods and/or services you want to sell under your trade mark
• How many countries you want to include in the scope of protection
• Whether there are international treaties that apply to the territories you wish to cover.

There are 45 internationally-agreed classes of goods and services and your intended use of your mark may fall into more than one class. Your brand may also include different elements which you may wish to register as separate marks (for example, a name and a logo).

Typically, an individual consumer or small business will ask us about a UK trade mark application, that is, an application for a registered trade mark which can be enforced in the UK. We have therefore given an illustration of the process, timetable, and costs for this below. If you wish to extend protection to other countries, we can also work with you to achieve the desired protection.

UKIPO means the UK Intellectual Property Office, the government body that deals with trade marks and other intellectual property. Other countries (and the EU) have their own similar organisations (collectively, Trade Mark Offices).

Examiner means the official at the UKIPO who reviews your application and responds with any objections that you will have to overcome before it is acceptable; and Examination means the process conducted by the Examiner.

Stages in a UK trade mark application

We can handle the full process for you:

• Advising you about your chances of success with your application
• Filing the application and paying the official fees to the UKIPO
• Advising you about any issues that arise during the Examination process
• Advising you of any objections from third parties (“oppositions”)
• Sending you the certificate of registration.

How much will it cost?

Our professional fees for filing a single trade mark covering one class of goods or services will be £600 plus VAT. We charge £100 plus VAT for each additional class of goods or services. If your mark proceeds to registration, we charge a further £250 plus VAT at that stage. In addition to our fees, we will pass our disbursements on to you at cost. Disbursements are costs related to your matter that are payable to third parties, such as fees payable to search agencies and Trade Mark Office fees. We handle the payment of the disbursements on your behalf to ensure a smoother process.

Normally, the disbursements we will need to pay on your behalf are:

• UK trade mark e-filing fee £170 (for one class; plus £50 for each additional class)
• (Optional) clearance search costs – see below, under ‘Potential additional costs’.

The total cost of obtaining registration of a UK trade mark application in a single class including our professional fees, and disbursements we pay to others, will therefore be £1,020 (plus VAT on our professional fees), assuming that the application process is relatively straightforward and there are no serious objections by an Examiner and no oppositions filed by third parties.

Potential additional costs

Before launching a new trade mark and filing an application, it is advisable to do searches of the trade mark registers for earlier trade marks that may prevent you from using the proposed trade mark and/or succeeding with your application. If you ask us to arrange a clearance search, the costs will depend on the type and scope of search that is required, and whether we involve third parties. We will advise you on the most appropriate search for your mark, but the options range from:

• An identical mark search, conducted by our team, which will tell you if there is a mark already registered that will cause a problem for you – professional fees of £250
• A complete UK availability search, conducted by a third party search agency – our professional fees for reporting the results of the search to you will be £700 plus the third party costs will be £128. Detailed advice on the risk presented by particular marks identified in the report and on whether and how to proceed with the proposed launch and a new trade mark application would incur additional costs.

It is possible that the UKIPO may object to your application, for example on the basis that your proposed trade mark is descriptive and / or not distinctive for some or all of the goods and services applied for. We can advise you on the merits of any such objections and challenge them. There are a number of options available. Advising you on the nature and merit of any objections and challenging the objections will incur additional costs. We can provide estimates when we know what result you are seeking to achieve.

Even if the UKIPO does not object to your application it is possible for third parties (e.g. your competitors) to seek to stop your mark from becoming registered. We will notify you if there is an opposition, and ask you how to wish to proceed. You can choose to fight the opposition or you may withdraw your application. Our fees set out above do not include advising you on the merits of an opposition and the options for defending it and this advice would incur additional costs. We can provide estimates when we know what result you are seeking to achieve. If you withdraw your application once an opposition is filed, it may also be necessary to contribute to the costs incurred by the opponent in preparing the opposition..

If you also wish to obtain trade mark protection in other countries, additional fees will be payable for the steps necessary to extend your trade mark protection to the chosen countries. These fees will include local Trade Mark Office fees, the professional fees of local expert firms you ask us to use or that we instruct on your behalf, and our fees for coordinating the whole process and keeping you informed. These additional fees vary from country to country and can on occasion be significantly more than the ranges given above. We can provide estimates for advising on a strategy for protecting your brand internationally and filing the necessary applications.

How long will my trade mark application take?

The UK operates a “first to file” system meaning that you should aim to register a trade mark as soon as possible to minimise the risk that someone else will beat you to it.

It typically takes about three months from filing an application to register a UK trade mark, assuming there are no serious objections by an Examiner and no oppositions filed by third parties.

How is the trade mark attorney profession regulated and what professional indemnity insurance is in place?

Our firm is regulated by IPReg, and is subject to its Rules of Conduct. IPReg sets standards of training before a person can be admitted to the register and also requires Continuing Professional Development to ensure an attorney’s professional skills are kept up to date.

In the unlikely event that you have a complaint about our service you can use our own complaints procedure. You may also be able to bring your complaint to the Legal Ombudsman.

We have insurance that extends to acts and omissions wherever they occur in the world. Our limit of liability is appropriate for a firm of our scope and standing. Further details are available on request. Our insurer is Pamia Limited, whose address is 90 Fenchurch Street, London, EC3M 4ST.

IPReg has also put in place an insurance policy that may provide additional protection in the event of dishonesty or fraudulent use of client money.