BRAND PROTECT LLP

The cost (in terms of government fees) of making a UK application is £200 per application plus £50 per class (all the goods and services offered in commerce are divided into 45 classes).  In addition to this cost there is a fee of £350 charged by this firm to make the application in one class (this is a considerably lower fee than our competition charges). When an application is made it will be examined by the UK Intellectual Property Office (IPO).  They will check whether or not the application is capable of being a trade mark.  The more distinctive the mark to be applied for is, the fewer the number of objections this application will receive from the IPO.  The IPO then checks whether or not other companies or individuals have registered identical or similar marks (conceptual, aural and visual similarities).  If the IPO's objections can be overcome, then the application is published in the "Official Journal".  This allows the public to oppose the application for a period of 2 months.    If your mark is challenged by way of opposition, then there will be an official administrative process, (called "Opposition Proceedings").  Most oppositions are settled before they become confrontational. 

In May 2004, new procedures were introduced to make it possible to challenge the validity of trade marks used by owners to oppose new applications by requesting that those owners prove that they have used their mark in the last 5 years.

We recommend undertaking a search of the UK and CTM trade marks database prior to make an application for registering a trade mark, in order to analyse any registered marks which may oppose your application. Doing so may save much time, and therefore cost, later in the course of the application if an opposition against your application is made by the owner of a mark with prior rights.

The process of application usually takes 6-8 months.

Once the mark has been registered, a UK trade mark acts as a "shield" (in the sense that one registered trade mark cannot infringe another).  This means that you would not need to change your brand name.  It also acts as a "sword" as you can prevent others from using "similar" brands and marks (see above for the meaning of this).  99.99% of any potential emulators back down when the registration is brought to their attention.  This saves you a great deal of time and money compared to the costs of relying on the common law.  Furthermore, should you decide to sell the registered trade mark in the future, potential purchasers are more likely to pay more for a registered trade mark.  Accountants have different ways of valuing IP rights but one of the best is to add up all the costs associated with promoting that brand over the years and give this figure.

All this is quite complicated.  At BRAND PROTECT LLP we won't charge you the earth for our services.