Frequently asked questions

What is a registered trade mark?

A registered trade mark is a word, logo or even a shape which has been registered with a government body and gives the owner the exclusive right to use that mark in relation to certain goods or services. This means that only you can gain the benefit of the registration and you can prevent any other person from using that mark without your approval.

The main function of a trade mark is to act as a “badge of origin” to ensure that members of the public associate the goods or services from your company as opposed to those from your competitors.

In order to be accorded registration a trade mark needs to have negotiated formal processes of examination by a government agency and have been published in a journal. It is very unusual that the relevant government agency does not ask difficult questions to the applicant in respect of the application. If  you want to increase the chances of overcoming such objections then it is best to use our services.

What are the benefits of a registered Trade Mark?

The owner of a registered trade mark has the right to oppose to any new trade mark application of a sign identical or similar to the registered trade mark in relation to identical or similar goods and services in the territory or territories covered by the registered trade mark. The owner also has the right to sue for trade mark infringement when another party uses the same or a confusingly similar mark in relation to the same or similar goods/services to those covered by the registration. An owner can also ask a court for an injunction to force the infringer to destroy infringing articles and for an account of profits.

A registered trade mark can be bought, sold, mortgaged and licensed. Once the sign is registered, Brand Protect can help you to protect and exploit your valuable resource effectively.

The initial registration period lasts for 10 years. The registration can be renewed indefinitely subject to minimum conditions.

How long will it take for my UK Trade Mark to be registered?

A typical UK application that proceeds without complications can take 6-9 months before registration is granted.

How long will it take for my EU Trade Mark to be registered?

A typical application that proceeds without complications takes between 12-18 months before registration is granted.

Does a registered Trade Mark offer worldwide protection?

No. Registered trade marks are limited territorially. A UK trade mark is only valid in the UK. However, an EU trade mark is valid in the UK and the other 27 member states of the European Union.

If I want to register both a word(s) Trade Mark and also my company logo, do I need two Trade Marks?

Yes.

How many Classes do I file my application in?

All goods and services in a trade mark application are sorted into 45 classes as structured and defined by the Nice classification of goods and services (10th edition). The number of classes in which you need to file your application will depend on the goods and services you want to offer under the trade mark. Our skilled and experienced lawyers can help in this respect.

How much does an application for registration cost?

We can advise you of the costs of application and what a typical application costs. Some applications face additional complications. Such complications can be expensive to resolve but we at Brand Protect work with you to minimise these costs. We will not spend any resources without having gained your approval first.

Is every application successful?

No. Some signs are not capable of registration. Furthermore not all searches can find all rights that can be used to oppose an application.

The main reasons why applications are unsuccessful are listed as follows:

  • The application is too descriptive of the goods or services to be registered e.g. “bananas” for bananas.
  • The sign uses a royal cipher without royal consent
  • The sign is identical or confusingly similar to an earlier trade mark or right.

There is no guarantee that an application for a trade mark will succeed. We cannot guarantee that your application will not be opposed by a third party or objected to by the Registry. If your application is objected to by the Registry or opposed by a third party, our lawyers will of course keep you fully informed but they will have to charge for work done in addressing these problems on their usual charge-out rates. They will inform you in advance of the applicable rates.

Why should I file an application through a specialist?

Nearly every application for registration faces an official action by the relevant trade mark office. Since the trade mark represents one of the most important and valuable assets that the company will own, it is important that none of your rights or assets are given away or not claimed. The people at Brand Protect are some of the best in the business. Unlike most other agents we enjoy full rights of audience and can prosecute your rights in the UK Intellectual Property Office (IPO), the European Union Intellectual Property Office (EUIPO) all the Courts of England and Wales and the European Court of Justice.

How should I start the process of application for my trade mark?

Telephone our helpdesk. After we have received and confirmed your instructions by telephone or by email, you will be asked to sign a letter of engagement. Once we receive the letter of engagement with your signature, a specially allocated lawyer will prepare a specification of the goods and/or services for your application. That lawyer will then send this specification to you for your approval. Once you have approved the specification, we may ask you for a deposit, and the trade mark application will be made on your behalf. You can
telephone us at any time.

Our lawyer will discuss the search results with you as well as any special requirements that you need for the application (e.g. exact colours of a logo)

When can I use the “TM” or “®” designations?

You can use the “TM” designation at any time. It is a crime to use the “®” designation until your trade mark is registered.

How many classes of goods and services are there?

There are 45 classes in total, 34 for goods (from classes 1 to 34) and 11 for services (classes 36 to 45). A full list and description of the classes is provided below. Do not be too concerned about getting your classes absolutely right at this stage as the lawyers who carry out the trade mark work will advise you on this.