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Steps in Registering a Trade Mark in the UK

1. Clearance search - optional but highly recommended

Before proceeding with trade mark filing, it is advisable to arrange for a trade mark clearance search on the appropriate Trade Mark Register(s). This will establish whether the mark is free for use. A common misapprehension is that if a mark has not already been registered in an identical form then all is well. No! The reality is that someone's statutory monopoly (which is what a registration is) will be infringed by unauthorised use of the same or similar trade mark in respect of the same or similar goods or services. Where the line is to be drawn for 'similarity' is where professional help is needed. Money spent on a professional clearance search is money well spent to prevent much larger financial wastages further down stream!

How much does this cost? This depends to some extent on the nature of the goods and services and hence the complexity of what needs to be protected, but in general a search of registers, which includes analysis and reporting, will cost around £300. We can also do a less formal search that will cost less. Please contact us about this.

2. Can only trade mark attorneys register a trade mark?

Anyone (who has legal capacity) can apply for a trade mark, but since the actual process can get quite technical, it can be very advantageous to have a trade mark attorney do this for you. A trade mark attorney is a registered trade mark agent who is qualified by stringent professional examinations to know the law and practice of trade marks. A qualified attorney not only advises on UK protection, but also protection worldwide. He/she can also advise on many aspects of the law, including on design rights, licensing and copyright.

3. The trade mark registration process

The trade mark attorney will file the trade mark before the UK Intellectual Property Office ('UKIPO' - formerly the 'Patent Office'). An application number is assigned and this will appear on the UKIPO website. After about two months the mark will be examined and a report issued. If positive, the mark will be advertised for opposition purposes within a month. The opposition period is three months. If no one objects, the mark will be registered in the official journal and a registration certificate sent. The whole procedure could take as little as 6-8 months.

If, on the other hand, the examiner's report raises objections, this stage could be prolonged by several months (or more!). The mark may even be stopped in its tracks. Once past this post, if a third party raises objections during the opposition period, the process of getting through this (which again, may even ultimately end in failure, plus costs awarded against the applicant) could take quite a long time unless there is a speedy negotiation to settle differences. It is during these periods that the applicant sees most clearly the benefits of having a qualified attorney to act on his/her behalf. Only a minority of marks are opposed, however. Also, examiners are always helpful in trying to help the applicant through the examination obstacles. The result is that a very high percentage of marks applied for are registered, even if there is a bit of compromise needed along the way (in terms of scope of protection) to see it registered.

Since October 2007, the examiners no longer object to a mark on the basis of earlier rights (called 'relative grounds' objection). But there is a new procedure whereby prospective opponents will be warned of the impending registration. The potential for opposition is thus increased, making it all the more advisable to instruct an attorney to deal with the procedure of registration.

Once registered, the trade mark remains in force indefinitely as long as they are renewed through payment of renewal fees every ten years.

4. Cost of procedure

Government fees start at £200, with an extra £50 for each class above one. Professional fees are in addition. Please contact us at Cam Trade Marks to discuss the various cost options. We have special rates for SMEs who might be entitled to discounts.

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