Frequently Asked Questions

Which is the correct term – “trade mark” or “trademark”?

There is no difference in meaning between the two terms. In the UK, the term “trade mark” is standard. However as the term “trademark” is used some territories, such as the US, it is also becoming more widely accepted and used in the UK.

How much does it cost to file a trade mark?

Trade Mark Offices charge official fees to file trade marks, with each one charging different fees depending on the number of classes in which marks are filed.

We can provide you with a full cost estimate for your marks upon request but trade mark filings are typically cheaper than people anticipate.

By way of example,our standard charge for filing one UK trade mark in one class is £500 + VAT (which includes the UK Intellectual Property Office (UK IPO) official fees of up to £200). Similarly, our standard charge for filing one European Community Trade Mark in up to three classes is £1400 + VAT (which includes The Office for Harmonisation in the Internal Market (OHIM) official fees of up to €1050).

Why should we obtain professional advice when seeking to trade mark our brand?

While it is possible to file a trade mark without seeking professional advice, it is not necessarily recommended.

We can advise on a number of things that will give you the best protection for your needs. We will identify possible marks that you may wish to file as well as indicating the level of protection that each filing would give. We would also advise as to which jurisdictions you may wish to consider filing in and the merits of doing so.

In some cases, we may advise against filing a trade mark application altogether if, for example, we consider that this may trigger a legal dispute with a third party.

We also advise as to which classes you may wish your mark to be filed in as well as drafting bespoke class specifications that are tailored to your business.

Additionally, in the event that your trade mark application is rejected by the corresponding trade mark office, we may be able to file submissions to try to persuade them that your application should be accepted. If your mark is opposed by a third party we can also advise as to the possible steps forward as well as communicating with the third party to try to resolve the matter.

If your mark is subject to infringement proceedings we can also advise and act on your behalf.

In short, obtaining professional advice early will ensure that you file trade marks that best suit your business needs. Additionally, engaging with us from the start will mean that we understand you and your business making our advice on any oppositions and infringements more appropriate and more relevant to you.

What does the TM symbol mean and should I use it?

The TM symbol means that you are using something as a trade mark. It can be used for both registered and unregistered marks, including marks that have been filed but are pending registration.

It is especially useful to use in conjunction with marks that are not yet registered but that you are intending to file for in the future, since your use of the TM symbol can be used as evidence that you are claiming legal rights in that mark.

Can we use the ® symbol next to our logo or brand name?

It is an offence to use the ® symbol against something that is not registered as a trade mark, so you should never use it in conjunction with marks that are unregistered or are pending registration. You should also avoid using it in conjunction with the word-only version of marks that you only have a registered logo mark for, or vice versa. Once a mark is registered you may use the ® symbol but it is not compulsory.

What if we don’t use the ® symbol next to our logo or brand name?

You may use the ® symbol at your discretion next your registered trade marks. Though it is not compulsory, we would typically advise using the ® symbol as it puts third parties on notice that you have registered rights in your mark. It should dissuade them from using your mark or similar confusing marks thus minimising the chances of infringement.

We have registered internet domain names which correspond with our brand name. Do we still need a registered trade mark to protect our brand name?

Yes – having a registered domain name does not give you trade mark protection. If you have used the domain name, you may have acquired unregistered rights in the domain name but such rights will not be as extensive as registered trade mark rights.

We have registered a company name which corresponds with our brand name. Do we still need a registered trade mark to protect our business name?

Yes – having a registered company name does not give you trade mark protection. If you have used the company name, you may have acquired unregistered rights in that name but such rights will not be as extensive as registered trade mark rights.

We use our brand in the UK and elsewhere in Europe. Should we file a UK application, CTM application or both?

In order to obtain the best protection for your brand we would advise filing for both a UK trade mark registration and a Community Trade Mark (CTM) registration.

This is so that in the event that one of your applications or registrations is challenged or invalidated at some point the other still stands and provides you with trade mark rights.

We do understand that funds may be limited, however, and it is ultimately a commercial decision for your company to decide where you wish to file.

We want to protect our brand name and our logo. Do we need to file separate trade mark applications?

We would typically advise filing for both a word-only mark (your name) and a word and device (logo) mark. This will give you a wider scope of protection since it will protect both the your brand name and the stylised features of any logo.

If you only have the word-only version then arguably only marks that are similar to your brand name could be considered to be infringing. If you only have the logo mark then arguably only marks that are similar to your logo could be considered to be infringing. If you have both marks registered then you will have a broader scope of legal protection for your brand.

We use different colour variations of our logo. Do we need to file separate trade mark applications for each colour variation?

In short, no (in the UK). In the UK, you can file a single trade mark application to cover a number of colour variations. This type of application is known as a “series” application and is much more cost effective than filing separate applications for each colour variation of a mark.

Series applications are not available in all territories, in which case separate trade mark applications for different colour variations may be advisable.

How long does our trade mark registration last?

Trade mark registrations can exist indefinitely, provided that they are continually renewed. Generally, trade marks must be renewed every 10 years.

However, you should note that if you do not use your trade mark for the first five years following its registration or for any subsequent five year period, a third party could seek to revoke your registration on the grounds of non-use. Similarly, if your trade mark becomes generic or misleading then a third party may also seek to revoke your registration on these bases.

We haven’t used our brand name/logo yet, but intend to do so in the future. Can I still file a trade mark application to protect my brand name/logo?

Yes you can but you will need to start using your trade mark within a certain period of time from filing or you run the risk that a third party will challenge your trade mark registration due to its lack of use. In the UK this period is 5 years from filing.

How long does it take to register a trade mark?

Providing there are no objections or oppositions to your trade mark (and subject to the capacity of the trade mark registries) it typically takes a UK or European Community trade mark application 3 – 6 months from filing to registration.

Next – Introduction to Trade Marks