Guidelines for registering a trademark in the UK

The United Kingdom, with its long history, diverse culture, and world-leading economic standing, is an attractive market for businesses looking to expand their brands. The UK is one of the world’s leading technology hubs, creating favorable conditions for businesses to start up and develop new technology products and services. London is one of the world’s largest financial centers, attracting many financial and investment companies. The business environment in the UK is clearly regulated and transparent, facilitating financial activities. There are many multinational corporations based in the UK, creating great business opportunities for businesses that provide financial services. The UK has many world-famous tourist destinations, such as London, Edinburgh, and beautiful countryside. International visitors come to the UK to explore the country’s unique culture, history, and architecture. Besides, the service industry, including finance, real estate, and tourism, accounts for a large proportion of the UK’s GDP. Therefore, more and more individuals and organizations want to register a trademark in the United Kingdom, Viet An Law would like to guide you through the preliminary procedures for trademark registration in the United Kingdom through the article below.

Legal Basis

• Trademarks Act 1994 (Chapter 26, updated October 13, 2023)

Benefits of registering a trademark in the UK

Registering a trademark gives you many benefits:

• Legal rights: You have the right to sue individuals or entities that use your trademark without permission, including counterfeiting.
• Trademark Protection: Signs ® help you assert ownership of your trademark, prevent counterfeiting, and protect your trademark’s reputation.
• Increase trademark value: Owning a registered trademark helps you increase the value of your trademark, creating opportunities to sell or license the trademark to other partners.

Types of Registrable Trademarks

Your brand can include a variety of elements such as words, sounds, logo images, colors, or a flexible combination of these elements.

However, not everything can be trademarked. Specifically, trademarks may not:

• Offensive: contains vulgar language, sexually suggestive or offensive imagery.
• Product or service description: for example, the word “cotton” cannot be a trademark of a cotton fabric company.
• Misleading: using words like “organic” for products that aren’t really organic.
• Too common or generic: phrases like “we lead” or natural shapes (e.g., apples) are often not accepted.
• Unauthorized use: national flags, official symbols or other special signs are not allowed.”

Guidelines before registering a trademark in the UK

Before registering a trademark for your product or service, you need to:

• Clearly determine: what type of product or service you want to protect the trademark for (e.g. clothing, food, repair services, etc.).
• Check: see if anyone has used the same trademark by looking up the trademark to avoid infringement.

When registering:

• You need to choose: a general group of goods or services (e.g., clothing) and a more specific type of product (e.g., t-shirts, jeans).
• Scope of protection: your trademark is only valid for what you have registered.
• Choose wisely: choose items related to your future business plan to ensure the best benefits.
• No changes after registration: you can’t add more products or services to your application later.

For example, you want to use the trademark for your sportswear line. You’ll select commodity group number 25 and specific items such as “clothing,” “sportswear,” and “workout wear.”

Guidelines for Trademark Registration Procedures in the UK

To proceed with trademark registration, you need to prepare the necessary information such as:

• Trademark details: The word, slogan, or image you want to register.
• Owner Information: The trademark owner’s personal or corporate information.
• Areas of protection: The specific types of goods or services that you want the trademark to be protected

Registration Cost:

• Depends on: Type of registration and number of groups of registered goods and services.
• Serial Application: If there are multiple versions of the same trademark, you can register the series to save costs.
• Check before you submit: You can use the “Get Started Right” service to check your application before paying the official fee.

Cost of Trademark Registration in the UK

Standard Application Form

• Registering a single trademark in a group of goods and services costs £170.
• Each additional group of goods and services costs £50.
• If you are filing a series application, the first two versions of the trademark are included in the fee. You will pay an additional £50 for each additional edition of the brand, up to 6 versions.

Correct Start Application Form

• You pay £100 plus an additional £25 for each additional group of goods and services to check if your application meets the application rules.
• You will receive a report that indicates whether your application meets the rules.
• You will need to pay an additional £100 (plus £25 for each additional group of goods and services) to:
  • Proceed with the application if it meets the rules.
  • Appeal the decision or discuss in detail if your application does not meet the rules.
• You have 28 days to decide whether to proceed with the application, appeal the decision, or discuss.

Guidelines for processing trademark applications in the UK

• Examination and report: The Intellectual Property Office (IPO) will examine your application and submit the report within 2-3 weeks. This report will clearly state the issues (if any) that need to be addressed.
• Complaint resolution: You have 2 months to resolve the issues outlined in the report.
• Duplicate check: The IPO will compare your trademark with the registered trademarks. If there is a duplicate, you and the existing trademark owner will be notified.
• Publication and opposition: If there is no problem, your trademark will be published. During this time, anyone can object to your application.
• Complaint handling: If someone objects, you have the option to:
  • Deal with the objector.
  • Withdraw the application.
  • Complaints in court (legal costs).

If you wish to file a trademark registration application in the UK, please contact Viet An Law for the most effective support.

Update: 8/2024