Trade Mark Attorney FAQ

Do I have to use a Trade Mark Attorney to register my trade mark?

There is no legal requirement to use a Trade Mark Attorney to register your mark in the UK.

However, whilst the UK Trade Mark Registry allows businesses to file their own trade mark applications, there can be major disadvantages and pitfalls if you do so. The eventual rights in a trade mark depend heavily on a carefully drafted specification of goods and/or services. As a consequence, businesses that file their own applications can compromise the extent of their eventual rights through lack of professional expertise.

Other factors that need to be considered when filing a trade mark application include whether words and logos should be registered in combination or separately, whether there are any colour limitations, and whether you have a series of trade marks.

For those businesses who file their own trade mark applications, many encounter official objections, and it can be a daunting process to try and overcome these objections. Even if the objections are successfully overcome, the extent of eventual rights can be compromised.

How a Trade Mark Attorney can help you

 A Trade Mark Attorney:

  • Can help you to neutralise objections from third parties.
  • Is skilled in presenting your case to its best advantage to maximise the protection of your trade mark.
  • Can also advise you on the best and most cost effective global trade mark filing strategies.

It is therefore essential to seek professional assistance to ensure that you maximise your rights and gain maximum protection for your brand.

How much will registering my trade mark cost?

A realistic average budget for registration in the UK is approximately £1000 for one trade mark, provided there are no third party objections. Registration in the European Union is likely to cost somewhere in the region of £2,000 for one trade mark, provided and there are no third party objections.

Please contact us for details on the cost of filing trade marks in other countries.

Timescales for Registered Trade Marks

When should I consider registering my trade mark?
You should consider registering your trade mark as soon as possible in the planning stages of launching a new product or service. Failing to apply for registered trade marks could result in a competitor gaining rights in your trade mark which could prevent your own use.

How long does it take to register a trade mark?
If there are no objections raised by the UK intellectual Property Office, and your application is not opposed by third parties, it usually takes about six months for a mark to become registered in the UK. If objections are raised by the Trade Mark Examiner, or a third party opposes your application, the process can take considerably longer.

How long does a trade mark registration last?
In the UK and European Community, a trade mark can last forever, provided that it is renewed every ten years.

Generic Trade Marks

Sometimes a trade mark becomes the actual name used to describe a product. When this happens, the mark is said to have become generic and it can be removed from the Trade Mark Register.

Examples of trade marks which have been mis-used and have become generic:

  • Aspirin
  • Escalator
  • Linoleum

Trade marks are adjectives which should be followed by a noun. For example, ‘HOOVER vacuum cleaner’, ’KLEENEX tissues’ and ‘PORTAKABIN building’. A trade mark should not be used as a verb or a noun in respect of the goods or services it covers.  For example, it is trade mark misuse to call a vacuum cleaner a ‘Hoover’, or say ‘Hoover the carpets’, as this can ultimately make the mark generic which will invalidate the trade mark.

TM™ and ® signs – can I use them?

Once you have registered your trade mark in the UK or European Community, you should adopt the use of ‘®’ symbol in conjunction with the trade mark which acts as a warning to others that this particular trade mark is registered. However, if a trade mark is not registered, it is an offence to use the ® symbol.

However, ™ can be used to indicate that a sign is a trade mark irrespective of whether it has been registered or not.

Different countries have various rules concerning the use of symbols to denote registration; when you come to registering trade marks overseas we can advise you accordingly.

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