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• Trade Mark specific
• About Withers & Rogers

• What is a trade mark?

• Why are trade marks important?

• What is capable of trade mark registration?

• What can not be trade marked?

• Once granted, what does a trade mark allow the owner to do?

• What is the role of the trade mark attorney?

• For which countries or territories can trade marks be obtained?

• Is a UK trade mark honoured in other countries?

• What are the costs / fees involved in filing a trade mark?

• What does trade mark infringement mean?

• What is the timescale for obtaining a trade mark?

• How can trade mark application progress be tracked?

• When should a trade mark application be filed?

• How long does a trade mark last?

• What is needed to file a trade mark?

• What are trade mark renewals and when do these come into play?

• What is a CTM?

• What is a trade mark?

  A trade mark is a word, logo, picture, sound or shape (amongst others) used in conjunction with a specified group of goods or services.

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• Why are trade marks important?

  Trade marks protect the public perception of a company by preventing others taking advantage of a company’s reputation, image or goodwill.

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• What is capable of trade mark registration?

  A registrable trade mark must be a distinctive word, logo, picture or other graphical representation that will distinguish the goods or services it is applied to from those of other companies.

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• What can not be trade marked?

  Broadly speaking, trade marks cannot describe the characteristics of the goods or services they are used with, so cannot allude to the quality, purpose or geographical origin of those goods or services. In addition, trade marks that are the same or similar to earlier marks for the same or similar range of goods or services may be barred from registration.

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• Once granted, what does a trade mark allow the owner to do?

  A trade mark allows the owner to prevent someone using or registering the same or similar mark in relation to the same or similar goods or services. A trade mark registration confers a monopoly right provided it continues to be used in connection with the goods and services for which registration was sought.

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• What is the role of the trade mark attorney?

  The trade mark attorney registers new trade marks (both in the UK and in the EU) and carries out searches for existing trade marks. They also provide advice as to what would make a suitable trade mark, advice on trade mark infringement and handle trade mark opposition work.

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• For which countries or territories can trade marks be obtained?

  National trade mark registrations can be obtained for most countries. A Community trade mark (registered with the Office for Harmonisation of the Internal Market - OHIM) will give protection in all 27 EU Member States, whilst an International trade mark can designate more than 70 countries worldwide, including Australia, the USA, China, Japan and all EU countries.

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• Is a UK trade mark honoured in other countries?

  No. A trade mark is valid only in countries where it has been registered.

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• What are the costs / fees involved in filing a trade mark?

  Filing a straightforward UK trade mark for one class of goods or services costs around £500. Completing registration costs around £300 and each additional class costs £150. A Community trade mark costs around £1700 to file and £600 to complete (costs which have recently decreased by £500 overall).

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• What does trade mark infringement mean?

  Trade mark infringement is the use of an identical or similar trade mark for identical or similar goods or services to an existing registered trade mark without the permission of the existing owner. Where the issue is similarity, there must be a likelihood of confusion on the part of the public.

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• What is the timescale for obtaining a trade mark?

  If no objection is made to an application it usually takes 6-9 months to register a trade mark in the UK and around 18 months to register a Community trade mark.

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• How can trade mark application progress be tracked?

  The websites of the IPO and OHIM can be used to track progress of an application and trade mark attorneys will provide regular status updates.

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• When should a trade mark application be filed?

  A trade mark application can be filed at any time, although it should preferably be filed before the launch of a product and after a clearance search has been carried out.

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• How long does a trade mark last?

  Potentially indefinitely, if renewal fees are paid.

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• What is needed to file a trade mark?

  A request for registration of a trade mark, the name and address of the applicant, a statement of the goods or services in relation to which it is sought to register the trade mark, and a representation of the trade mark. No power of attorney or formal notarisation or legalisation of documents is required in the UK or at OHIM, but may be required overseas.

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• What are trade mark renewals and when do these come into play?

  Renewal fees must be paid for a trade mark to remain in force. In the UK, the first renewal fee is due on the tenth anniversary of the filing date, after which fees must be paid every ten years.

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• What is a CTM?

  A CTM is a Community Trade Mark - a trade mark registration which is valid in all EU countries and expands to include new Member States as and when they join. The system is administered by the Office for Harmonisation of the Internal Market (“OHIM”), based in Alicante, Spain.

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See also our flyer on trade marks within our IP Resources section.