Frequently asked questions
What is a registered trade mark?
A registered trade mark is a word, logo or even a shape which has been registered with a government body and gives the owner the exclusive right to use that mark in relation to certain goods or services. This means that only you can gain the benefit of the registration and you can prevent any other person from using that mark without your approval.
The main function of a trade mark is to act as a "badge of origin" to ensure that members of the public associate the goods or services from your company as opposed to those from your competitors.
In order to be accorded registration a trade mark needs to have negotiated a formal processes of examination by a government agency and have been published in a journal. It is very unusual that the relevant government agency does not ask difficult questions of the applicant in respect of the application. If you want to increase the chances of overcoming such objections then it is best to use our services.
What are the benefits of a registered Trade Mark?
The owner of a registered trade mark has the right to sue for trade mark infringement when another party uses the same or a confusingly similar mark in relation to the same or similar goods/services to those covered by the registration. An owner can also ask a court for an injunction to force the infringer to destroy infringing articles and for an account of profits.
A registered trade mark can be bought, sold, mortgaged and licensed. Once the sign is registered, Brand Protect LLP can help you to protect and exploit your valuable resource effectively.
The initial registration period lasts for 10 years. The registration can be renewed indefinitely subject to minimum conditions.
How long will it take for my UK Trade Mark to be registered?
A typical UK application that proceeds without complications can take 6-9 months before registration is granted.
How long will it take for my CTM Trade Mark to be registered?
A typical application that proceeds without complications takes between 12-18 months before registration is granted. Registration fees will only have to be paid on registration. Other applications times vary.
Does a registered Trade Mark offer worldwide protection?
No. Registered trade marks are limited territorially. A UK trade mark is only valid in the UK. However, a Community trade mark is valid in the UK and the other 24 member states of the European Union.
I want to register both a word(s) Trade Mark and also my company logo, do I need two Trade Marks?
Yes.
How many Classes do I file my application in?
All goods and services in a trade mark application are sorted into 45 classes. You will need to decide how many classes you want to apply for. Our skilled and experienced lawyers can help in this respect.
How much does an application for registration cost?
We can advise you of the costs of application and what a typical application costs. Some applications face additional complications. Such complications can be expensive to resolve but we at Brand Protect LLP work with you to minimise these costs. We will not spend any resources without having gained your approval first.
Is every application successful?
No. Some signs are not capable of registration. Furthermore not all searches can find all rights that can be used to oppose an application.
The following lists the main reasons that applications are unsuccessful:
- The application was too descriptive of the goods or services to be registered e.g. bananas for bananas.
- The sign cannot use a royal cipher unless the owner has received royal consent
- The sign cannot be identical or confusingly similar to an earlier trade mark or right.
There is no guarantee that an application
for a trade mark will succeed. We cannot guarantee that your application will
not be opposed by a third party or objected to by the Registry.
If your application is objected to
by the Registry or opposed by a third party, our lawyers will of course
keep you fully informed but they will have to charge for work done in
addressing these problems on their usual charge-out rates. They will inform
you in advance of the applicable rates.
Why should I file an application through a specialist?
Nearly every application for registration faces an official action by the relevant trade mark office. Since the trade mark represents one of the most important and valuable assets that the company will own, it is important that none of your rights or assets are given away or not claimed. The people at Brand Protect LLP are some of the best in the business. Unlike most other agents we (as qualified barristers) enjoy full rights of audience and can prosecute your rights in the Patent Office, the OHIM, all the Courts of England and Wales and the European Court of Justice.
How should I start the process of application for my trade mark?
Complete the online application form or telephone our helpdesk. Once we have received and confirmed your instructions you will be asked for a deposit and your instructions will be forwarded to our specialist trade mark lawyers. A specially allocated lawyer will prepare a specification of the goods and/or services for your application. That lawyer will then send this specification to you for your approval together with a letter of engagement for you to sign. Once you have approved the specification the trade mark application will be made on your behalf. You can telephone us at any time.
Our lawyer will discuss the search results with you as well as any special requirements that you need for the application (e.g. exact colours of a logo)
When can I use the "TM" or "®" designations?
You can use the "TM" designation at any time. It is a crime to use the "®" designation until your trade mark is registered.
How many classes of goods and services are there?
There are 45 classes in total, 34 for goods and 11 for services. A full list and description of the classes is provided below. Do not be too concerned about getting your classes absolutely right at this stage as the lawyers who carry out the trademark work will advise you on this